Trilateral Roundtable - Meeting Notes Summary

Patent Information Users Group, Inc. (PIUG)
PIUG 2008 Annual Conference, Arlington, VA

Date/Time/Location:

Thursday, May 22, 2008, 1:00pm - 3:00pm
Hyatt Regency Crystal City, Roosevelt Room
2799 Jefferson Davis Highway, Arlington, VA 22202

Registered Participants:

Carol Bachmann - 3M
Alex Belinskiy - Sanofi-Aventis
Yateen Pargaonkar - Proctor & Gamble
Hieu Phan - Abbott Labs
Heidi Stone - Abbott Labs
Alison Taylor - Threshold Information
Michael White - Queens University - Australia
Cynthia Yang - BMS
Roy Zimmerman - Medtronic
Suzanne G. Robins (PIUG Chair) - Patent Information Services, Inc.
Thomas D. Lehrman (President and Founder of Boliven, LLC.)
Ryan W. Bloom (Vice President and Co-Founder of Boliven, LLC.)
Adrienne Chandler
Stephan Adams - Magister UK Co.
Edlyn Simmons - Proctor and GambleGinger DeMille (USPTO)
Patrick G. Pollard - MERCK
Ken Koubek - Roham and Hass
Jane K. Thompson - Eisai Corporation of North America

Panel:

USPTO (hosts)

Dave Talbott, Director, Search and Information Resources Administration, Patents, USPTO
Lyn Donaldson, Manager, Electronic Information Products Division, Office of Chief Information Officer, USPTO (presenter)

EPO

Curt Edfjäll, Vice President for Administration, EPO
Daniel Shalloe, Deputy Director, Patent Information Promotion & Training, EPO, Vienna (presenter)

JPO

Shigeki Kamiyama, Deputy Director, Patent Information Policy Planning Office, Information Dissemination and Policy Promotion Division JPO, Tokyo (presenter)

Presentations:

Each Office made a short presentation on patent information resources at the respective Offices:

Access to Japanese Patent Information via Industrial Property Digital Library (IPDL)
Patent Information from the EPO
USPTO Data Dissemination

Discussion:

Each attendee was invited to provide feedback on how they use patent information and to ask questions of the Offices. A summary of the discussion topics follows:

D1. Determine what data and products users currently use

Attendees stated that they generally begin searches using commercial products (e.g. STN). Additionally, they use no-charge/free sites (e.g., Google Patents, Free Patents Online, etc.) for details, documents, and legal status; searches on no-charge/free sites are used especially for full text, application, family/classification, and inventor searching. No-charge/free sites also include the Trilateral Office Web sites (EPO, JPO, and USPTO), Canadian Patent Office (CPO), and WIPO, which are used to validate currency of information. Attendees describe searches focused on competitive patent analysis, aimed at not only looking for prior art, but also patent landscape analysis of what is already patented in a specific technological area. Reference was made to the use of QUOSA as an information management tool.

D2. Identify patent information needs and wants

Attendees provided comments to and questions of the Trilateral Offices collectively and individually. Initial feedback from the Trilateral Offices is provided below for some of the issues identified; additional information may have been gathered following the discussion, and is included in these notes where appropriate.

Trilateral Offices (EPO, JPO, and USPTO)

T1. Data dictionary - indicate detailed information about data on the Web site including specifics about content and date coverage.

Response: The Offices will look into providing more detailed content and date coverage information for systems on their respective Web sites.

T2. Basic editorial control of content - It was indicated that there are errors in the information/data in the databases and these need to be corrected.

Response: Each Office has policies and methods covering error handling; see their Web sites for more information on correction procedures under various circumstances. In some cases, Offices may have policies that require that information be presented as submitted.

T3. It was indicated that the trilateral sites need to be updated all at the same time.

Response: Each Office is geographically located in different time zones. Updates to sites/systems occur at different times depending on the needs of internal work procedures/processes. It is unlikely that there would a common standard day/time at which all sites/systems would be updated.

T4. It was indicated that Non Patent Literature (NPL) documents are not cited in a consistent format and this should be standardized.

Response: The offices indicated that NPL citations are usually cited in format received from applicants. The offices will look into tools that can be incorporated into current workflow processes to encourage consistency in this area.

EPO

E1. It was indicated that Non Patent Literature (NPL) should be retrievable in the file wrapper and database.

Response: The Office is limited in what is available due to copyright rules.

E2. It was indicated that there should be immediate notification of an office action.

Response: The Office is currently evaluating how this can be implemented.

E3. It was indicated that INPADOC does not have complete classifications of family.

It was indicated text conversion from various languages causes inconsistency in names and this

should be standardized.

Response: The classification done by the EPO for non-EP patents in the worldwide bibliographic database DOCDB is patent family oriented. The patent family in this case is defined as "simple" family, which brings together only those documents with technically identical contents. This information is stored in a specific table of the database called Master Classification Database (MCD).

The classifications of the complete family are displayed in the online systems of esp@cenet and OPS. For the raw-data exchange in XML format, there is no automatic triggering for the exchange of all documents of a patent family when a new member is added to the family. This might explain why systems using the DOCDB XML exchange without also applying the EPO family concept miss the updated classification information for some of the family members.

Concerning the application names, the EPO has introduced a system of different levels of standardisation;

"original"
"transliterated original"
"fully standardised"

All three levels are produced in parallel. The fully standardised version should be a unique name for each applicant name. This is a highly dynamic system which is under constant development. The EPO welcomes advice from external users on how to improve the system further.

E4. When will the EPO's Register and Online File Inspection (i.e., "file wrapper" service) be available 24/7?

Reponse: EPO is pleased to announce that Register Plus is now available round the clock. The database is updated on a 24-hour cycle. At any one time, the visible content will be as of 19:00 hrs CET the previous evening. Whilst there will be a short break for maintenance between 05:00 and 05:30 hrs CET daily, we will endeavour to keep all other outages to a minimum and to inform you in advance of any planned downtime.

E5. What freedom does the EPO have to correct "obvious errors" in EP applications before publication? Or do we have to publish exactly as filed?

Response: In principle, the application is published as filed, or rather, as available on the date of filing (any late-filed parts could be included in the publication, if relevant provisions have been respected). The decision about the correction of "obvious errors" in application documents (i.e. description, claims, and drawings) falls within the responsibility of the Examining Division. If a request for correction is pending before termination of the technical preparations for publication, a remark is published on the front page of the A-publication. It is only very minor details not touching the substance of the application, e.g. an obvious mistake in the numbering of claims, which could be corrected prior to publication, i.e. allowed by a Formalities Officer. For the general EPO practice with respect to the correction of errors in documents filed with the EPO (Rule 139 EPC), see Guidelines for Examination in the EPO, A-V, 3.

E6. It was indicated that there should be continuity in search/display results.

a. INPADOC family search on a commercial host often yield more results than the same in esp@cenet.

b. The SPC info in the INPADOC legal status doesn't seem to be as complete as in some commercial products.

c. There are differences between the information on INPADOC and that on the local US/JP registers.

Response: All three of these points (E6. a., b., and c.) relate to inconsistencies between the EPO version of available data and the version users can obtain from other sources. We at the EPO are very interested to hear about such problems and would be very eager to investigate them more fully. If PIUG members could kindly send us examples, we will be happy to try to track down the source of the problems.

E7. Users would like to be able to export data from the European Patent Register.

Response: It is already possible to export the bibliographic of a single record. It is not currently possible to export result lists or the bibliographic data of multiple records in one action. This is a clear request, and the EPO is working on a feasible solution. It is not possible today to say when it will be available as it requires some major development work, but we understand the request and are working on it.

JPO

J1. It was indicated that there is a need for the information from JPO patents to be translated, in particular the main claims.

Response: JPO currently provides a free machine translation tool via the internet on their site - IPDL PAJ search http://www.ipdl.inpit.go.jp/homepg_e.ipdl. The PAJ search also enables searching JPO patents by text such as applicant, title of invention and abstract.

J2. It was indicated that there is a concern about the timeliness of information updates for PAJ.

Response: Legal status information of PAJ is updated every two weeks. For further information about PAJ data go to http://www19.ipdl.inpit.go.jp/PA1/html/help/paj_main_database.html.

J3. Attendees learned that JPO had legal status information on their Web site.

USPTO

U1. It was indicated PAIR should have:

24/7 access
a direct link to include in search report
enable a user to look at more than one application at a time
enable searching by other options besides document number
include the ability to search independent of series
PAIR is hard to navigate, can't use the back button if using parent and child
current required use of "reCAPTCHA" impedes workflow
an e-mail alert system when new/changed content takes place with applications under an appropriate login, such as the service EPO currently offers.
Public PAIR should have a viewer similar to the Minesoft patent viewer

Response: The majority of USPTO systems provide 24/7 access with the exception of regularly scheduled backups and scheduled maintenance outages. The Office does provide "System Alerts" on the Web site to inform users of planned and unplanned outages that impact system availability or performance. Regarding the implementation of reCAPTCHA, it was necessary to curtail the huge volume of automated scripts that were being used to mine Public PAIR, which in turn created outages. On April 30, the USPTO held a public webcast and asked for public comments regarding PAIR. The Office is evaluating the resources required to make associated changes to Public/Private PAIR and will identify possible ways to include them as part of planned future improvements to the system; all changes are dependent on available funding and resources.

U2. It was indicated that IFW should:

permit 24/7 access
provide title updated in real time
be browser-neutral
make images available in other formats besides TIFF (discussions at the table indicated that various users have different preferences on a preferred format with no common agreement on the best one)

Response: The majority of USPTO systems provide 24/7 access with the exception of regularly scheduled backups and scheduled maintenance outages. The Office will evaluate the feasibility of making these changes as part of planned future improvements to the system, as resources permit. The Office has been looking at PDF as a possible future format.

U3. It was indicated there needs to be a visual organization of classifications to better show the relationship between classes. Additional features needed to improve display include a drop down menu, key word search and synonyms.

Response: The Office will evaluate the feasibility of making these changes to classifications as part of planned future improvements to the system, as resources permit.

U4. Desired changes to public search tools:

It was indicated that searching applications and grants at the same time is preferable.
It was also indicated that results from all databases (Public West and Patents on the Web) need to be displayed in the same manner.
Word based searching is preferable over subject based searching
Browse by inventor name and assignee

Response: The USPTO will evaluate the feasibility of making these changes to Public West and Patents on the Web (PatFT, AppFT, AIW, and PIW) as part of planned future improvements to these systems, as resources permit.

U5. Enhancements are needed to make it easy to export data and not have to copy and paste information. Users would like to be able to download the PDF and print the entire document.

Response: The USPTO has been examining the feasibility of providing information from the interactive "Patents on the Web" systems (PatFT, AppFT, AIW, and PIW) in PDF format. Current formats are XML and single page TIFF in those systems. The USPTO does currently offer an online document ordering system, which permits customers to purchase PDF documents that are then delivered electronically for a small cost. Future enhancements for PDF delivery are dependent on available resources.

U6. Provide metadata.

Response: The USPTO does offer descriptive information about database contents and coverage, but will evaluate ways to provide more expansive, more detailed, or more current descriptions regarding systems on its Web site.

U7. It was indicated that it would be beneficial to users to merge EPO and USPTO classifications systems.

Response: Collectively, the Trilateral Offices are working towards a single, unified classification system that would include the advantages currently inherent in the individual classification systems of the individual Offices and WIPO.

U8. It was indicated that online tutorials on how to use databases be developed and made available to the public, especially for Business Center (EBC) Automation Information Systems.

Response: Currently, the USPTO offers on-site training for searching its databases at the main headquarters in Alexandria as well as various locations throughout the country via the Patent and Trademark Depository Libraries (PTDLs). Some computer-based-training (CBT) tutorials are also available online, and additional training on how to conduct a preliminary U.S. patent search was added to the Web site over the summer. The USPTO will examine ways of offering additional CBT options in the future.

U9. It was indicated that there are problems printing older patents and working with TIFF files.

Response: The USPTO is unaware of any system problems that would interfere with printing older patents, provided the user follows the recommended procedures posted at http://patft.uspto.gov/help/images.htm. Following the roundtable discussion, USPTO staff tested and successfully printed two older patents (10,123, dated 10/11/1853 and 11,123, dated 06/20/1854) from the PatFT/PIW systems using Internet Explorer v6.0 and the Web-based TIFF viewer interneTIFF. This problem may be specific to the user's browser and TIFF viewer. The USPTO would be glad to help the user that reported this. Please contact Ed Johnson, ed.johnson@uspto.gov.

U10. Web site blocks based on number of views of Web sites impedes work by large organizations. The academic sector has an increased need for access to data for industry analyses.

Response: The USPTO is committed to ensuring availability of access for all users, and recognizes the inconvenience of restrictions on "volume" data requests, which have recently affected Public PAIR users, in particular. The Office is currently evaluating ways it might offer additional bulk data options; any future improvements to the USPTO systems are dependent on available resources.

U11. It was indicated some database providers are late in providing US patent data.

Response:

The USPTO's Electronic Information Products Division disseminates all patent data files on the date of issue or publication.
There can be shipping delays or delays in processing and loading the databases.
The "Text Only" files are available through the USPTO FTP environment and available on the date of issue or publication at 02:00 AM EST.
The complete full-text (that includes drawing page images, etc.) and the single page TIFF images are disseminated on Digital Linear Tape (DLT III XT) cartridges and available on the date of issue or publication at 09:00 AM EST.
The subscribing vendor has no restriction on the use of patent data files and may, in some cases, sell to a third party provider. These third party providers could actually be receiving the patent data files days after the issue or publication date and then must update their own respective databases.

U12. It was suggested that options be made available for the export format of data.

Response: Providing multiple export options is being considered but would be dependent on the availability of funding and resources and agreement among users on what would be the greatest common factor formats.

U13.It was suggested to provide a message on the PIUG Web site when something of importance or change takes place at the USPTO.

Response: Each Office provides a mechanism for information updates; the USPTO Web site offers updated information through the following topical areas: News, More news and notices, Official Gazette Notices, System Alerts, etc. Given the dynamic nature of the IP field and the varied interests of stakeholders at PIUG and other user groups, it would be difficult to determine/identify what would be important and/or appropriate to post to the Trilateral or PIUG Web sites. Perhaps PIUG members could help identify topics they would like to see highlighted.

U14. Micropatent Web site references USPTO for litigation information, but does not offer other information on its source.

Response: Both the Board of Patent Appeals and Interferences (BPAI) and the Trademark Trials and Appeal Board (TTAB) offer public users access to all the decisions in their respective databases via the USPTO Web Site:

BPAI decisions from 07/02/1997 onwards, available in PDF
TTAB decisions from 03/30/1969 onwards, available in PDF

Other information on legal status, such as maintenance fees and expired patents is available through Public PAIR.

In addition, courts are required under 35 USC 290 to give notice of the filing of an action to the Office of the Solicitor. Received notices are electronically posted to the Freedom of Information Act (FOIA) Reading Room on the USPTO Web site.

The Public Search Facility (PSF) in Alexandria, Virginia, has additional paper resources.

U15. It was indicated that adding value to the database hurts commercial/business concerns.

Response: The USPTO is aware of this concern and it is taken into consideration whenever there are changes/enhancements made to information products and services.