A concise summary of the technical disclosure of a patent document enabling a reader to quickly ascertain the subject matter covered. An abstract serves merely for the purposes of technical information and cannot be taken into account for any other purpose, e.g., for interpreting the scope of protection claimed in the patent document itself. The text of an abstract usually contains no more than 150 words and may be accompanied by a representative drawing or chemical formula. The abstract is usually filed by the applicant and published on the front page of the patent document. It may also be published separately, e.g., in the official gazette or an abstract journal. In several countries patent abstracts are separately published as special documents containing bibliographic data, the text of the abstract and drawings or chemical formulae. Patent abstracts are also prepared and distributed by special abstracting services (commercial firms specialized in technological information services). See also “Claim(s)”.
A journal devoted to the publication of abstracts. An abstract journal often includes indexes of applicants’ or inventors’ names. The abstract journals may be divided according to subject matter. Cumulative indexes, e.g. annual indexes, are frequently also published.
An organization specializing in the preparation and publication of abstracts. These abstracts may be different from those published with the patent documents; their publication may take various forms, e.g., on paper, microfilm. Most abstracting services offer a current awareness service whereby subscribers receive copies of abstracts, according to defined technical fields. Abstracting services offer most of their abstracts for on line retrieval.
A term used to cover all methods whereby specific industrial property information may be identified and thus retrieved. Identification may be on the basis of technical fields in which case classification symbols (of the national classification or of international classifications, e.g. the International Patent Classification) or keywords (e.g., from a thesaurus) are used. Alternatively, identification may be based on the name of an applicant or inventor, on the dates (e.g., application or publication date), or on the country of publication (WIPO Standard ST.3). For this purpose, one may use manual indexes or computerized searching tools.
See “Patent of Addition”.
An address given by the applicant (or the agent acting on his behalf) to which all correspondence or other notification is to be sent in connection with the industrial property rights or applications therefor.
See “Maintenance Fee”.
An 80 column punched card with up to 8 microfilmed pages of a patent document inserted in an aperture provided in the card itself. Reduction ratio of the microimages is 21:1. If the patent document has more than eight images, then trailer cards are used. Cards carry punched holes to enable a sorting machine to recognize some (or all) of the following information: (a) kind of patent document, (b) country of publication, (c) publication number, (d) publication date, (e) one IPC symbol. These data are usually also printed on the card itself. The advantage of an aperture card is its ability to be sorted automatically, as well as the small storage space required compared with paper storage and the fact that unit records are obtained thus enabling the build up of a classified collection in a simple manner. See also WIPO Standard ST.7/A and “CD ROM”.
The applicant is the entity or person which or who presents (“files”) an application for the grant of an industrial property right (e.g., a patent application, or an application for the registration of a trademark) in an industrial property office, or in whose name an agent (representative) files such an application.
General term denoting a request filed by the applicant, or by an agent (representative) on his (its) behalf, for the grant of an industrial property right (e.g., patent), or for the registration of such a right (trademark, industrial design, etc.). See also “Patent Application”, “Trademark Application” and “Industrial Design Application”.
The project of the European Patent Office, which is underway to scan the full text and drawings of the first publication of patent documents by the major industrial property offices, back to 1920 or earlier, as image data (in facsimile form) on magnetic tape so as to permit the subsequent creation of an image retrieval system (BACON standing for Backfile Conversion).
The search technique where a sequence of search entries is accumulated and later processed by a computer system in such a manner that the user cannot influence the processing while in progress. Sometimes called “off line searching”.
The term “bibliographic data” denotes the various data normally appearing on the first page of a patent or industrial design document or in a comprehensive entry in an official gazette concerning granted patents, industrial design or trademark registrations or the corresponding applications. Such data comprise document identification data, data on the domestic filing of the application, priority data, publication data, classification data and other concise data relating to the technical content of the document or of the entry in the official gazette. For details, see WIPO Standard ST.9 for patent documents, WIPO Standard ST.60 for trademarks and WIPO Standard ST.80 for industrial designs.
See “Official Gazette.”
CAPRI is an acronym for “Computerized Administration of Patent Documents Reclassified According to the IPC”. It relates to the reclassification, according to the IPC, of the patent documents published between 1920 and 1972 and included in the PCT minimum documentation. The system provides for the international exchange of inventories of those patent documents published between 1920 and 1972 and which have already been reclassified. These inventories are stored and processed by the European Patent Office Vienna Sub office, which prepared an “inverted file,” giving, for each document stored in numerical order, the appropriate IPC symbol or symbols.
A type of non erasable optical disc (Compact Disc – Read Only Memory), a frequently used means of optical storage. The data on the disc can only be read, not erased or altered. The main features of the CD ROM medium are: large and compact storage capacity, easy mass production, economics of storage, distribution and transmission, and high reliability. Consequently, at present, CD ROMs have received a wide use as a means of electronic publishing, storage, distribution and exchange of documents.
(See “Mixed mode CD ROM.”)
A “citation” in a patent document, search report, or in another document is a reference to another document, which may affect the patentability of a (claimed) invention.
If the citation refers to a patent document, it is recommended that it should consist of the code of the industrial property office or organization publishing the document, the publication number, the kind-of-document code, and the date of publication of that document. Relevant parts of the patent document such as page number, column number, paragraph number, line number, claim number, and figure number should be included to show the precise location of the cited material in the document.
If the citation refers to an article or a book, it should consist of the author (if available), the title of the periodical or book, the title of the article, the volume and page number and, usually, the publication date.
If the citation refers to a document published in electronic form or on the Internet, it should consist of, in addition to the elements above, the media type e.g. [online], the URL and date of retrieval from the Internet or database (where applicable), or any unique reference numbers sufficient to retrieve and identify the electronic document at a later date.
A citation may also make reference to an oral disclosure, use, exhibition, or other means of disclosure. (See also WIPO Standards ST.1 and ST.14.)
The part of a patent document which defines the matter for which protection is sought or granted. In some countries, the claims are published separately and may be used for information purposes instead of abstracts.
(1) In patent information and documentation matters “classification” means a specific system which subdivides technology into distinct units. A classification symbol is defined for each of those units. The classification symbol designating the unit into which the invention falls is usually printed on the first page of the corresponding patent document.
To “classify” a patent document means to determine that subdivision of a classification system to which, because of its technical nature, the invention claimed in the said document belongs and to allot a classification symbol to it. Sometimes, the classification relates not only to the claimed invention but also to other disclosures contained in the patent document.
For the purposes of systematizing collections of patent documents, many countries have developed various patent classification systems. The symbols of the said national classification systems are nearly always printed on the patent documents in order to permit the documents to be later retrieved. In order to avoid using different classification systems, the International Patent Classification (IPC) was established in 1968.
Note: Another meaning of the English term “classify” is to declare a patent application to be confidential or secret because it contains confidential, secret or “classified” information (usually for reasons of national security). In this context, “to classify” means to stamp, on the first page of the application, such words as “secret”, “top secret” or, simply, “classified”.
(2) For the purposes of registering trademarks, goods and services are subject to a special classification. Under most national laws, a trademark is registered for specified goods or services for which the corresponding class or classes must be indicated. Elements of the graphical representation of a trademark (figurative elements) can also be subject of a classification.
(3) Industrial designs are classified in a way similar to trademarks: the subjects of the classification are the different kinds of goods in which the industrial designs are intended to be incorporated.
See also definitions relating to different international classifications.
A patent document collection physically arranged primarily according to the symbols of a patent classification (e.g., the International Patent Classification) allotted to the individual patent documents, thus allowing immediate access, for search purposes, to all those documents belonging to the technical field defined by a given classification unit. A classified collection is, therefore, sometimes also called a search file.
Note: For classified collections, special measures have to be taken for documents to which several classification symbols have been allotted. Since multiple filing of documents is space consuming and costly, some offices often only file full texts of documents according to the first classification symbol allotted to them, and appropriate cross references (e.g., by inserting copies of only the first page of the respective document) are made under the classification symbols further allotted.
In industrial property documents, in entries in official gazettes and in records of industrial property information databases, as well as in non patent literature, some elements of industrial property information are often identified by the use of codes. Using codes is a convenient method of presenting an element of information in a shortened, uniform and easily understandable way. Codes relating to industrial property information are defined in several WIPO recommended Standards, published in the WIPO Handbook on Industrial Property Information and Documentation. The following codes have been so far recommended by WIPO Standards:
– Code for headings of announcements in official gazettes (ST.17),
– Code for identification of different kinds of patent documents (ST.16),
– Code for representation of countries and other entities and international organizations issuing or registering industrial property titles (sometimes referred to as “country code”) (ST.3),
– INID Code (for bibliographic data of patent documents – ST.9; for bibliographic data of trademarks – ST.60; for bibliographic data of industrial designs – ST.80).
Collections are frequently arranged according to the following characteristics: country or organization which published the documents, publication period covered, kinds of documents (e.g., published unexamined patent applications, granted patents, etc.), physical carrier (e.g., paper, microfiche, micro roll film, etc.) and ordering principle (numerical, classified). Normally, patent document collections are polytechnical, i.e., they contain documents referring to all fields of technology in which industrial property protection is available in the country or region publishing the respective documents. If a collection is not a polytechnical one, its subject matter coverage should be clearly defined.
See also “Classified Collection” and “Numerical Collection”.
A technology allowing the recording of computer output data directly on a microfilm carrier instead of making a paper printout, thus accelerating data output and reducing paper consumption.
A sheet of photographic film (microfiche) that carries reduced multiple images produced directly from computer stored information. The sheet usually measures 148 mm. x 105 mm. and may, e.g., contain 208 frames of information at a reduction ratio of 48:1. See also “Microfiche” and, for details on COM fiche, the WIPO Standard ST.7/F.
Many databases exist which are either devoted entirely to patent information, or contain a high percentage of information derived from patent documents, in addition to information taken from scientific and technical periodicals. There exist also databases specialized in trademark information. The majority of them are accessible on line.
Some of the patent databases principally contain bibliographic data of patent documents and thus allow the search of names or patent families. Sometimes also the words in the titles and/or the abstracts can be searched.
Other patent databases allow full text searches of the complete text of the patent documents, or of the abstracts. Certain databases have deep indexing systems which allow a very exact definition of the subjects to be searched. Some databases are subject oriented, covering all literature in a given technical field.
A survey of the most frequently used computer databases in respect of industrial property information is given in part 6 of the WIPO Handbook on Industrial Property Information and Documentation.
The term used to describe the use of a computer database to retrieve information therefrom. The computer can be used in an interactive mode from a remote location via a teletype or visual display unit (VDU) terminal, or it can be used in a batch mode requiring the input of enquiries and the output of results usually as a printed report. See also “On line”.
Refers to patent applications filed under the laws of the United States of America, where a second application may be made for the same invention as described in a prior application. The applicant and the disclosure presented in the continuation must be the same as in the prior application, which is subsequently abandoned.
Refers to patent applications filed under the laws of the United States of America, where an application may be filed during the pendency of an earlier application by the same applicant, which covers a substantial portion or all of the subject matter of the earlier application and adds subject matter not contained in the earlier application.
See “Computer Databases”.
Usually this term means the filing of an industrial design application together with photographs or other graphical representations of the design.
The description of the invention is one of the essential parts of certain kinds of patent documents, e.g., patent applications or patents. It usually specifies the technical field to which the invention relates, includes a brief summary of the technical background of the invention and describes the essential features of the invention with reference to any accompanying drawings. A deposit of a microorganism may be considered to be part of the description of the invention. See also “Disclosure”, “Specification” and the PCT Regulations, Rule 5.1.
See “Industrial Design Application”.
Title of protection for industrial designs in some countries (e.g., United States of America).
Written statement by which an applicant renounces a claim or part of it. In respect of trademarks, it may concern word(s), letter(s), devices or other elements constituting part of a sign which is the subject of a trademark application for which no exclusive right can be claimed or granted. The scope of the trademark is thus limited.
In patent information and documentation matters, “disclosure” includes:
(1) Disclosure of invention is the purpose of the description of the invention claimed in a patent document, e.g., a patent application or a patent. To be valid for purposes of patent law, such a disclosure must be made in a manner sufficiently clear and complete for the invention to be carried out by a person knowledgeable in the field (“person skilled in the art”).
(2) Technical disclosure, which is the information made available to the public on any invention. The disclosure may be written (in a patent application or technical journal – “written disclosure”), oral (in a speech – “oral disclosure”), or may be made by exhibiting an object incorporating the invention in a public exhibition or by using in public such an object or the process that constitutes the invention.
A patent application may be divided into two or more separate applications, if the rule of unity of invention so requires or if there is another reason (e.g., when the priority of two or more earlier applications is claimed for one application). These separate applications are then called “divisional applications” and benefit from the filing date of the initial application. Any priority claimed in the initial application may be claimed for the divisional applications. (See Paris Convention, Art. 4.G.)
In industrial property information and documentation matters, examination of a patent application (or an application for another industrial property right) is usually of two kinds (or stages):
(1) In the “formal examination”, the examiner checks that the application complies with all the formal requirements of the industrial property law. This includes checking whether the application contains all the parts (for instance request, description, drawings, claims, abstract, list of goods etc.) that it should, whether it is presented in the prescribed physical form (legibility, reproducibility), whether the request contains all the indications it must contain (as to the names, addresses, nationalities of the applicant, inventor, creator, agent, etc.), whether the priority claim, if any, contains all the indications it must contain, whether the prescribed fees have been paid, etc.
(2) In the “substantive examination”, the examiner checks whether the application complies with the patentability or registrability requirements of the industrial property law. Among others, the examiner of a patent application considers whether the claimed invention is new, involves an inventive step (is non obvious) and is industrially applicable (or has utility). A search for prior art is normally an essential element of substantial examination, though it sometimes may be carried out separately (as, e.g., under the PCT procedure for international applications). Certain industrial property offices consider the search as a particular stage of the examination (between the “formal” and the “substantive” examination). For trademarks, the subject of the substantive examination is to determine whether the trademark is a sign which fulfills all the prescribed requirements for being capable of serving as a trademark and whether the trademark is in conflict with prior rights.
A patent system in which applications are not subjected to substantive examination is sometimes called a “registration system,” since what the industrial property office does, in essence, is to note (“register”) each application filed with it and grant a patent (or another industrial property right) for each application by the mere act of registration (unless it discovers some formal defects in the application).
The laws of some countries provide that the substantive examination of a patent application by the industrial property office generally starts only on a specific request. This request, however, must be presented within a certain number of years (two to seven) after the publication of the patent application. Until such request is made, substantive examination of the patent application is “deferred,” that is, postponed. If no such request is made, the application is usually considered to be withdrawn.
See “Patent Family”.
In industrial property information and documentation matters, the noun “file” may have three different meanings:
(1) the totality of the documents pertaining to a given application or grant (documents legally required to obtain, e.g., a patent, as well as the complete record of correspondence between the applicant and the office – “patent file”),
(2) the container—usually a hard paper cover, called “file wrapper”—of the said documents,
(3) the whole collection of patent documents (e.g., computerized file, see “Computer Databases”). The classified collection is often called “search file”.
See “Official Gazette”.
As a verb, “grant” means the act of conferring an industrial property right to an applicant.
See “International Deposit of Industrial Designs”.
An authoritative source of information on all matters concerning industrial property information and documentation published by the International Bureau of WIPO. It gives detailed guidance on the problems of storage, processing and retrieval of the technological information contained in patent documents. It contains also the full texts of all WIPO Standards, PCT minimum documentation, detailed information on the IPC, on different computer databases, etc.
See “International Patent Classification”.
Acronym for “International Cooperation in Information Retrieval Among Patent Offices” that was created by a group of industrial property offices as a forum for patent information scientists and documentalists. It ceased to exist in 1979 when its functions were transferred to the WIPO Permanent Committee on Patent Information (PCPI) (now the WIPO Permanent Committee on Industrial Property Information – PCIPI).
Indexes of patent documents issued by industrial property offices and giving the major bibliographic data of patent documents are of considerable importance to the users who wish to obtain rapid and reliable information on different patent documents. The most useful are cumulative indexes issued yearly, half yearly or quarterly. Main kinds of indexes are document number index, classification index and alphabetic name index. For indexes of patent documents see WIPO Standards ST.11, ST.19 and ST.20.
See “International Patent Classification”.
In the field of industrial property, “industrial design” means the visual aspect of an object, including its two dimensional and three dimensional features of shape and surface. It is protectable through registration in an industrial property office or another competent authority.
French legal terminology, as well as the law of some countries, make a distinction between industrial “designs” and “models”. In those cases, the object of a “design” is two dimensional and that of a “model” is three dimensional.
A document filed by the applicant, or by an agent (representative) on his(its) behalf, requesting the registration of one or more industrial designs.
See “Official Gazette”.
See “Register of Industrial Property Rights”.
General term including patent information, as well as information relating to other industrial property rights, especially trademarks and industrial designs.
The governmental or intergovernmental authority which receives applications for the grant of industrial property rights and which grants and administers these rights in accordance with the respective laws. Since there are several kinds of industrial property rights, there may be more than one industrial property office (e.g., a “patent office” and a “trademark office”) in a country. There is also the possibility that an industrial property office acts on behalf of the governments of several countries on the basis of a treaty concluded to that effect (“regional industrial property office”).
“INID” is the acronym for Internationally agreed Numbers for the Identification of Data. The INID codes are numerical codes allotted to bibliographic data relating to industrial property documents and printed on their first page and in corresponding entries of Official Gazettes. INID codes have been developed for patent documents, trademarks and industrial designs. (See WIPO Standards ST.9 for patent documents, ST.60 for trademarks and ST.80 for industrial designs.)
Standard abbreviation for “International Patent Classification” when printed on patent documents (see the WIPO Standard ST.10/C).
The search technique of operation of a computer system in which a sequence of alternating entries and responses between the user and the system takes place in a manner similar to a dialogue between two persons.
Secretariat of the World Intellectual Property Organization (WIPO).
The International Bureau of WIPO is considered, for the purposes of certain treaties (e.g., PCT and Madrid Agreement) and certain procedural stages, as an industrial property office.
The International Classification for Industrial Designs is based on the Locarno Agreement Establishing an International Classification for Industrial Designs, of 1968. It consists of 32 classes and also comprises an alphabetical list of goods.
The International Classification of Goods and Services for the Purposes of the Registration of Marks is based on the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, of 1957. This Agreement provides for a classification which consists of a list of classes (34 for goods and 8 for services) and an alphabetical list of goods and services.
The International Classification of the Figurative Elements of Marks is based on the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, of 1973. This classification system concerns only marks consisting of or containing figurative elements (identified by sight). It consists of 29 categories, 144 divisions and 1,569 sections in which the figurative elements of marks are classified.
The international deposit of industrial designs is provided for by the Hague Agreement Concerning the International Deposit of Industrial Designs, of 1925. An international deposit does not require any prior national deposit. It is made directly with the International Bureau of WIPO or, under certain conditions, through the national office of a contracting State.
An application for the protection of an invention filed under the Patent Cooperation Treaty (PCT).
The International Patent Classification (IPC) is the patent classification system most commonly used. It is based on an international multilateral treaty (the Strasbourg Agreement Concerning the International Patent Classification, of 1971) administered by WIPO. The IPC is a hierarchical system which, in its fifth edition (1990), subdivides technology into 8 sections, 118 classes, 620 sub classes and approximately 60,000 groups (“main” groups and “sub” groups), each having a symbol. The symbol or symbols representing the invention described in any patent document are usually indicated on the patent document by the industrial property office which issued it. Thus, the document will be retrievable, according to its subject matter, with the help of the IPC. The IPC is now applied by about 70 industrial property offices which, taken together, issue over 90% of the patent documents of the world.
In specific areas of the IPC, the concept of hybrid systems has been introduced in order to improve the effectiveness of the IPC. A hybrid system provides for a patent document classified according to the IPC to bear the classification symbols appropriate to the technical subjects disclosed in the document and, associated with those symbols, indexing codes which identify elements of information about the technical subjects in addition to the information covered by one or more of the classification symbols. The indexing codes indicate the essential constituents of a composition or mixture, or constituent groups of a compound, or identify elements or components of a process or structure; alternatively they may identify uses or applications of classified technical subjects.
For details, the official WIPO publication International Patent Classification (printed by Carl Heymanns Verlag KG, Cologne) should be consulted. Its volumes 1 to 8 contain the Classification itself, while volume 9 contains the Guide, the survey of classes and the summary of main groups and volume 10 the Guide only. The use of the IPC is facilitated by catchword indexes, e.g., the official “Catchword Index,” which contains thousands of “catchwords” arranged in alphabetical order. In addition, in order to facilitate the search with several editions of the IPC, WIPO published, in cooperation with the German Patent Office, the Hungarian National Office of Inventions and the Spanish Patent and Trademark Office, the IPC:CLASS CD ROM, developed by Arcanum, B.t., Budapest. IPC:CLASS contains the third to fifth editions of the IPC in English and French, the fourth and fifth editions in German, the fifth edition in Hungarian and Spanish, Catchword Indexes in English, French and Spanish, the German “Stich und Schlagwörterverzeichnis” with a separate English translation, revision concordance data relating to the second to fifth editions of the IPC and the IPC symbols data. General information on the IPC is also contained in the WIPO Handbook on Industrial Property Information and Documentation.
See “Patent Cooperation Treaty”.
The international registration of marks is provided for by the Madrid Agreement Concerning the International Registration of Marks, of 1891. Only a mark previously registered in the national trademark office of a contracting State may be registered under the Madrid Agreement at the International Bureau (WIPO) in Geneva.
A listing of citations (see “Search Report”) of such published documents—mainly patent documents—that contain relevant prior art in respect of the invention claimed in an international patent application (PCT). It is prepared by an “International Searching Authority” and published together with the international patent application. (See also “Patent Cooperation Treaty and “Citation.”)
See “Patent Cooperation Treaty.”
A person who is the author of an invention. According to Article 4ter of the Paris Convention, the inventor has the right to be mentioned as such in the patent.
Specific form of protection of inventions which, together with patents, used to exist in several countries and still exist in a few countries.
See “International Patent Classification”.
Acronym for “Journal of Patent Associated Literature”, published periodically by the International Bureau of WIPO. This journal provides, in a highly concentrated form, bibliographic details of selected articles of interest for the purposes of patent search and examination that have recently been published in leading scientific and technical periodicals contained in the list of the “PCT Minimum Documentation”. Selected articles are classified according to the IPC. The content of the JOPAL journals published by the International Bureau of WIPO during the period 1981 92 is available on a CD ROM (called JOPALROM).
Several countries and organizations publish patent documents for various types of protection possible within their jurisdiction. Furthermore, according to certain laws or regulations, patent documents may be published at various stages of the procedure leading from the application for a given industrial property right to its final grant (or refusal). Thus, for certain countries and organizations, various “kinds of patent documents” exist, which may be characterized by the specific type of protection to which they refer and by the stage of the administrative procedure at which they were published. For more details, see Appendix II and WIPO Standard ST.16.
An application for the registration of a trademark must include a list of goods and/or services to which the trademark applies.
Searching in an interactive mode performed at the computer workstation which may be included in a local area network. External system interface may be provided giving the possibility of remote on line searching.
See “International Classification for Industrial Designs”.
See “International Registration of Marks”.
“Maintenance fee” or “renewal fee” means the fee that has to be paid, according to the industrial property laws of most countries, at regular intervals (usually once every year in the case of patents (“annuity”)) in order to “keep in force” the title of protection. According to the laws of some countries such a fee has to be paid also for applications in order to maintain the validity thereof.
General term often used to cover both trademarks and service marks. See “Trademark”.
A piece of photographic film containing reduced multiple images which has been processed and cut into sheets (usually A6 – 148 mm x 105 mm). For patent information purposes the images on the sheet reproduce pages of a patent document. The images may be formed optically to produce photo optical microfiche, or the images may be formed directly from a computer database to produce COM microfiche.
The advantages of microfiche are the relative ease with which master images can be produced, the cheapness of making multiple copies and the very small storage requirements compared with paper storage. Special reader machines are required to view the images or to make paper copies of the images on the microfiche.
A photographic film containing reduced multiple images. The film usually consists of 16 mm or 35 mm width rolls. For patent information purposes, the images are usually the successive pages of patent documents with the documents being presented in numerical order on the film. The first page of each patent document may be indicated (“blipped”) on the film to assist automatic location of a desired patent document.
A generic term denoting all photographic products upon which reduced images are recorded. The term includes aperture cards, microfilms, microfiches.
See “PCT Minimum Documentation”.
In the patent field a mixed mode CD ROM will contain patent documents recorded in electronic form where the text of the document will be character coded (e.g. to support retrieval and to maximize disc storage) and will be supplemented by image data of those sections of the document which are complex units (drawings, tables, chemical structures, etc.). The character coded data will also include aspects of document layout that will allow the display and printing of the text and images in their original relative positions which may or may not be in the original page format. (See “CD ROM”.)
See “International Classification of Goods and Services for the Purposes of the Registration of Marks”.
In general, scientific and technical journals, periodicals, monographs, textbooks, etc. In patent information, the term “non patent literature” is often used in the narrower sense of “patent associated literature” (see corresponding entry).
A collection ordered in the sequence of the serial numbers of the documents contained in it, thus allowing access to these documents according to this number (with regard to possible and existing numbering systems of patent documents, see WIPO Standard ST.6).
Most industrial property offices publish an official gazette (or “official bulletin” or “official journal”), which gives information on the procedural steps taken in respect of individual industrial property rights, as well as on official communications of the office, on the changes of the current industrial property laws, on the legal status of patent documents, etc. In some countries, official gazettes are published separately for patents, for marks and for industrial designs (“patent gazette,” “trademark gazette” and “design gazette”).
Entries concerning inventions are listed according to the most important bibliographic data, such as identification numbers of the patent documents, codes for identification of kinds of documents, classification symbols or names of applicants or inventors. Many official gazettes also publish, at least at one procedural stage, the abstract or main claim(s) of the claimed invention, plus drawing(s) and/or formula(e). The official gazettes of some countries publish the full text of patent documents. Trademark gazettes or trademark sections of official gazettes publish entries concerning procedural stages according to the legislation on marks. A similar practice is followed in the case of industrial designs.
In addition to the publication of the official gazette, some industrial property offices also publish, quarterly or annually, cumulative indexes of some of the listings contained in the official gazettes.
The technique of using a computer system in a direct, interactive mode, resulting in the establishment of a dialogue between the computer terminal and the computer database. The computer terminal may be quite remote from the computer center itself. The connection can be made through telephone or telex lines, but more frequently, for this type of communication, information switching networks are used.
Searching on line databases requires a knowledge of the structure of the database as well as of the search parameters provided for in the computer system which gives access to the database.
See also “Computerized Retrieval of Information”.
Opposition is a request, presented by the “opposing party” (a person or entity other than the applicant or the owner of the industrial property right) to the industrial property office to refuse the application or to revoke the industrial property right.
Storage of information on digital optical carriers (mainly optical discs). The rapid development and introduction of digital optical carriers is due to their advantages, such as large storage capacity, high reliability, long durability and relatively low cost. Two general formats of storage are used:
(1) bit mapped format, compressed in a way to give facsimile images after decompression,
(2) character coded digital format.
At present digital optical storage means exist mainly in the shape of discs, of which 12 inch discs and 5.25 inch discs are for storage applications in in house computer systems and 5.5 inch discs (CD ROM’s) are commonly used for data distribution. (See also “CD ROM” and “WORM.”)
The Paris Convention for the Protection of Industrial Property is the basic international convention in the field of industrial property, adhered to by over 100 States. The Convention was concluded in Paris in 1883, revised repeatedly (in Brussels in 1900, in Washington in 1911, in The Hague in 1925, in London in 1934, in Lisbon in 1958 and in Stockholm in 1967), and amended in 1979. It provides among others that, as regards industrial property, each contracting State must ensure that foreigners enjoy the same protection given to its own nationals and the right of priority established in Article 4 of the Convention. The Convention also lays down various minimum standards of protection and common rules which all contracting States must follow in their national laws.
(1) A patent is a title of legal protection of an invention, issued, upon application and subject to meeting legal criteria, by a government office (or a regional office acting for several countries). It creates a legal situation in which the patented invention can normally be exploited only with the authorization of the owner of the patent. The protection conferred by a patent is limited in time (generally 15 to 20 years from filing or grant). It is also limited territorially to the country or countries concerned.
(2) The concrete form of the patent is often a certificate or letter (also called “patent” or “letters patent”), accompanied by a patent specification which describes the patented invention.
Official journal containing announcements with respect to patent documents. The term “announcement” comprises in a wider sense the abstract of the description of an invention or of a utility model as well. (See terms “Official Gazette” and “Abstract Journal”.)
A document filed by the applicant, or by an agent (representative) on his(its) behalf, requesting the grant of a patent. It usually contains a detailed description of the invention, the claims, and drawings when necessary for the understanding of the invention. According to the patent legislation of some countries, the patent application is published 18 months after the filing date or, where appropriate, priority date, sometimes together with a search report.
An expression used for those scientific journals and periodicals that contain articles useful for the purposes of patent search and examination. Around 170 periodicals have been selected under the Patent Cooperation Treaty as forming the minimum requirements for non patent literature to be kept by a PCT International Searching Authority. (See “Non patent literature” and “JOPAL”.)
An international treaty concluded in 1970, open to all States party to the Paris Convention, and administered by WIPO. It provides for the possibility of filing international (patent) applications which have, in each contracting State designated by the applicant, the same effect as a regular national patent application directly filed with the patent office of or acting for the designated State. It further provides for a search of the prior art to be carried out for each international application by an “International Searching Authority” and for an (optional) international preliminary examination carried out by an “International Preliminary Examining Authority”.
For details the corresponding documents and publications should be consulted (the Patent Cooperation Treaty and the Regulations under the PCT as well as, e.g., the WIPO official publication “PCT Applicant’s Guide”).
If not specified otherwise, the expression “patent documents” normally includes the following documents: patents for invention, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, utility certificates of addition and published applications therefor. For details on different kinds of patent documents, see Appendix II and WIPO Standard ST.16.
A collection of published patent documents relating to the same invention, or to several inventions sharing a common aspect, that are published at different times in the same country or published in different countries or regions. Each patent document in such a collection is normally based on the data for the application(s) on which the basis for its “priority right” has been claimed. Below follow the definitions for different types of patent families:
(1) SIMPLE PATENT FAMILY
“Simple patent family” means a patent family relating to the same invention, each member of which has for the basis of its “priority right” exactly the same originating application or applications.
(2) COMPLEX PATENT FAMILY
“Complex patent family” means a patent family relating to the same invention or to several inventions sharing a common aspect, each member of which has for the basis of its “priority right” at least one originating application in common with the other members of the family.
(3) EXTENDED PATENT FAMILY
“Extended patent family” means a patent family relating to one or more inventions, each member of which has for the basis of its “priority right” at least one originating application in common with at least one other member of the family.
(4) NATIONAL PATENT FAMILY
“National patent family” means a patent family relating to one or more inventions, the members of which are published by the same office and at least two of which are distinct from each other (i.e., not merely a different procedural publication stage for the same originating application – see domestic patent family), and having for their basis of “priority right” at least one originating application in common with the other members of the family. The relationship of at least two of the published patent documents in this type of patent family is a result of additions, continuations, continuations-in-part, or divisions of the original subject of invention covered by an originating application.
(5) DOMESTIC PATENT FAMILY
“Domestic patent family” means a patent family consisting solely of a single office’s different procedural publications for the same originating applications(s).
(6) ARTIFICIAL PATENT FAMILY
Artificial Patent Family (intellectual or non-conventional patent family) – means a patent family consisting of a collection of equivalent patent documents (i.e., documents relating to the same invention) published by different offices and at least some of which do not share a common originating application or applications (or where data relating to such a common originating application is not disclosed). The members of this type of family are determined only after intellectual investigation to have essentially the same disclosed content.
Examples illustrating the above types of patent families are given in Appendix III.
See “Official Gazette.”
Patent information covers:
(1) technical information relating to articles, products, processes and uses and described in the examples, drawings and formulae of the patent documents,
(2) legal status information relating to whether the patent or other industrial property right is in force, data from the patent register, etc., and
(3) bibliographic information relating to published patent documents.
See also “Access to Industrial Property Information”.
A kind of patent provided for in the legislation of some countries, allowing the inventor to obtain, at reduced costs, protection for improvements of an invention for which a patent application was already filed or for which a patent had been granted earlier (main patent). The grant and maximum duration of a patent of addition are dependent on that of the main patent. If the main patent becomes invalid, the patent of addition may continue to be valid by becoming a main patent itself, subject to the payment of the fees foreseen to maintain a “main patent” in force.
See “Industrial Property Office”.
See “Register (of Industrial Property Rights)”.
The owner of the patent, i.e., the holder of the right represented by the patent.
See “Patent Cooperation Treaty”.
A (very comprehensive) collection of patent documents and other technical literature (non patent literature) an industrial property office must have at its disposal in order to obtain the status of “International Searching Authority” (see Rule 34 of the PCT).
“Petty patent” is an unofficial designation sometimes given to utility models. “Petty patent” is also the official name of a title known in the Australian law—in contradistinction to a “standard” patent—and which provides shorter term protection and is granted under easier conditions and at reduced costs, than “standard” patents. (See “Priority Document”.)
Special kind of patent protecting new plant varieties.
This expression usually denotes patent documents. In some cases, it may denote also institutions making patent documents accessible.
Synonym of “State of the Art”.
The (first) application filed by an applicant on the basis of which subsequent applications filed by the same applicant or his successor in title for the same invention, or concerning the same industrial property right, may be accorded a priority right in accordance with Article 4 of the Paris Convention or in accordance with any equivalent provision in the national or regional law.
The part of the bibliographic data (normally published on the first page of a patent document) identifying the earlier patent application(s) on the basis of which a so called priority right has been claimed (usually based on Article 4 of the Paris Convention). These identification data comprise three elements: the application number, the filing date and the identification of the country or organization where the respective earlier application was filed. Priority data belong to the basic bibliographic data of a patent document and may serve, inter alia, for identifying patent documents published in different countries and languages but referring to the same invention (“Patent Family”).
Copy of the priority application, required by an industrial property office when a declaration of priority under Article 4 of the Paris Convention or any equivalent provision in the national or regional law has been made in connection with an application filed with that office.
In publications on industrial property information matters, the terms “publication” and “published,” relating to industrial property documents, are normally used in the sense of making available the contents of a document to the public.
Depending on the particular national law, patent documents may be published on several levels of publication, as given in WIPO Standard ST.16, and in one of the following forms:
(1) by making the patent document available to the public at the industrial property office by
(i) laying it open to public inspection, within a determined period. The beginning of that period, as well as its duration, are fixed by industrial property laws of the respective country;
(ii) supplying a copy of the document on request;
(2) by producing multiple copies of a document by printing or like process and offering to anyone for buying;
(3) by reproducing the entire patent document in the official gazette.
According to some national laws, industrial property offices publish in the official gazette a reference to the patent document which either
(i) may have already been published at an earlier procedural stage (e.g., the case of a patent application which was published 18 months after its filing or priority date and to which a reference is later published in the official gazette at the time of the grant of the patent thereon), or
(ii) is made available to the public at the industrial property office.
Trademarks and industrial designs are usually published as entries in official gazettes.
See also “Official Gazette”.
Patent granted by a regional patent (or industrial property) office. The effects of such regional patent in member States designated by the applicant are the same as for patents granted according to the national legislation.
Office created by an international treaty between States of a region. It grants regional patents and possibly other industrial property rights. Their activities are similar to those of national industrial property offices, but are carried out on behalf of all the member countries.
Register kept by an industrial property office in which is recorded the legal status of different industrial property rights. Usually, the office keeps separately a patent register, a trademark register and an industrial design register.
The issuance of a certificate of registration confers on the proprietor of a registered industrial design the exclusive right of exploiting the design.
The exclusive right to a mark is typically acquired by registration at an industrial property office, but, in a few countries, that exclusive right is attained by first use. When used, a registered trademark is sometimes accompanied by the symbol (R) for “registered” or TM for “trademark” or RTM for “registered trademark”.
According to the legislation of some countries, an amended patent issued to supersede an original patent for the same invention and expiring on the same date as the original patent would have expired.
Searching in an interactive mode from a computer terminal in a remote computer database using telecommunication channels.
The registration of a trademark or of an industrial design may be renewed. The renewal of a registration is published in the official gazette in order to ensure that anybody interested is informed about the renewal. The request for renewal usually is not examined as to substance. If the renewal is not effected, the registration expires.
See “Maintenance Fee”.
Service providing patent information based on profiles of interest, e.g. defined using symbols of the IPC. It is used by research institutions, industrial enterprises and other organizations to create and maintain search files according to their needs.
The search through the search files is made in order to identify any documents considered to be necessary to determine whether the invention is new and involves an inventive step.
Types of search:
(1) According to technical means used: manual search (in a paper collection), mechanized search (e.g., using punched cards), on line search (in a computerized file).
(2) According to the purpose of the search: state of the art search, novelty search, infringement search, etc.
(3) According to the means used: classified search, name search, catchword (keyword) search, full text search, etc.
The search is sometimes made also for trademarks and industrial designs in the trademark or design register. The purpose of the search usually is to find out if the conditions of the registrability of a trademark or of a design are fulfilled, particularly as regards earlier conflicting rights.
See also “Examination”.
See “Classified Collection”.
Report of the results of a search of the state of the art, made by or on behalf of an industrial property office, indicating citations considered relevant for determining, in particular, the novelty and inventive step of the invention as claimed. A search report in the case of other industrial property rights also gives the results of the search, e.g., on the conditions of the registrability of a trademark, particularly as regards earlier conflicting rights, etc.
This expression denotes all kinds of sources, except patent documents (e.g., journals, official gazettes, databases, etc.), which supply bibliographic data on patent documents and information on their contents in a convenient and consolidated form, e.g., by an abstract or by a reproduction of the main claim(s), plus a reproduction of the basic drawing(s) or formula(e) whenever appropriate. Secondary sources of patent information imply, but are not restricted to, official gazettes, abstract pamphlets or indexes published by industrial property offices. Often, secondary sources of patent information originate from specialized commercial institutions.
The part of a patent document which gives a detailed description of the invention, accompanied by claims. The specification may, when appropriate, include drawings and formulae. (See also “Description of the Invention”.)
WIPO standards concerning industrial property information and documentation have been elaborated and adopted by the PCIPI or its predecessors as recommendations to the industrial property offices. They contain rules and regulations relating to a number of matters of industrial property information and documentation. The application of standards by the industrial property offices makes it possible to uniformize their practice and to facilitate international cooperation in this field. The full text of all WIPO standards is published in the WIPO Handbook on Industrial Property Information and Documentation.
The level of development to which a particular area of technical subject matter has advanced at a given date. It consists of everything disclosed to the public, in the form usually defined by the national legislation. In connection with a particular invention, the state of the art is decisive for the determination of the patentability of the invention in regard to novelty and inventive step.
A Supplementary Protection Certificate is an industrial property right which is granted for a product which has obtained authorization to be placed on the market as a medicinal product. The certificate takes effect at the end of the term of a patent which protects the product as such, a process to obtain the product or an application of the product. The certificate extends the protection conferred by the said patent, but only in respect of the product covered by the said authorization and any use of that product as a medicinal or phytopharmaceutical product that has been authorized before expiry of the certificate. The certificate does not extend the term of the said patent. In this context:
– “medicinal product” means any substance or combination of substances presented for treating or preventing diseases in human beings or animals or any substance or combination of substances which may be administered to human beings or animals with a view to making a medical diagnosis or to restoring, correcting or modifying physiological functions in humans or in animals;
– “phytopharmaceutical product” means any active substance or preparation containing one or more active substances, put up in the form in which it is supplied to the user, intended to:
(i) protect plants or plant products against all harmful organisms or prevent the action of such organisms, in so far as such a substance or preparation is not otherwise defined below;
(ii) influence the life processes of plants, other than as a nutrient (e.g., plant growth regulators);
(iii) preserve plant products, in so far as such a substance or product is not subject to special Council or Commission provisions on preservatives;
(iv) destroy undesirable plants; or
(v) destroy parts of plants, check or prevent undesirable growth of plants;
– “product” means the active ingredient or combination of active ingredients of a medicinal or phytopharmaceutical product.
A notification of the application for a supplementary protection certificate and of the fact that the certificate has been granted or the application for the certificate has been rejected is published by the industrial property office with which the application was lodged.
Several words contained in the request part of the application indicating clearly, concisely and as specifically as possible the subject matter of the invention. For details on the title of the invention see WIPO Standard ST.15.
A sign which serves to distinguish usually the goods (as does the “service mark” with regard to services) of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of one or more distinctive words, letters, numbers, drawings or pictures, symbols, monograms or signatures, colors or combinations of colors, holograms or sounds, and, under some legislation, it may also consist of the form or other special presentation of containers or packages for a product (provided it is not solely dictated by their function). The sign may consist also of combinations of any of the said elements. Accordingly, trademarks can be divided into several categories, as, for instance, word marks, figurative marks, combined marks, three dimensional marks, etc.
See also “Registration of the Mark”.
A document filed by the applicant, or by an agent (representative) on his(its) behalf, requesting the registration of a mark. It usually contains a reproduction of the mark, the list of the goods and/or services in respect of which registration is sought, and the class or classes into which those goods and/or services fall.
See “Official Gazette”.
See “Industrial Property Office”.
See “Register (of Industrial Property Rights)”.
The laws of several countries contain the requirement of the so called “unity of invention”, i.e., that the application can relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. If the said requirement is not fulfilled, the application must be divided. See also “Divisional Application”.
A specific form of protection of inventions existing, together with patents, in France (“certificat d’utilité”). Applications for utility certificates are not subject to a state of the art search and their duration is shorter (only 6 years).
A protective title provided for in several national laws in order to protect a minor invention, upon application, normally through mere registration, by a government office, of the description, drawing or other picture, or also by the filing of a model, in accordance with requirements somewhat less strict than those for obtaining patent protection (e.g., lower fees, only in certain technical fields, in some countries not requiring inventive step), but also protected to a lesser extent (e.g., shorter duration). Otherwise, the rights conferred by a utility model are similar to those conferred by a patent.
See “International Classification of the Figurative Elements of Marks”.
Specialized agency (organization) in the United Nations system. Its objectives are:
(1) to promote the protection of intellectual property throughout the world through cooperation among States and, where appropriate, in collaboration with any other international organizations,
(2) to ensure administrative cooperation among the intellectual property Unions.
The WIPO body charged with industrial property information and documentation matters is the “Permanent Committee on Industrial Property Information (PCIPI)”.
A frequently used means of optical storage of the type of an optical disc. The user can write on the disc any information he wishes as a once only operation. Stored information cannot be erased once formed but can be read many times. Information can only be added to existing data.