Issue 3 | 2010 Patent Information News

CONTENT

2 What you missed in the last issue

3 Editorial
3 Tips for esp@cenet users
4 Changes to the IPC from 2011
4 Patent information training
5 News from Asia
6 PANTAS – online searching for
patents and trade marks at MyIPO
7 First examination reports
now on iPairs
8 Striking the right balance:
the role of patent offices in the
patent information world
9 ESPACE Bulletin as a single
online database
10 Browser-based access to
MIMOSA-type data sources
now available!
10 New citation data in GPI
11 Patent statistics for
decision-makers: "New
technologies, patent
quality and entrepreneurship" Patent disclosure
11 OECD database updates
11
12
Publications Corner
Other news
under academic scrutiny
Are patents failing to fulfil their function as a source of technical information?
An increasing number of people seem to think so.

Two recent papers from academics
in the United States could turn
out to be landmark works if they
succeed in provoking a rethink in the
patent world about the disclosure-
related side of patenting.
In her 2009 paper entitled simply
"Patent disclosure", Jeanne Fromer,
Associate Professor of Law at
Fordham University in New York,
contends that the disclosure
function is "under-performing".
Sean Seymore, Associate Professor
of Law at Vanderbilt University in
Nashville, believes that patents
should be "readable teaching
documents".
In "The Teaching Function of
Patents", Seymore asserts that
patents could be a prime medium
for disseminating technical knowl-
edge, but says that they do not
succeed in doing that today. He cites
the "pervasive use of ambiguous
or opaque language" as a major
barrier. Fromer observes that today's
patent system allows the patent
applicant to "under-divulge". It gives
patentees, she says, an incentive to
"obfuscate information they provide
whenever possible".
Other commentators have argued
that disclosure in patents is of little
importance, as disclosure either
takes place through other means
anyway or else the invention is self-
disclosing. Patent information
specialists will certainly have some
difficulties accepting this point of
view, as do Fromer and Seymore,
who both feel that the disclosure
side of patenting has been unfairly
neglected. They stress the dual
function of a patent document as a
legal instrument and as a descrip-
tion of a new piece of technology.
continued on page 2 >

Patent Information News 3 | 2010 September 2010 1

continued from page 1
And it is in this descriptive function,
they propose, that patents are
intended to stimulate innovation.
The evidence available, including
studies done by the EPO, certainly
supports any theory that technolo-
gists do not use patents much as a
source of inspiration for their
research. Fromer devotes a couple of
pages to analysing why this may be
so, noting that only 1.5% of US
patents are ever cited in scientific
literature, and pinpointing what
she sees as four main areas of
inadequacy:
– the writer
– the index
– the reader
– the enforcement
In essence, she suggests that
patent documents are rarely used as
teaching documents because they
are not written in a way that lends
them to that function, because they
are not classified such that a non-
patent expert can find them easily,
because there is a disincentive to
read patents due to the laws about
wilful infringement, and because
neither the patent offices nor the
legal system in general enforce as
strictly as they could the rules on
disclosure that already exist.
She specifically notes, for example,
that current regulations "do not
systematically generate good titles".
In her paper, Jeanne Fromer
recognises that there are opposing
interests in this area and says that it
must be possible for strong patent
rights and effective disclosure to
coexist. As a first step she proposes
the concept of "layering" patent
documents so that technical
disclosure can function semi-
independently of the legal aspects.
2 Patent Information News 3 | 2010
Sean Seymore introduces some
concrete ideas for stripping away
the jargon from patents, his main
proposal being to give patent
offices the power to require work-
ing examples proving that the
claimed invention has been con-
structed and works for its stated
purpose.
Patent information specialists will
no doubt point out that patent
databases used as a source of tech-
nical information generally contain
unexamined patent applications as
filed, not granted patents. Neither
of the two authors tackle this point
in their papers. It may be that this is
because there is no long tradition in
the United States for publishing
patent applications, and that
European academics will pick up the
issue when they join the debate.
At the time of writing, there was
very little trace of academic
research in Europe in this area, but
it cannot be long before we see new
work appearing. Dietmar Harhoff,
Professor of Business Administra-
tion at LMU Munich, is currently
studying a recent survey of more
than 9 000 inventors who have pro-
vided estimates of the time saved
due to knowledge of the patent lit-
erature. It is likely that some analy-
sis of this will be published soon.
Sean Seymore will be one of the
participants in the panel discussion
on quality in the patent system
on 19 October 2010 at the EPO
Patent Information Conference in
Lausanne, Switzerland (see
www.epo.org/pi-conference).
References:
Jeanne C. Fromer, "Patent Disclosure", Iowa Law
Review 94, 2009, 539 (Fordham Law Legal Studies
Research Paper No. 1116020)
Sean B. Seymore, "The Teaching Function of
Patents", Notre Dame Law Review 85(2), 2010,
621-669 (Washington & Lee Legal Studies
Paper No. 2009-03)
September 2010
RETROSPECTIVE
What you missed
in the last issue
Alternate issues of Patent Informa-
tion News are published on our
website only, and not in paper
format. For those who missed it,
here are some of the highlights
from Patent Information News
2/2010 (available at www.epo.org/
about-us/publications/patent-
information/news/2010.html).
New Indian patent information
retrieval system launched
The Indian Patent Office (IPO) has
recently enhanced the free data-
bases available on its website and
re-launched them as "iPairs", the
Indian patent information retrieval
system, bringing together the
First results from large-scale survey various options for free patent
of European industry searching provided by the IPO.
The EPO has recently carried out
thousands of telephone interviews 36 years in patent information
across all the EPC contracting states An interview with Peter Paris, one
and in the USA. The interviews were of the major architects of the
aimed at ascertaining the level of INPADOC databases, who retired at
awareness of patent information the end of May, reveals his thoughts
among technology-based indus- on current developments in patent
tries, research organisations and information.
universities, and establishing just
who does – or rather, doesn't – use
it, and why. Detailed results will be
published soon.
Divisional applications at the EPO
A divisional application is a patent
application which derives from an
earlier application. It is filed after
the earlier application (usually some
years later), but keeps the same
filing and priority dates as the
earlier application.
This article explained the legal
framework relating to the filing of
divisional patent applications at the
EPO, some of the strategies in which
they are used, and recent changes
at the EPO which entered into force
on 1 April 2010.
EDITORIAL
Understanding patents
The article on patent disclosure in this issue of Patent Information News
makes it very clear that there is little point in reading a text if you can't understand
what it means. The question of understanding becomes even more acute if the
document you want to read is in a foreign language.
Consequently, it is of no surprise
that one of the obstacles that has
stood in the way of a successful
agreement on the establishment of
an EU patent is the whole issue of
languages. Europe is rightly proud of
its multi-lingual culture and Euro-
pean politicians have traditionally
been very wary about taking any
steps into the language minefield.
The EPO believes that technology
can offer the politicians a way of
vaulting over the minefield and
is working intensively with its
member states on a wide range of
esp@cenet
Tips for esp@cenet users
In this regular column, the experts
from the EPO's esp@cenet helpdesk
team pass on useful tips based on
the questions they receive from
users. In this issue, the focus is on
the use of standardised applicant
names and on searching for cited
documents using the SmartSearch
feature.
Standardised names
When you search on an applicant's
name in esp@cenet, the search
engine checks against both the
"non-standardised" names as
entered by the applicant on the
application form, and a standard-
ised version of the name, if avail-
able. Therefore a search for NIKON
will also retrieve applications filed
under NIPPON KOGAKU KK.
machine translation solutions. It is
hoped that these will contribute
towards finding an answer to the
language question where the EU
patent is concerned.
Machine translation technology is
in any event becoming a much
appreciated extra tool for patent
searchers, especially now that
translating automatically between
Asian languages and English is
generating usable results.
esp@cenet already offers machine
translation for French, German,
The standardised version of the
name will be shown in the
"Bibliographic data" tab, even
though this might not correspond
exactly to the name on the original
document. By clicking on the "+"
sign next to the name of the inven-
tor or applicant you will obtain the
list of non-standardised names. This
feature makes it easier to avoid
missing documents in a search.
Italian and Spanish, with more
European languages in the pipeline.
Beyond Europe, the EPO will be
active on the international stage to
contribute whatever it can to
securing good machine translation
technology for Korean, Japanese,
Chinese and the languages of India.
Of course, translation is only one
aspect of understanding patents,
which itself is a subject high on the
agenda at the moment. If you have
views on this that you would like to
express, then please write to me at
rflammer@epo.org.
To ensure clarity and consistency,
the standardised name is assigned
by the EPO and not the applicant.
Search for cited documents
in esp@cenet
A "cited document" is a document
cited by an examiner in a search
report.
Name
standardisation in
esp@cenet
Patent Information News 3 | 2010
Richard Flammer
Richard Flammer
Principal Director
Patent Information and
European Co-operation
esp@cenet displays all the cited
documents available in the data-
bases, regardless of their country of
origin. They are shown under the
"Bibliographic data" tab in the
"Cited documents" section on the
right-hand side.
There is no specific search field for
cited documents in esp@cenet in the
various search masks (e.g. Advanced
Search).
However, it is possible to search
for cited documents using the ct
field identifier in SmartSearch
(see the online help files for more
information). For example, if you
enter ct=EP1000000 in Smart-
Search you will find the documents
in which EP1000000 has been cited
in the search report.
September 2010 3
CLASSIFICATIONS
Changes to the IPC from 2011
WIPO has announced changes to
the International Patent Classifica-
tion (IPC) scheme that will enter
into force on 1 January 2011.
The most significant impact on
the structure of the IPC is that it
will no longer have a "core" and an
"advanced" level. From January, only
one text will be published, corres-
ponding to the current advanced
level. Small patent offices will have
the option (derived from the
Strasbourg Agreement itself) to
classify down to main-group
level only.
A second change will be to abandon
the (theoretical) three-month
rhythm for revisions to the IPC,
replacing it with an annual revision,
in January each year.
There will also be a number of
changes in the scheme itself as
from 1 January. The sub-classes
affected are listed in the table.
Among the most noticeable
TRAINING
Patent information training
Classroom training
There are still a few seats available
in the EPO's four-day advanced-level
patent information training
seminar:
4th EPO Patent Information
Advanced Seminar,
8-11 November 2010 (PI08-2010)
Details and registration information
can be found in the searchable IP
calendar at www.epo.org/topics/ip-
events/patent-event-search.html,
for example by searching with the
code "PI08" in the free-text field.
4 Patent Information News 3 | 2010
modifications will be the introduc-
tion of a new sub-class, B82Y,
which will allow offices to classify
specific uses of nanotechnology
structures for the first time. A
pioneer in this area, the EPO intro-
duced the Y01N tags for nanotech-
nology inventions into its ECLA
scheme a few years ago. The EPO
intends to transfer the Y01N scheme
progressively into B82Y once it
becomes available.
Other sub-classes where substantial
modifications will take place are:
– A01M – several new sub-groups
for scaring/repelling devices, such
as bird-scaring apparatus
(A01M29)
– B21D – new sub-groups for metal
shaping (B21D26)
– B60R – safety devices in cars, e.g.
airbags (B60R21)
– C13B – a new sub-class covering
the production of sucrose
(C13C-C13J deleted)
– F24F – reorganisation of
sub-groups for air-conditioning
units (F24F1)
– F41H – some new sub-groups for
defence installations (F41H11)
Special topics at the EPO Patent
Information Conference
Specially designed training courses
at the EPO Patent Information Con-
ference in Lausanne this October
will include new topics aligned with
the conference programme. Training
days at the conference are 18 and 21
October 2010. Details can be found
at www.epo.org/about-us/events/
pi-conference/training.html.
September 2010
A01M B21D B60R
C08H C13B C13C
C13G C13H C13J
F24F F41H G01M
G06T G07B H01R
H04J H04N
Table 1: Sub-classes affected by the IPC revision entering into force on 1 January 20111
– H01R – several modifications to
the area of electrically conductive
connections
– H04B – some new sub-classes in
the details of transmission
systems (H04B1)
– H04N – major expansion to
the sub-groups for pictorial
communication (television, etc.)
More information about the new
concept is available on the WIPO
website at: www.wipo.int/
classifications/ipc/en/
For full details of the changes to the
classification symbols, click on the
"Compilation" tag at www.wipo.int/
ipcpub/.
Virtual classroom training and
newsflashes live
The remainder of 2010 will see a
range of patent information-related
events online. Apart from the
regular online patent information
newsflash, scheduled to take place
every last Thursday of the month
(except August and December),
there will be a number of virtual
seminars on patent information
topics old and new, as well as
sessions on the EPO's products and
services.
For the first time, we will also offer
a dedicated online question-and-
answer session for all participants
in this year's classroom and online
B82Y C07B
C13D C13F
F16D F23B
G06F G06M
H01T H04B
The changes are shown in tabular
format, using the following codes:
D – deletion
C – modification with a change
of scope or involving
reclassification
M – modification without a
change of scope and not
involving reclassification
N – new
The EPO will update the IPC symbols
for all the documents in its data-
bases in time for 1 January. It will
also endeavour to bring its own
ECLA classification symbols into line
with the new IPC as speedily as
possible.
1) This information was correct at the time
of writing. However, further changes may be
added by WIPO prior to entry into force on
1 January 2011.
training events. This will allow you
to put all your questions direct to
the EPO's experts. Check out the
searchable calendar on the EPO
website for updates (filter virtual
live events by selecting "Online
training" in the medium field).
For details of these and other
events, visit www.epo.org/learning
or contact Roland Feinäugle at
Patent Information Training at
pitraining@epo.org. To sign up for
patent information training e-mail
alerts, use the online form at
https://secure.epo.org/patents/
email/pi-training/index.en.php.
PATENT INFORMATION FROM ASIA
News from Asia
India scheduled to join Madrid
Protocol in 2010
The upper house of India's parlia-
ment passed the Trade Marks
(Amendment) Bill 2009 on 10
August 2010, paving the way for the
country to join the Madrid Protocol.
The Indian government is now in
the process of finalising the imple-
menting rules. According to official
sources, the Madrid Protocol is
scheduled to become operational in
India by the end of this year.
For more information, see "India
expected to join Madrid this year" in
Managing Intellectual Property
(MIP), published on 12 August 2010:
www.managingip.com/Article/2650
504/Search-Results/India-expected-
to-join-Madrid-this-year.html?Key
words=india+madrid&Quick=True&
OrderType=1
Further background is discussed in
an interview with P.H. Kurian
(Controller General of Patents,
Designs and Trademarks), published
in MIP on 1 May 2010: www.manag
ingip.com/Article/2476571/Search-
Results/India-prepares-for-Madrid-
Protocol.html?Keywords=india+
prepares+for+madrid&Quick=
True&OrderType=1
China and Chinese Taipei
agree to recognise
each other's priority rights
Chongqing, China, was the venue
for the signature by Mainland China
and Chinese Taipei on 29 June 2010
of an agreement on intellectual
property protection and an Eco-
nomic Cooperation Framework
Agreement (ECFA). Under the IPR
protection agreement, both sides
agree to recognise the priority
claims of the other's applicants up
to one year after filing of the
original patent application (six
months for trade marks). Other
items in the agreement include
co-operation in search and
examination, and the co-ordination
of measures against infringement
and counterfeiting.
Further information has been
released by China's official news
agency Xinhua at: http://news.
xinhuanet.com/english2010/china
/2010-06/29/c_13376017.htm and on
TIPO's website at: www.tipo.gov.tw/
en/News_NewsContent.aspx?
NewsID=4603.
http://twpat.tipo.gov.tw/tipotwoc/tipotwekm
Taiwanese citations
now also available in English
On 1 July 2010, the Taiwan Patent
Office (TIPO) launched a new
English interface of the TWPAT data-
base (http://twpat.tipo.gov.tw/
tipotwoc/tipotwekm), where users
can now also see examiners' cita-
tions. Citation data, which could
previously only be accessed in
Chinese, is available for patent
applications published after
1 January 2008. In addition to PDF
versions of original documents, the
English interface also includes the
related information published in the
gazette for laid-open and granted
publications.
New step-by-step search guides on
how to find citations and legal
status information in TIPO's Chinese
and English databases are now
available in the "Chinese Taipei –
Searching in databases" section on
the EPO's virtual helpdesk at: www.
epo.org/patents/patent-information
/east-asian/helpdesk/chinese-
taipei/search.html?update=
patentinfo
Korean Patent Office implements
further fee changes
The Korean Patent Office (KIPO)
implemented further adjustments
to its intellectual property fees on
28 July 2010, including a reduction
in the examination request fee for
utility models filed under the PCT,
an increase in the registration fee
for patent term extensions, and an
increase in the fee for correction
requests filed electronically. There
are also changes to the fees for
amendments, patent applications
filed on paper, and trade mark and
design opposition requests.
For more information, please see
KIPO news (782) published on KIPO's
website on 3 August 2010:
www.kipo.go.kr/kpo/eng/
SIPO publishes official English
translation of revised Implementing
Regulations
The revised Implementing Regula-
tions to the new Chinese Patent
Law, which entered into force on
1 October 2009, were published on 9
January 2010. An English translation
is now available on China IP Law
Search at: www.ipr2.org/ipsearch/
index_en.php (click on "Patents").
Patent Information News 3 | 2010
The English text of the revised
Chinese Patent Law can also be
downloaded from this source.
JPO revises Examination Guidelines
for Amendment of Description,
Claims and Drawings
Following a decision of the Grand
Panel of the IP High Court, which
indicated the general definition of
acceptable scope for an amend-
ment, the Japan Patent Office (JPO)
has now revised the corresponding
Examination Guidelines. The revised
guidelines will be applicable to
examination from 1 June 2010. More
information and links to the guide-
lines are available on the JPO's
English website at: www.jpo.go.jp/
cgi/linke.cgi?url=/tetuzuki_e/t_tokk
yo_e/amendment_claims_drawings
_e.htm
China establishes
State IPR Advisory Committee
On 5 August 2010, a "State IPR
Advisory Committee" was set up in
China. The Committee's work
includes research into develop-
ments in intellectual property
rights and consultation on strategic
decisions, policies and regulations.
It is headed by former SIPO
Commissioner Wang Jingchuan.
For further information, see:
www.sipo.gov.cn/sipo_English/new
s/official/201008/t20100813_531273.
html and www.chinaipr.gov.cn/
newsarticle/news/government/
201008/943589_1.html
For more news from Asia, go to
http://eastmeetswest.european-
patent-office.org/news
September 2010 5
PATENT INFORMATION FROM MALAYSIA
PANTAS – online searching
for patents and trade marks at MyIPO
PANTAS (Patent and Trademark Administration System) is a secure, web-based system
for searching and filing patents, utility innovations and trade marks from Malaysia.
PANTAS is operated by the Intel-
lectual Property Corporation of
Malaysia (MyIPO) and covers the
102 330 applications filed at its
1
headquarters in Kuala Lumpur and
branch offices in Sabah and
Sarawak, and the 41 2621 patents
and utility innovations granted in
Malaysia since 1986.
Users must register to access the
search interfaces in PANTAS. While
registering and searching are free,
viewing detailed search results or
downloading full specifications is
subject to a fee (payable via
pre-paid account or credit card
payment).
Fig. 1: Sample PANTAS result screen
(source: https://pantas.myipo.gov.my/)
1) Figures up to March 2010 (source:
http://www.myipo.gov.my/en/ip-statistics.html)
6 Patent Information News 3 | 2010
The patent search in PANTAS offers
"simple" and "advanced" search
modules. Users can search for pub-
lished applications, granted patents
and utility innovations. The simple
search screen is recommended for
looking up application numbers,
and the advanced search interface
allows searches with names
(inventor, applicant/owner), IPC
symbols, or keywords in titles and
abstracts. Users can search based on
date ranges (filing, priority or grant
dates) and using wildcards (*, ?) and
Boolean operators (AND, NOT, OR,
NEAR).
The result list provides basic infor-
mation on the documents found
and is displayed free of charge.
This free information includes the
application number, filing/grant
date, title of the invention and
September 2010
latest legal status information. The legal status search can be found
Access to detailed information such at www.myipo.gov.my/ or at
as the front page data, abstract, https://pantas.myipo.gov.my/work
claims, description and drawings flow/ENG/ (free, no registration
(hyperlinked from the application required).
number in the results list) and
downloading patents are subject
to a fee.
PANTAS can be accessed at:
https://pantas.myipo.gov.my/
(registration required).
Other search options on
MyIPO's website
"Check Application" –
legal status search
Legal status information for
Malaysian patent applications can
be retrieved free of charge via the
"Application Status Enquiry" func-
tion. Clicking on "Check Application"
in the "online services" section on Fig. 2: Example of legal status display
the MyIPO homepage opens the (source: https://pantas.myipo.gov.my/
workflow/ENG/)
search screen. The search is by
application number or identification e-Gazette
number (for Malaysian citizens). MyIPO also publishes electronic
Legal status information is available gazettes for patents, trade marks,
for patents, utility innovations and industrial designs and geographical
trade marks. The "Application Status indications. The e-Gazette for
Enquiry" function provides details patents is broken down into the
of dates (filing, priority, grant, following categories: granted,
expected expiry), numbers (applica- lapsed, invalid, errata and reinstate-
tion, grant) and names (applicant/ ment of lapsed patent. Clicking on
owner), as well as the latest status each publication date will display
of the application. An additional simple tables (see Fig. 3) consisting
flowchart illustrates the steps in the of the application number, grant
grant procedure and highlights the number, country of origin and IPC
current status of the application in (by section only). Trade mark
green (see Figure 2). gazettes are also searchable, the

Fig. 3: Extract from e-Gazette for granted patents
(source: www.myipo.gov.my/en/patent/gazette-patents.html)
search criteria being gazette date,
application number and class. The
latest trade mark gazettes can be
downloaded in full as PDF files.
To access the electronic gazettes on
www.myipo.gov.my/, click on
"e-Gazette" in the "online services"
section.
PANTAS - Quick facts
– registration required
– offers secure search environment
(SSL)
– free searching and basic
information access
– chargeable access to details
and downloads
– "simple" and "advanced"
search options
– search in patents/utility
innovations/trade marks
– search in bibliographic data,
title, abstract
– access to basic legal status
– full specifications available
– payment via prepaid account
or credit card
Useful links
– MyIPO website:
http://www.myipo.gov.my
– PANTAS Online:
https://pantas.myipo.gov.my
– News from Malaysia:
http://eastmeetswest.european-
patent-office.org/news
For further details contact the EPO's
Asian patent information services:
Tel.: +43 1 52126 4545
e-mail: asiainfo@epo.org
PATENT INFORMATION FROM INDIA
First examination reports
now on iPairs
New feature of Indian legal status information
The Indian Patent Office's "Indian Patent Information Retrieval System"
(iPairs) became operational in early 2010. One of the highlights of the new
system is the "Application Status" search function, which gives users access
to the prosecution history of patent applications pending with the Indian
Patent Office.
In June this year, the legal status information accessible via "Application
Status" was expanded to include examination reports. In India, the "first
examination report" (FER) is sent to the applicant following substantive
examination of the application. The applicant has to address and overcome
all the observations and objections raised within twelve months from the
date of issuance of the FER in order to "put the application in order for
grant".
Wherever applicable, the "Application Status" function provides a link from
the basic legal status display to the examination report for the application
in question. iPairs currently contains examination reports issued from July
2009 onwards, and older examination reports are being uploaded gradually.
The "Application Status" search function is in a test phase now, so in critical
cases users are advised to check back with one of India's four patent offices.
Users can access the iPairs search system at
http://ipindia.nic.in/ipirs/patentsearch.htm
Sample examination report (source: http://ipindia.nic.in/ipirs/patentsearch.htm)
With the addition of the examination reports, information equivalent to the
entire file wrapper of Indian patent documents – including bibliographic
information, abstracts, full specifications and legal status data – is now
available via the Indian Patent Office's website.
Patent Information News 3 | 2010 September 2010 7
SWITZERLAND

Striking the right balance: the role of

patent offices in the patent information world
In this article, Alban Fischer and Theodor Nyfeler of the Swiss Federal Institute of Intellectual
Property discuss the patent information market and the balance between the commercial and
public sectors

On 19 to 21 October, Switzerland will play host for the first time to the EPO
Patent Information Conference. This conference is by far and way the most Value creation chain
important meeting-point for all those involved in the world of patent
information. Although we are still waiting for the final results from the Searcher
EPO's extensive survey, we already know that, despite the concerted efforts – Search
of the EPO and the national patent offices in recent years, the use of patent – Processing
of results
information in Europe lags far behind that of the USA. We would like to use
the occasion of the conference and the results of the study to put forward
Patent attorney Provider
the view of the Swiss Federal Institute of Intellectual Property ("the Insti-
– Interpretation – Added value
tute") on the use of patent information, the responsibilities of the main – Strategy – Search engine
players, in particular the patent offices themselves, and the division of roles
among the parties involved.

In the classic value creation chain for patent information, the first link User Patent office
involves patent offices, in particular the EPO, collecting basic information – Applicant – Basic
and making it available to the commercial service providers, who process it – Third parties information
– Technical
and make it searchable. Patent searchers then search for relevant content,
information
which they in turn also process. Patent attorneys interpret the results and
advise their clients on the optimum strategy for their intellectual property. Non-user

For professional users, who know what they want and where to get it, there
is a lively market, with private providers at every link in the chain. Well-
informed users can pick and choose from a broad range of providers to suit
their requirements. These users are also prepared to pay the cost-covering
prices that private providers are obliged to charge.
While the patent information market works well for experienced users, it
is clear from various studies, not least the EPO's own investigations, that
inexperienced users do not know enough about patent information to be
able to decide whether or not they need it. Being informed is, however, a
fundamental prerequisite for a functioning market. The aim must therefore
be to find simple and efficient ways of getting inexperienced users – in
particular SMEs – to recognise their need for patent information and to
decide whether they wish to make use of what is available, and if so, in
what form and with what degree of quality.
With this aim in mind, an increasing number of state authorities are taking
on the tasks in this value creation chain – frequently at cross-subsidised
prices - and in doing so are destroying the established market structure.
Some national patent offices, for example, offer searches at rock-bottom
prices, in order to provide work for their examiners. The EPO itself has long
since become a service provider with its esp@cenet service. More and more
often, state agencies are also subsidising strategy consultancy, or even
Information Support
offering it themselves, citing the need to promote innovation: businesses
should be filing more patent applications, and should be making better use
of patent information. As a result, private providers, with their competitive
advantages such as quality and specificity, can no longer compete with
state-subsidised providers.
From our point of view this development is not welcome, because where
competition is destroyed by state intervention, problems with quality and
customer service soon follow, along with wastage of public money. In
Switzerland, therefore, the principle of subsidiarity prevails. In other words,
the state will only intervene if the market fails. If, however, a state authority
does get involved in the market, it must conduct itself like a private
company. In particular, it must charge prices which at least cover its costs.
Against this background, the Institute differentiates between the patent
information services it offers as follows:
– The provision of national patent data, in particular to the EPO and
commercial data providers
The crucial factor here is the quality of the data, because any services
that follow can only be as good as the data on which they are based. The

8 Patent Information News 3 | 2010 September 2010

 Institute therefore places great importance, within the framework of
substantive examination, on the quality of the clarity and disclosure of
patent applications as well as on full and timely data provision.
– The provision of information services for individual inventors,
SMEs and universities
This category includes measures to improve awareness and training,
as well as what are known as "assisted" searches, where inexperienced
users can find out about the patent system and carry out a search
together with a patent expert. In this area there is a partial failure of the
market, as such services are frequently of little commercial interest.
Nevertheless, it is still important to make a clear separation from the
services provided by commercial providers. As these services are
cross-subsidised, ignoring these boundaries will lead to competition
being distorted, with the resulting negative fall-out referred to earlier in
this article.
prices. Under these conditions, the Institute's commercial services are an
important source, enabling it to find out more about the needs of
industry and to continuously improve, which in turn is of benefit to the
public services too.
The differentiation of customer needs, quality assurance and the separation
of public and commercial services are therefore the main criteria to be
applied by any patent office when selecting and developing a new patent
information service. If one or more of these criteria are not met – either in
part or in full – there is a risk that competition will be distorted, which will
do more harm than good to the overall aim of improving the dissemination
of patent information and the utilisation of the patent systems in Europe.
We therefore very much recommend taking a careful and considered
approach when introducing further measures of state support.

– The provision of professional patent and technology information services

for attorneys, industry and other experienced users of the patent system
This is one of the tasks of the Institute which was specifically laid down by
the Swiss legislator. The Institute must cover all costs and charge market

PATENT INFORMATION EXPERT SERVICES

ESPACE Bulletin – a turbo-booster for the

European Patent Register
ESPACE Bulletin will soon be redesigned into a single-volume online database, with additional
features to make it even more accessible to users.

Available online and updated weekly, ESPACE Bulletin provides access to

bibliographic and procedural information on all published European patent
applications and granted European patents. It is the up-to-date electronic
version of the entire collection of the European Patent Bulletin paper-form
books.

It contains bibliographic data and information relating to the examination

and opposition procedure for all these documents, from the first publication
until the end of the procedure before the EPO.

With more than 70 search criteria, the diversity and richness of the
information in ESPACE Bulletin is ideal for creating specific data sets that
can be analysed further. Watch out for further announcements on the EPO website.
For more information, contact epal@epo.org
With just a little practice you can easily generate EP patent statistics.
Combine the search and retrieval power of ESPACE Bulletin with the
online European Patent Register, which contains many additional details
concerning the examination, oppositions and appeals, and you will enjoy
truly comprehensive access to everything there is to know about any
European patent application, from publication to the end of the procedure.

Patent Information News 3 | 2010 September 2010 9

PATENT INFORMATION EXPERT SERVICES

New citation data in GPI

Global Patent Index (GPI), the EPO's premier product for patent searching,
is about to be enhanced by the inclusion of a number of new search fields
for citations.

The new citation search criteria will be available in the search group
"DETAILED SEARCH/Citation" as follows:

Code Label

CPIS Patent (international search report)

CPSS Patent (supplementary search report)

Browser-based access to
CPPE Patent (international preliminary examination phase)
MIMOSA-type data sources
CNIS NPL (international search report)
now available!
CNSS NPL (supplementary search report)
Users have long been asking for a tool that provides the data coverage
of esp@cenet and the search capabilities of the EPO's MIMOSA software, CNPE NPL (international preliminary examination phase)
all through a simple internet browser, without the need for additional
software.

Their wait will finally come to an end with the launch of the EPO's new
browser-based access to the ESPACE databases at the EPO Patent
Information Conference, taking place in Lausanne, Switzerland, from
18 to 21 October 2010.

The introduction of the EPO's new "EPO Patent Information Expert Services"
client platform will enable users to access resources via a browser using a
Rich Internet Application.
Extract from GPI of patent and NPL citations with search categories
The new interface offers professional search capabilities, allowing users
to run complex queries, display, download and print their search results, and More information can be found in the GPI user manual v1.5, addendum 1,
create diagrams to visualise them using statistics. Additionally, the output which can be downloaded from http://www.epo.org/patents/patent-
can be customised to suit individual needs. Access to the subscription information/subscription/gpi/details.html
ESPACE online databases via this new interface is via a username and
password.

What is the URL?

https://data.epo.org/PIES_latest/ria.html

Learn more about the browser-based access tool and the ESPACE products
in the EPO's virtual classroom series and training courses –
see www.epo.org/patents/learning/pi-training.html.

For more information about EPO Patent Information Expert Services,

contact epal@epo.org.

10 Patent Information News 3 | 2010 September 2010

PATENT ANALYSIS

Patent statistics for decision-makers:

"New technologies, patent quality and entrepreneurship"
Don't miss the conference in Vienna
on 17 and 18 November 2010!
We would be pleased to welcome
you at the "Patent statistics for
decision-makers" conference. If you
are interested, please register soon
at www.epo.org/about-us/events/
patstat.html
Existing (and prospective) PATSTAT
customers should also register for
the pre-conference workshop that
will take place at the EPO's premises
in Vienna from 14.00 to 17.00 hrs on
Tuesday, 16 November 2010. This
session represents a unique chance
to meet other users as well as to learn about new trends in
members of the EPO PATSTAT team, measuring patent quality and
who will be available to answer your patent valuation, and how these
questions. trends will affect patenting strate-
gies and promote innovation.
Our programme boasts some highly
experienced keynote speakers, and a For more information, see
fascinating collection of presenta- www.epo.org/aboutus/events/
tions from academics and represen- patstat.html
tatives from industry and patent
organisations (www.epo.org/about-
us/events/patstat/programme.html).
This conference is more than just an
opportunity to find out more about
patent statistics and to network with
fellow users. It is also an opportunity

OECD database updates

The OECD has released updates to
its REGPAT, Citations and Triadic
Patent Families databases.
The June 2010 edition of REGPAT
attributes applicants' and inventors'
addresses to micro-regions for more
than 30 countries, in line with the
latest Nomenclature of Territorial
Units for Statistics (NUTS).
The Triadic Patent Families database
covers European and Japan Patent
Office applications and US Patent
and Trademark Office grants that
share the same priorities.
The Citations database includes
citations (patents and non-patent
literature) in patents at the EPO or
filed through the PCT. The data,
derived from the EPO’s PATSTAT
database, includes a list of EP or
WO equivalents to the patents
cited, in order to facilitate further
consolidation of the data.
The datasets are available for down-
load by writing to sti.contact@oecd.
org. Please mention "OECD patent
database" in the subject line and
specify the name of the dataset you
are interested in. Further informa-
tion can be found at www.oecd.org/
sti/ipr-statistics.
The OECD statistics portal
(http://stats.oecd.org/) includes
data on predefined indicators at
regional and country level for
patents in selected technology
domains (ICT, biotech, nanotech
and environmental-related
technologies).
www.oecd.org/sti/ipr-statistics

PUBLICATIONS CORNER

"Publications corner" is a regular feature of Patent Information News, European patent publications
providing readers with statistics and general information about EPO January – September 2010
publications. Weekly Total Change
I EP-A1: European patent applications published with search report average 2010 Jan-Sept 2010 vs. 2009
I EP-A2: European patent applications published without search report EP-A documents
I EP-A3: European search reports EP-A1 851 33 205 0.9%
I EP-B1: European patent specifications EP-A2 316 12 310 –15.3%
I EP-B2: revised European patent specifications Total EP-A1 + A2 1 167 45 515 –4.1%
Percentage EP-A1 of total A1+A2 73.0% 5.2%
Note: The table does not include statistics on European patent applications filed via the
EP-A3 324 12 621 –8.0%
PCT route (Euro-PCT applications). These are published by WIPO and are not made
available by the EPO unless they are in a language other than English, French or EP-B documents
German. Currently about 70% of all European patent applications are Euro-PCT filings. EP-B1+B2 1 117 43 555 9.1%

Patent Information News 3 | 2010 September 2010 11

OTHER NEWS
Some important
telephone numbers
esp@cenet helpdesk
Tel.: +43 1 52126 4051
Fax: +43 1 52126 4533
e-mail: espacenet@epo.org
Electronic publications advice line
Tel.: +43 1 52126 2411
Fax: +43 1 52126 2492
e-mail: epal@epo.org
INPADOC helpdesk
Tel.: +43 1 52126 115
Fax: +43 1 52126 3292
e-mail: inpadoc@epo.org
Asian patent information
Tel.: +43 1 52126 4545
Fax: +43 1 52126 4197
e-mail: asiainfo@epo.org
Training
Tel.: +43 1 52126 1043
Fax: +43 1 52126 4533
e-mail: training.vienna@epo.org
Customer Service Centre (CSC)
Tel.: +43 1 52126 4547
Fax: +43 1 52126 2491
e-mail: csc@epo.org
for subscriptions:
Tel.: +43 1 52126 4546
Fax: +43 1 52126 2492
e-mail: csc@epo.org
Switchboard
Tel.: +43 1 52126 0
EPO Customer Services are open
for your enquiries on all matters
relating to European patents:
Tel.: +49 89 2399 4636,
e-mail: info@epo.org
www.epo.org
12 Patent Information News 3 | 2010
New EPO publication –
Case Law of the Boards of Appeal (6th edition)
The revised and expanded sixth
edition of the "Case Law of the
Boards of Appeal of the European
Patent Office" was published in
August 2010.
The book takes account of decisions
available in writing at the end of
"East meets West" in Vienna –
save the date
The "East meets West in Vienna"
forum is the EPO's annual event
that brings together patent
information experts from Asia with
users from around the world. The
next forum will be held on 14 and
15 April 2011.
For more information on previous
forums, please visit www.epo.org/
about-us/events/archive/2010/
emw2010.html or contact the EPO's
Asian patent information services at
asiainfo@epo.org.
September 2010
December 2009, plus a number of
important ones from the first two
months of 2010. Its individual
chapters have also been compre-
hensively updated in the light of
the EPC 2000 revision. It will be an
invaluable source of information for
anyone concerned with European
patent law – as will the annual
supplements published as special
editions of the EPO Official Journal.
The sixth edition is available in all
three EPO official languages. The
English, French and German edi-
tions cost EUR 72 each, or you can
order all three volumes together for
EUR 177 (prices include postage and
packaging).
The book is available from the EPO
website (www.epo.org/ordering)
and booksellers:
– ISBN 978-3-89605-101-6
(English edition)
– ISBN 978-3-89605-102-4
(French edition)
– ISBN 978-3-89605-100-8 (German
edition)
The EPO also plans to make the
"Case Law of the Boards of Appeal
of the European Patent Office"
available electronically on its
website.
P U B L I C AT I O N I N F O R M AT I O N
Publisher: Richard Flammer
Editors: D. Shalloe, K. Maes
Contributors: P. Aladenise, E. Ambros,
G. Boedt, R. Feinäugle, A. Fischer (IPI),
N. Horn, R. Iasovoli, C. Kämmer,
P. Le Gonidec, T. Nyfeler (IPI),
C. Pentheroudakis, I. Schellner,
D. Shalloe, H. Wongel
Design: Atelier 59
Patent Information News is
published by the
Principal Directorate
Patent Information,
European Patent Office,
Vienna sub-office,
Rennweg 12,
1030 Vienna, Austria
Tel.: +43 1 52126 0
The opinions expressed in this
publication are not necessarily those
of the EPO.
ESPACE and esp@cenet
are registered trade marks.
ISSN 1024-6673