Patent searches, reporting

The international search report is communicated to the applicant by the international search authority. The applicant may then decide to withdraw his patent application if, for example, the prior art found makes the granting of a patent highly unlikely. If the international patent application is not withdrawn, it is published together with the search report. Third parties now have the possibility to take notice of the claimed invention and to form their own opinion about its presumed patentability. In addition, they can assess any possible later dependencies should they want to practice the invention. An example of the cover of a published international patent application is shown in Figure 13.2. 

Fig. 13.1. Example international search report listing several prior-art documents. These are categorized with respect to their influence on the patentability of die subject matter of die claims.

Prior art cited in search reports of a foreign patent office in a counterpart application, and... 

After submission to a patent office, the file is examined for some basic formal requirements and, if adequate, is given a filing date. A first indication about the chances of a patent application may be obtained from a search report which is issued by the European Patent Office and also for international patent applications under the Patent Cooperation Treaty (see below). In most cases, the search report will list a number of earlier patents or publications and indicate whether these interfere with the proposed claims of the examined file. As a consequence of the search report the applicant can amend the proposed claims before the examination is initiated. 

The International Patent Cooperation Treaty (PCT) created the opportunity to file a patent application almost world-wide (most countries accept PCT applications) at international patent registration offices which are usually identical with the national patent offices. A search report summarizing relevant prior art will be issued and, if requested, a preliminary examination considering the prior art is performed. The preliminary international examination provides a non-binding opinion whether the claimed invention appears to be novel, inventive and industrially applicable. It does not investigate the patentability according to any national law. 

International (PCT), European (EP) and most other national patent applications are published 18 months after the priority date. PCT and EP applications are published along with the search report. (If a search report is not available at that time, it will be published separately.) This publication offers third parties the possibility of inspecting the file upon request and to inform the patent offices about their related observations. These must be considered by the patent office and will be transmitted to the applicant. 

In most countries the formal process of patenting includes several regulations and steps which enable third parties to prevent the grant of patents which are not justified. These steps are early publication of a patent application, publication of the search report, access to the files upon request, provision of an objection period after publication of a patent grant and finally the possibility to submit objections against granted patents. 

Applications for a national patent or at the International Patent Office may cost up to an equivalent of US 3,000 per application for a search report and the examination. A similar amount can be assumed for the involvement of a patent attorney as long as only formalities are concerned. Creative work by a patent attorney office (e.g. formulation of the claim or of defending statements) as well as translations result in the extra cost of about US 100-300 equivalent per hour, depending on the qualification of the person who deals with it. Thus, the effective cost of the patent application may rise up to US 8,000-10,000 per country. Annuities for a national patent are raised as a constant rate per year or increase during the life-span of a patent. The figure of US 100-300 per year and country (or per patent certificate from international patent organizations) may serve as a clue for what must be expected. 

The effective patent protection would be shortened and less valuable. A favourable search report, however, may be useful to considerably strengthen the position of the patent applicant. 

Compilation of a bibliography. Choice of a topic conduct of search report. Government documents (except patents). General indexes production statistics import-export statistics Office of Publication Board reports. 

Often it is necessary to say no material found. This is a source of satisfaction to the patent attorney in the case of patentability searches, but never to the library staff The original articles are not sent with the report, but are available to the patent attorney upon request. The reports are not critical, except for the fact that apparent errors are noted. 

Thus searches made by the two libraries have a direct bearing on the effective production of the patent department. Such a simple bit of information as azeotropic composition may be needed to convince the patent examiner that a separation process will function as claimed in the patent application. It is reported (I, 3) that 30 to 50% of the patents applied for fail to become patents and that most of the applications rejected were found to be anticipated by or did not distinguish in a patentable sense over prior art. In addition to preventing the filing of applications which would be rejected on patent or literature references, good patentability searches are needed by the patent attorney to aid him in judging the proper scope of his claims, so that the result will be a strong patent which cannot be proved invalid later. 

International Phase The PCT filing results in an International Search and the issuance of an International Search Report, a Written Opinion (which comments on the three aspects of patentability (novelty, obviousness and utility) as they apply to the claims, and possibly comments on other matters as well), and an International Preliminary Examination Report (IPER). WIPO will also publish the patent application 18 months after the priority date. The designation WO... in the upper right hand of what many call a patent actually indicates that the document is only a published PCT patent application, not a patent. The PCT patent application is itself never prosecuted to allowance. The filing allows an applicant to defer further action (and... 

According to the EPC, a European patent application is submitted to a single examination system. An applicant files a patent application in one of the official languages of the EPC, namely German, English, and Erench. This application is examined at the EPO for formalities and then for prior art. The invention must not have been disclosed by prior publication or in prior patents. It must not have been in public use or on sale. The patent application and the search report are then published. 

After publication of the application and the search report, the applicant has to request substantive examination for patentability to be performed at the EPO. The examination of the application is performed by the Examining Division of the EPO. On completion of the examination, which includes an examination for inventive step as well as for novelty (novelty and inventive step are basic requirements for patentability see Section IV. A.), either the application is rejected or the European patent is granted. The specification as granted is published and the grant of the European patent leads to national patents being registered in the designated EPC countries. 

After the issue of the search report (and the international preliminary examination, if applicable and requested) the application passes to the national patent office of each of the designated countries, and this is the start of the national phase of the procedure. 

Although the results of the preliminary examination are not binding on individual member states, the results of preliminary examination as well as the international search report can offer significant insight and assistance for an applicant in determining the likelihood of ultimately obtaining patent protection and, thus, whether to proceed with the application in the individual designated states. 

Articles 31 to 42 PCT provide for an international preliminary examination to be performed during the international phase (Chapter II of the Patent Cooperation Treaty). Countries having acceded to the Patent Cooperation Treaty can make a declaration that they will not be bound by Chapter 11 of the Patent Cooperation Treaty. An applicant resident in a country which is bound by Chapter II of the Patent Cooperation Treaty can make a request for an international preliminary examination to be performed for selected patent offices, known as elected offices . After the issue of the search report (and the international preliminary examination, if applicable and requested) the application passes to the national patent office of each of the designated countries and this is the start of the national phase of the procedure. On request of the applicant, a substantive examination takes place in each of the designated countries, (and the EPO, if designated), under the laws of that country. 

The aim of the PCT system is to consolidate and streamline patenting procedures. A PCT application reserves the right to file patent applications in all of the member states at a future date. It gives the applicant more time to submit patent applications to national ofhces than is allotted under national patent systems. This additional period of time (up to 42 months depending on the residence of the applicant and whether a priority hling has been made) gives an applicant more time to decide where to continue with national patent applications. The PCT process also provides the applicant with valuable information about the potential patentability of the invention through an international search report and the optional international preliminary examination report. 

Includes research and investigation, testing of devices, reading depositions, deposition and trial preparation, telephone counseling, oral and written reports, literature searches in extensive personal library, online Hterature searches of all books in all campus libraries, journal literature and patent searches from computer in my office, searches in University of Wisconsin Engineering Library (which contains all patents). 

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