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Publications of OSFs are often fully equivalent to the publication of the OFF and represent mere
translations. It should be noted however that this is only a rule of thumb, because the Paris
Convention expressly permits additions to the disclosure of the first filing when claiming the priority
rights of earlier filings.
11
In particular, if two or more priorities are claimed in a second filing, it is very
likely that the claimed subject matter is somehow different from the individual priority applications.
It is important to recognize that pre-grant applications, while potentially important indicators, are not
granted, and in fact, may never be granted. Applications can be abandoned or withdrawn during
prosecution for a variety of different reasons; but the primary reason is that an examiner has stated
objections in an office action. Once an application has been abandoned any subject matter disclosed
within it is now part of the public domain of the jurisdiction where it was abandoned and can be used
by others, assuming that other granted patents don’t exist on the same subject. Abandoned
applications still represent interest on the part of the applicant and can still provide valuable insights
even if they don’t represent a property right. On the other hand, large numbers of applications that do
not make it to grant may also be an indicator that there are incentives in place for filing applications.
Understanding the difference between granted patents and pre-grant applications is critical for
interpreting their impact on a field. In the development of analytics associated with PLRs it is good
practice to separate pre-grant applications from granted patents when conducting an analysis, e.g. by
using kind codes (see section 4.2.4 below). The implications of pre-grant applications are significantly
different than what can be implied from a granted patent and they should be considered separately, or
at the very least, identified as a different type of document when visualizing a result.
Some pre-grant publications can be considered as defensive publications since they were not filed
with the intention to obtain patent protection but rather to prevent others, e.g. competitors, from
obtaining patents on the technical subject matter disclosed in the application
12
. With other words, the
intention of these filings is to place their technical disclosure in the public domain for free use by
anybody. It is however not readily possible to distinguish such pre-grant publications from others
where the applicant seeks protection.
4.2.1.1 – PCT Applications
While pre-grant publications of applications are usually associated with specific jurisdictions and
therefore may represent an indicator where innovation takes place (in case of OFFs) or where patent
protection is sought (in case of OSFs), there is also a special type of patent application that facilitates
the filing of applications in many jurisdictions simultaneously.
11
Article 4 (F) provides that “No country of the Union may refuse a priority or a patent application on the ground
that the applicant claims multiple priorities, even if they originate in different countries, or on the ground that an
application claiming one or more priorities contains one or more elements that were not included in the
application or applications whose priority is claimed, provided that, in both cases, there is unity of invention
within the meaning of the law of the country.With respect to the elements not included in the application or
applications whose priority is claimed, the filing of the subsequent application shall give rise to a right of priority
under ordinary conditions.”
12
Before the America Invents Act (AIA), which was signed into law on September 16, 2011, the US system
knew the so-called Defensive Publication (DEF), and the Statutory Invention Registration (SIR) which
replaced the Defensive Publication in 1985-86. The AIA repealed these provisions because all pending
applications are now published 18 after filing or priority date.
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14
The Patent Cooperation Treaty (PCT), which has effect in 148 jurisdictions (as of July 2015), provides
for a system that
- permits the applicant to lodge a single application with a Receiving Office of the PCT system;
and
- to obtain a search report and written opinion from an International Searching Authority of the
PCT system, and eventually a Supplementary International Search and/or an International
Preliminary Examination which assesses the patentability, and thereby
- enables the applicant to take an informed decision if and for which countries he will seek
protection;
- grants the applicant a period of 30 months (in most member jurisdictions) to seek patent
protection in each of those jurisdictions (national phase entry); which
- allows for more time to assess the commercial viability of the invention; and delays the
considerable expenses associated with pursuing the patent prosecution in those jurisdictions
(such as translation, legal representative, national fees).
The Patent Cooperation Treaty and the related services are administered by the World Intellectual
Property Organization (WIPO) which publishes respective PCT applications (also referred to as WO
documents). WIPO is responsible for administering the PCT system and for ensuring that PCT
applicants receive an initial prior art search report and a written opinion
13
regarding the potential
patentability of the subject matter claimed in the application against prior-art from around the world.
Based on the benefits attributed to the PCT system, WIPO is often used as an OSF on many
applications where the idea of protection on a more global scale is being considered. To a lesser
extent it is used as an OFF. Due to their popularity PCT applications are an important source of patent
information for PLRs.
If a PCT application enters a national phase, there may be subsequent pre-grant publications of these
national phase entries (NPE), depending on the respective publication policy of each jurisdiction,
however only with a certain delay because the NPE usually becomes effective only 30 months after
the filing or priority date of the PCT application.
4.2.2 – Granted Patents
Publications of granted patents are of particular importance in comparison to publications of
unexamined applications because the grant asserts that the invention disclosed in the application is
indeed new and inventive over the known prior art. A grant can therefore be taken as a quality
indicator for innovation activities. The time of grant of patents, i.e. the publication date of the grant,
depends however very much on the pendency of patent examination and can differ considerably from
jurisdiction to jurisdiction or also for certain areas of technology. Publications of granted patents may
usually be identified by a specific kind code as part of the publication number (see below).
4.2.3 – Post-Grant Documents
13
As from July 1, 2014, the written opinion is made publicly available on PATENTSCOPE in its original
language as of the date of publication of the international application
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15
There are a number of additional patent documents that may be published after the publication of the
grant of a patent. The most important ones are publications following reexamination or opposition
procedures that were initiated by third parties after the publication of the grant. If, as a result of these
procedures, the scope of protection was restricted, a new publication would be made including the
modified claims. That is the case, for instance, for the EPO, where if the patent is maintained in an
amended form, a new patent specification is being published.
Similarly, patent documents would be reissued if the patent owner on his own initiative wishes to
restrict the scope of protection of the patent in order to escape an imminent reexamination or
opposition procedure. A third, although less important, reason for post-grant publications may be the
correction of clerical or typographical errors.
These post-grant documents, while they may impact the scope or the term of a granted patent, are
normally not considered when collecting a data set for PLR related analysis. If these documents are
included in a corpus it is generally a good idea to filter them out before conducting the analysis. A
notable exception to this is when an analysis of claim language is being conducted. In this case,
reissue and reexamination documents can modify the original, granted claims and under these
conditions they should replace the original patent.
4.2.4 – Kind Codes
It was already repeatedly mentioned that different publication stages of an application are usually
distinguished by kind codes (e.g., A1, A2, A3, B1,..) which are part of the document publication
numbers.
The WIPO Handbook provides the following definition for kind codes of patent document:
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 and a complete list of the kinds of patent documents issued by each patent authority
see Part 7.3.1 of the WIPO Handbook, and for an inventory of kind codes per issuing patent authority
see Part 7.3.2 of the WIPO Handbook.
14
The WIPO Standard ST.16 provides for a basic standardization of kind codes. It should be noted,
however, that patent authorities do not use kind codes in a fully standardized manner because of
differences in their publication policies. For example, for the EPO and WIPO, the kind code 'A1'
designates publications of patent applications with a search report; while for the USPTO, it designates
publications of patent applications without a search report since the USPTO does not publish search
reports. For such publications of patent applications without a search report, the EPO and WIPO
would use the kind code 'A2'.
It should further be noted that the kind codes used by each issuing patent authority may have
changed over time; for example the USPTO used kind code 'A' for the publication of granted patents
14
http://www.wipo.int/standards/en/part_07.html#7.3
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through December 2000, and kind codes 'B1' and 'B2' as from January 2001. These changes of the
use of kind codes are also described for each patent authority in Section 7.3.2 of the aforementioned
WIPO Handbook.
4.3 – Components of Patent Documents
While patents documents contain a good deal of raw text, they are referred to as semi-structured,
since they have a number of sections that are found in almost every document, regardless of its
country of origin. At a high level these sections of a patent document are represented by a Front Page
with bibliographic data, a Description (Disclosure) and a Claims section. Within each of these high-
level sections there are subsections that provide specific information about the particular document.
These subsections are typically segmented into individual fields when the documents are processed
for electronic delivery or the generation of databases.
An additional Drawings section is facultative, but often included to illustrate the description and
facilitate the interpretation of the claims. In some jurisdictions, the publication of an application further
includes a search report as a further section of a patent document when the search report is available
at the time the publication is prepared. Else, the search report may be published as a separate
document at a later time once it has been established.
4.3.1 – Front Page and Bibliographic Data (Metadata)
The WIPO Handbook provides the following definition of bibliographic data:
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.
The majority of the statistical analysis conducted on patent collections takes place using data
collected from the bibliographic fields within them. Many of these fields contain categorized text or
numbers and thus are readily applicable to statistical analysis (see also section 7.1 below).
To assist with working with this data across different jurisdictions and languages, an international
standard for bibliographic data within patent documents, called INIDs has been developed by WIPO.
The WIPO Handbook provides the following definition of INIDs:
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 are standardized by the World Intellectual Property Organization (WIPO) in ST.9
15
which
includes a complete list of the INID codes. A few of the bibliographic fields, used most frequently in
the statistical analysis of patent collections, for PLRs are provided below.
15
http://www.wipo.int/export/sites/www/standards/en/pdf/03-09-01.pdf
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4.3.1.1 – Applicant/Assignee
The WIPO Handbook provides the following definition of applicants:
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.
In general, the applicant is the inventor, but it may also be the employee or the person to who the
inventor assigned his/her right to the invention (assignee). Ordinarily, this will be a company or
organization, but can be the inventors when the rights associated with the invention are not
transferred, or assigned, to a different entity.
In the United States, an assignment is required because, the Constitution of the United States
provides in Article 1, Section 8, that: the "Congress shall have power . . . to promote the progress of
science and useful arts by securing, for limited times, to authors and inventors, the exclusive right to
their respective writings and discoveries.” In other words, the inventor, and not the organization that
employs them receives a patent right. However, corporations can now apply for patents directly,
without a formal re-assignment from the inventor under the American Invents Act
16
.
Even with the new
statutes most patenting in the United States is still done the traditional way; the rights are granted to
an inventor, and are then assigned to the legal owner based on the stipulations of the employment
agreement the inventor signed when joining the organization.
In the context of PLRs, the Applicant/Assignee represents the owner of a patent and with whom
negotiations for the rights associated with the invention will have to be conducted. Studying them
identifies investors within a technical area. Network analysis is frequently applied to identify
collaborations, e.g. in certain technical fields.
Applicant and assignee names can change over the life cycle of a patent application whenever the
rights in the invention are transferred. Marginal changes can also occur in case of clerical corrections
of misspellings of names. A problem that frequently occurs with any names are variations of names
that derive from transcriptions of names from other scriptures like Chinese if varying transcription
rules are applied. One and the same person can thus be represented by slightly different spellings of
his or her name.
Another frequently appearing problem in search and analysis is that subsidiaries of corporations often
use varying names in different countries. Analyses that wish to cover complete paten portfolios need
to take this into account and utilize various tools to tackle this, such as the so-called corporate trees.
These gather various variations of an entity and their affiliations and group them together, in a more or
less automated way.
4.3.1.2 – Inventor
The WIPO Handbook provides the following definition of an inventor:
16
http://www.ladas.com/Patents/PatentPractice/AIA_Filing_Requirements.html
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18
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.
The set of inventor names in the bibliographic data of an application should therefore be
comprehensive, and unlike the names of applicants or assignees, the names of inventors usually
don’t change over the life cycle of a patent application (except for clerical corrections of misspelled
names). In an application claiming the priority of an earlier application, inventor names may however
be added if additional inventive subject matter is included in the later application which involved
further inventors.
In the context of PLRs, the inventor represents the person or persons who are responsible for the
intellectual effort associated with the invention. Studying information related to the inventors provides
an idea about potential experts and leaders in an area of technology. Network analysis is frequently
applied to identify collaborations between different inventors or groups of inventors, and institutions for
which they work.
4.3.1.3 – Dates
Dates correspond to the timing of significant events in the lifecycle of a patent application. The three
most significant patent related dates are the priority, the filing and the publication dates.
The filing or application date is determined by the patent authority that receives the application if
certain minimum requirements are fulfilled, which actually differ from jurisdiction to jurisdiction. The
filing date may therefore differ from the date the applicant lodges the application with the patenting
authority.
The priority date (or dates if the priorities of several earlier applications are claimed) corresponds to
the filing date of an earlier application if the applicant claims the priority of that earlier application. It is
important because it may determine the relevant prior art if certain conditions are met.
Another important date is the publication date, which is the date when a patent document is
published. Patent applications are published 18 months after the filing date or the earliest priority date
in most patent issuing authorities.
In the case of granted patents the publication date is also referred to as the grant date. It is important
because, in most jurisdictions, the protection provided by a patent enters into force with the
publication of the grant.
In the context of PLRs, the dates represent the timing associated with the development or patenting of
an invention and are used for analyzing trends. Studying filing or priority dates provides an indication
of when inventions were developed and how long it took for improvements, and modifications to start
occurring. Publication dates are less useful for this pupose. In particular, the grant date is rather an
indicator for the pendency of applications until grant.
4.3.1.4 – Priority Data
The WIPO Handbook provides the following definition of priority data:
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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”).
4.3.1.5 – Classifications
The WIPO Handbook provides the following definition for patent classifications:
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 and recorded in databases as part of the bibliographic
data.
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.
In the past, different national classification systems were developed and applied to the patent
publications of each respective country. In a first attempt to harmonize these systems, the
International Patent Classification (IPC)
17
was created in 1968 which is nowadays applied to patent
publications of almost all jurisdictions worldwide. Each patenting authority is obliged to classify the
applications filed in its jurisdiction. The term bibliographic IPC was coined to address these
classifications provided by the publishing authority and presented as part of the bibliographic data on
the front page of the official patent publications. The classification by the publishing authority does
however not prevent other patenting authorities from reclassifying these publications when they add
them to their search file.
The IPC is regularly revised to include new technologies, or to divide existing classification places into
several subunits with a more narrowly defined scope. Classification symbols are therefore usually
accompanied by version indicators. With each revision, all patent publications belonging to the PCT
Minimum Documentation are reclassified according to the new classification, and the updated
classifications of documents are made available to database hosts. It is their responsibility to update
the database accordingly.
In October 2010, the EPO and USPTO launched a joint project to create the Cooperative Patent
Classification
18
(CPC) in order to harmonize their proprietary patent classifications systems, the
United States Patent Classification (USPC) and the European Classification (ECLA). Like the former
ECLA, the CPC is based on the IPC and provides a more detailed classification scheme in order to
meet classification requirements of the EPO and USPTO. With the entry into force of the CPC all
17
For more information on the IPC as well as revision and reclassification procedures see
http://www.wipo.int/classifications/ipc/en/; the 2015 version of the Guide to the IPC is available at
http://www.wipo.int/export/sites/www/classifications/ipc/en/guide/guide_ipc.pdf .
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http://www.cooperativepatentclassification.org/index.html
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