901 Prior Art [R-08.2012]
901.01 Canceled Matter in U.S. Patent Files [R-07.2015]
Canceled matter in the application file of a U.S. patent or U.S. application publication is not a proper reference as of the filing date under pre-AIA 35 U.S.C. 102(e). See Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966). However, matter canceled from the application file wrapper of a U.S. patent or U.S. application publication may be used as prior art as of the patent or publication date, respectively, in that it then constitutes prior public knowledge or prior public availability under pre-AIA 35 U.S.C. 102(a) or 35 U.S.C. 102(a)(1). See, e.g., In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967). See also MPEP § 2127 and § 2136.02.
901.01(a) Ordering of Patented and Abandoned Provisional and Nonprovisional Application Files [R-07.2015]
In the examination of an application, it is sometimes necessary to inspect the application papers of some previously abandoned application (provisional or nonprovisional) or granted patent. This is always true in the case of a reissue application and reexamination proceeding.
If the patented or abandoned file is an Image File Wrapper (IFW) file, examiners can view the application papers from their desktop via the Patent Examiner’s Toolkit. Patented and abandoned files that are not available in IFW are stored at the Files Repository. Older files are housed in remote warehouses located in Maryland and Virginia.
Patented and abandoned files that are stored in paper are ordered by means of a PALM video display or PALM intranet site transaction. To place such an order, the examiner is required to input his/her PALM location code, employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the request transaction by the examiner, a “response” screen appears which informs the examiner of the status of the request for each file. The examiner is informed that the request:
- (A) is accepted;
- (B) is accepted, but the file is located at a remote warehouse (in which case delivery time is increased);
- (C) is not accepted because the file is not located at the repository or warehouse;
- (D) is not accepted because a previous request for the file has not yet been filled; or
- (E) is not accepted because the patent or application number inputted is not valid.
Personnel at the Files Repository periodically retrieve the requested files and deliveries of files are made to the requesters’ interoffice mailing address. Upon delivery of files at the various locations, Files Repository personnel also retrieve files that are ready to be returned to the repository.
901.02 Abandoned Applications [R-07.2015]
If an abandoned application was previously published under 35 U.S.C. 122(b), that patent application publication is available as prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of its patent application publication date because the patent application publication is considered to be a “printed” publication within the meaning of pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1), even though the patent application publication is disseminated by the U.S. Patent and Trademark Office (Office) using only electronic media. See MPEP § 2128. Additionally, as described in MPEP § 901.03, a patent application publication published under 35 U.S.C. 122(b) of an application that has become abandoned may be available as prior art under pre-AIA 35 U.S.C. 102(e) as of the earliest effective U.S. filing date of the published application and may be available under 35 U.S.C. 102(a)(2) as of the date it was effectively filed. As provided in 37 CFR 1.11(a), unless a redacted copy of the application was used for the patent application publication, the specification, drawings, and all papers relating to the file of an abandoned published application are open to inspection by the public, and copies may be obtained from the Office. The information that is available to the public under 37 CFR 1.11(a) may be used as prior art under pre-AIA 35 U.S.C. 102(a) or 102(b) or 35 U.S.C. 102(a)(1) as of the date the information became publicly available.
Where an unpublished abandoned application is identified or whose benefit is claimed in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2), the file contents of the unpublished abandoned application may be made available to the public. See 37 CFR 1.14(a)(1)(iv). Subject matter from abandoned applications which is available to the public under 37 CFR 1.14 may be used as prior art against a pending U.S. application under pre-AIA 35 U.S.C. 102(a) or 102(b) or 35 U.S.C. 102(a)(1) as of the date the subject matter became publicly available.
In re Heritage,182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and relies on the disclosure of a previously copending but subsequently abandoned application, such disclosure is available as a reference. See also In re Lund,376 F.2d 982, 153 USPQ 625 (CCPA 1967).
It has also been held that where the reference patent refers to a previously copending but subsequently abandoned application which discloses subject matter in common with the patent, the effective date of the reference as to the common subject matter is the filing date of the abandoned application. See In re Switzer, 166 F.2d 827, 77 USPQ 156 (CCPA 1948); Ex parte Peterson, 63 USPQ 99 (Bd. App. 1944); and Ex parte Clifford, 49 USPQ 152 (Bd. App. 1940). See MPEP § 2127, subsection I.
901.03 Pending Applications [R-07.2015]
Except as provided in 37 CFR 1.11(b), 37 CFR 1.14(a)(1)(v) and 37 CFR 1.14(a)(1)(vi), pending U.S. applications which have not been published are generally preserved in confidence (37 CFR 1.14(a)) and are not available as references. However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity. See MPEP § 804. For applications having a common assignee or applicant and different inventive entities claiming a single inventive concept, see MPEP § 804.03. See also MPEP § 2127, subsection IV.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request for voluntary publication shall be published except for the following enumerated exceptions.
First, an application shall not be published if it is:
- (A) no longer pending;
- (B) subject to a secrecy order under 35 U.S.C. 181, that is, publication or disclosure of the application would be detrimental to national security;
- (C) a provisional application filed under 35 U.S.C. 111(b);
- (D) an application for a design patent filed under 35 U.S.C. 171;
- (E) an application for an International design application filed under 35 U.S.C. 382; or
- (F) a reissue application filed under 35 U.S.C. 251.
Second, an application shall not be published if an applicant submits at the time of filing of the application a request for nonpublication. See MPEP § 1122.
U.S. patent application publications are prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of the publication date. Under pre-AIA 35 U.S.C. 102(e)(1) and 35 U.S.C. 102(a)(2), a U.S. patent application publication under 35 U.S.C. 122(b) is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under pre-AIA 35 U.S.C. 102(e) as of the international filing date, or an earlier effective U.S. filing date, only if the international application was filed on or after November 29, 2000, designated the United States, and was published under PCT Article 21(2) in English. Similarly, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under 35 U.S.C. 102(a)(2) as of the international filing date, or an earlier effective U.S. filing date.
901.04 U.S. Patents [R-07.2015]
The following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 706.02(f)(1), 2127, subsection II, and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. For example, the pre-AIA 35 U.S.C. 102(e) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior provisional application (35 U.S.C. 111(b)) is the filing date of the provisional application for subject matter that is disclosed in the provisional application.
X-Series. These are the approximately 10,000 patents issued between 1790 and July 4, 1836. They were not originally numbered, but have since been assigned numbers in the sequence in which they were issued. The number should not be cited. When copies are ordered, the patentee’s name and date of issue suffice for identification.
1836 Series. The mechanical, electrical, and chemical patents issued since 1836 and frequently designated as “utility” patents are included in this series. A citation by number only is understood to refer to this series. This series comprises the bulk of all U.S. patents issued. Some U.S. patents issued in 1861 bear two numbers but only the larger number should be cited.
Reissue Series. Reissue patents (see MPEP § 1401) have been given a separate series of numbers preceded by “Re.” In citing, the letters and the number must be given, e.g., Re. 1776. The date that it is effective as a reference is the effective date of the original patent application, not the filing date of the reissue application.
Design reissue patents are numbered with the same number series as “utility” reissue patents. The letter prefix does, however, indicate them to be design reissues.
A.I. Series. From 1838 to 1861, patents covering an inventor’s improvement on his or her own patented device were given a separate series of numbers preceded by “A.I.” to indicate Additional Improvement. In citing, the letters and the number must be given, e.g., A.I. 113. About 300 such patents were issued.
Plant Patent Series. When the statutes were amended to provide for patenting certain types of plants (see MPEP Chapter 1600) these patents were given a separate series of numbers. In citing, the letters “P.P.” and the number must be given, e.g., P.P. 13.
Design Patents. Patents for designs (see MPEP Chapter 1500) are issued under a separate series of numbers preceded by “D.” In citing, the letter “D” and the number must be given, e.g., D. 140,000.NUMBERS FOR IDENTIFICATION OF BIBLIOGRAPHIC DATA ON THE FIRST PAGE OF PATENT AND LIKE DOCUMENTS (INID NUMBERS)
The purpose of INID Codes (“INID” is an acronym for “Internationally agreed Numbers for the Identification of (bibliographic) Data”) is to provide a means whereby the various data appearing on the first page of patent and like documents can be identified without knowledge of the language used and the laws applied. They are now used by most patent offices and have been applied to U.S. patents since August 4, 1970. Some of the codes are not pertinent to the documents of a particular country and some which are may, in fact, not be used. For a list of INID Codes, see MPEP § 901.05(b).
901.04(a) Kind Codes [R-08.2012]
On January 2, 2001, the United States Patent and Trademark Office (USPTO) began printing the World Intellectual Property Organization (WIPO) Standard ST.16 code on each of its published patent documents. WIPO Standard ST.16 codes (kind codes) include a letter, and in many cases a number, used to distinguish the kind of patent document (e.g., publication of an application for a utility patent (patent application publication), utility patent, plant patent application publication, plant patent, or design patent) and the level of publication (e.g., first publication, second publication, or corrected publication). Detailed information on Standard ST.16 and the use of kind codes by patent offices throughout the world is available on the WIPO website at www.wipo.int/scit/en under the links for WIPO standards and other documentation.
In addition, some kind codes assigned to existing USPTO patent documents were changed because, beginning on March 15, 2001, patent application publications began to be published weekly on Thursdays.
The tables below give a summary of the kind codes which are no longer being used on certain published patent documents as well as a summary of the kind codes which will be used on published patent documents after January 2, 2001. It is recommended that USPTO documents be identified by the following three elements: (A) the two-character country code (US for United States of America); (B) the patent or publication number; and (C) the WIPO ST.16 kind code. For example, “US 7,654,321 B1” for U.S. Patent No. 7,654,321 where there was no previously published patent application publication, and “US 2003/1234567 A1” for U.S. Patent Application Publication No. 2003/1234567, in 2003. Each year the numbering of published patent applications will begin again with the new four-digit year and the number 0000001, so the number of a patent application publication must include an associated year.
|Summary of USPTO Kind Codes No Longer Used as of January 2, 2001*|
|WIPO ST.16 Kind Codes||Kind of document||Comments|
|A||Patent||Kind code replaced by B1 or B2|
|P||Plant Patent||Kind code replaced by P2 or P3|
|B1, B2, B3...||Reexamination Certificate||Kind code replaced by C1, C2, C3...|
*See the table below for the new uses for codes B1 and B2 beginning January 2, 2001.
|Summary of USPTO Kind Codes Used on Documents Published Beginning January 2, 2001|
|WIPO ST.16 Kind Codes||Kind of document||Comments|
|A1||Patent Application Publication||Pre-grant publication available March 2001|
|A2||Patent Application Publication (Republication)||Pre-grant publication available March 2001|
|A9||Patent Application Publication (Corrected Publication)||Pre-grant publication available March 2001|
|B1||Patent||No previously published pre-grant publication|
|B2||Patent||Having a previously published pre-grant publication and available March 2001|
|C1, C2, C3, ...||Reexamination Certificate||Previously used codes B1 and B2 are now used for granted Patents|
|E||Reissue Patent||No change|
|H||Statutory Invention Registration (SIR)||No change|
|P1||Plant Patent Publication Application||Pre-grant publication available March 2001|
|P2||Plant Patent||No previously published pre-grant publication|
|P3||Plant Patent||Having a previously published pre-grant publication and available March 2001|
|P4||Plant Patent Application Publication (Republication)||Pre-grant publication available after March 2001|
|P9||Plant Patent Application Publication (Corrected Publication)||Pre-grant publication available March 2001|
|S||Design Patent||No change|
901.05 Foreign Patent Documents [R-07.2015]
All foreign patents, published applications, and any other published derivative material containing portions or summaries of the contents of published or unpublished patents (e.g., abstracts) which have been disseminated to the public are available to U.S. examiners. See MPEP § 901.06(a), paragraphs I.C. and IV.C. In general, a foreign patent, the contents of its application, or segments of its content should not be cited as a reference until its date of patenting or its public availability date (e.g., publication date) can be confirmed by an examiner’s review of a copy of the document. Examiners should remember that in some countries, there is a delay between the date of the patent grant and the date of publication.
Information pertaining to those countries from which the most patent publications are received is given in the following sections and in MPEP § 901.05(a). Additional information can be obtained from the Scientific and Technical Information Center (STIC).
See MPEP § 707.05(e) for data used in citing foreign references.I.OVERVIEW OF FOREIGN PATENT LAWS
This section includes some general information on foreign patent laws and summarizes particular features and their terminology. Some additional details on the most commonly cited foreign patent publications may be found under the individual country in paragraph V., below. Examiners should recall that, in contrast to the practice in many other countries, under U.S. patent law a number of different events all occur on the issue date of a U.S. patent. These events include the following:
- (A) a patent document, the “letters patent'' which grants and thereby creates the legal rights conferred by a patent, is executed and sent to the applicant;
- (B) the patent rights come into existence;
- (C) the patent rights can be exercised;
- (D) the specification of the patent becomes available to the public;
- (E) the patented file becomes available to the public;
- (F) the specification is published in printed form; and
- (G) an issue of an official journal, the Official Gazette, containing an announcement of the patent and a claim, is published.
In most foreign countries, various ones of these events occur on different days and some of them may never occur at all.
The following list catalogs some of the most significant foreign variations from U.S. practices:A.Applicant
In most countries, the owner of the prospective rights, derived from the inventor, may also apply for a patent in the owner’s name as applicant; in a few, other persons may apply as well or be joined as coapplicants. Hence, applicant is not synonymous with inventor, and the applicant may be a company. Some countries require the inventors’ names to be given and regularly print them on the published copies. Other countries may sometimes print the inventors’ names only when available or when requested to do so.B.Application
The word “application” is commonly used in the U.S. to refer to the entire set of papers filed when seeking a patent. However, in many countries and in PCT cases, the word application refers only to the paper, usually a printed form, which is to be “accompanied by” or have “attached” to it certain other papers, namely a specification, drawings when necessary, claims, and perhaps other papers. Unless it is otherwise noted in the following portions of this section, the term “application” refers to the entire set of papers filed.C.Publication of Contents of Pending Applications
In general, pending applications are confidential until a certain stage in the proceedings (e.g., upon patent grant), or until a certain date (e.g., 18 months after filing), as may be specified in a particular law.
Many countries have adopted the practice of publishing the specification, drawing, or claims of pending applications. In these countries, the publication of the contents of the application occurs at a certain time, usually 18 months after filing. The applicant is given certain provisional rights upon publication even though examination has not been completed or in some cases has not even begun at the time of publication.
This publication may take either of two forms. In the first form, some countries publish a notice giving certain particulars in their official journal, and thereafter, any one may see the papers at the patent office or order copies. This procedure is referred to as “laying open for public inspection.” There is no printed publication of the specification, although an abstract may be published in printed form. If anyone can inspect or obtain copies of the laid open application, then it is sufficiently accessible to the public to constitute a “publication” within the meaning of pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1). The full application is thus available as prior art as of either the date of publication of its notice or its laying open to public inspection if this is a later date. See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981). See MPEP § 2127, paragraph III.
In the second form, several other countries publish the specifications of pending applications in printed form at a specified time, usually 18 months after filing. These documents, of course, constitute references as printed publications.D.Administrative Systems
Patent law administration varies from country to country. In some countries, all that is undertaken is an inspection of the papers to determine if they are in proper form. Other countries perform an examination of the merits on the basis of an extensive search of the prior art, as is done in the U.S. The former are referred to as nonexamining or registration countries, although some systems allow for a rejection on matters apparent on the face of the papers, such as matters of form or statutory subject matter.
Of the examining countries, the extent of the material searched prior to issue varies greatly. Only a few countries include both their own patents and a substantial amount of foreign patent material and nonpatent publications in their search files. Some countries specifically limit the search by rule, or lack of facilities, to their own patents with very little or no additional material. An increasing number of countries are requiring applicants to give information concerning references cited in corresponding applications filed in other countries.E.Opposition
Some examining countries consider participation by the public an inherent feature of their examining system. When an application is found to be allowable by the examiner, it is “published” for opposition. Then there is a period, usually 3 or 4 months, within which members of the public can oppose the grant of the patent. In some countries, the opposing party can be any person or company. In other countries, only those parties who are affected by the outcome can participate in the opposition. The opposition is an inter partes proceeding and the opposing party can ordinarily raise any ground on the basis of which a patent would be refused or held invalid, including any applicable references.
The publication for opposition may take the form of a laying open of the application by the publication of a notice in the official journal with the application being then open to public inspection and the obtaining of copies. Otherwise, publication occurs by the issue of the applications in printed form. Either way, these published documents constitute printed publications which are available as references under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1).F.The Patent
Practices and terminology vary worldwide regarding patents. In some countries, there is no “letters patent” document which creates and grants the rights. In other countries, the examiner grants the patent by signing the required paper. In a few countries, the patent is granted by operation of law after certain events have occurred. The term “granting the patent” is used here for convenience, but it should be noted that 35 U.S.C. 102(a) and 102(b) or 35 U.S.C. 102(a)(1) do not use this terminology.
A list of granted patents is ordinarily published in each country’s official journal and some of these countries also print an abstract or claims at or after the granting date. Not all countries publish the granted patent. Where the specifications of granted patents are issued in printed form, publication seldom occurs simultaneously with the day of grant; instead, publication occurs a short time thereafter. There also are a few countries in which publication does not take place until several years after the grant.
The length of time for which the patent is enforceable (the patent term) varies from country to country. The term of the patent may start as of the grant of the patent, or as of the filing date of the application.
Most countries require the payment of periodic fees to maintain a patent in force. These fees often start a few years after filing and increase progressively during the term of the patent. If these fees are not paid within the time allowed, the patent lapses and is no longer in force. This lapsing does not affect the use of the patent as a reference.G.Patents of Addition
Some countries issue patents of addition, which should be identified as such, and when separately numbered as in France, the number of the addition patent should be cited. “Patents of addition” generally cover improvements of a patented parent invention and can be obtained by the owner of the parent invention. Inventiveness in relation to the parent invention need not be demonstrated and the term is governed by the term of the parent patent.II.CORRESPONDING SPECIFICATIONS IN A FAMILY OF PATENTS
Since a separate patent must be obtained in each country in which patent rights are desired (except for EP, the European Patent Convention, AP, the African Regional Industrial Property Organization, OA, African Intellectual Property Organization, GC, Patent Office of the Cooperation Council for the Arab States of the Gulf, and EA, Eurasian Patent Office, whose members issue a common patent), there may be a large number of patents issued in different countries for the same invention. This group of patents is referred to as a family of patents.
All of the countries listed in paragraph V. below are parties to the Paris Convention for the Protection of Industrial Property and provide for the right of priority. If an application is filed in one of these countries, an application for the same invention thereafter filed in another country, within 1 year of the filing of the first application, will be entitled to the benefit of the filing date of the first application on fulfilling various conditions. See MPEP § 213. The patents or published specifications of the countries of later filing are required to specify that priority has been claimed and to give the country, date, and number of the priority application. This data serves the purpose, among others, of enabling any patent based on the priority application to be easily located.
In general, the specification of the second application is identical in substance to the specification of the first. In many instances, the second, if in another language, is simply a translation of the first with perhaps some variation in purely formal parts. But in a minority of cases, the two may not be identical. For instance, sometimes two applications filed in one country are combined into one second application which is filed in another country. Alternatively, a second application could be filed for only part of the disclosure of the priority application. The second application may have the relationship to the first which we refer to as a continuation-in-part (e.g., the second application includes additional subject matter discovered after the first was filed). In some instances, the second application could have its disclosure diminished or increased, to meet the requirements or practices of the second country.
Duplicate or substantially duplicate versions of a foreign language specification, in English or some other language known to the examiner, can sometimes be found. It is possible to cite a foreign language specification as a reference, while at the same time citing an English language version of the specification with a later date as a convenient translation if the latter is in fact a translation. Questions as to content in such cases must be settled based on the specification which was used as the reference.
If a U.S. patent being considered as a reference claims the priority of a previously filed foreign application, it may be desirable to determine if the foreign application has issued or has been published, to see if there is an earlier date. For example, it has occurred that an examiner rejected claims on the basis of a U.S. patent and the applicant filed affidavits to overcome the filing date of the reference; the affidavits were controversial and the case went to appeal, with an extensive brief and an examiner’s answer having been filed. After all this work, somebody noticed that the U.S. patent reference claimed the priority of a foreign application filed in a country in which patents were issued fairly soon, checked the foreign application, and discovered that the foreign patent had not only been issued, but also published in printed form, more than 1 year prior to the filing date of the application on appeal.
If a foreign patent or specification claims the priority of a U.S. application, it can be determined whether the latter is abandoned, still pending, or patented. Even if the U.S. case is or becomes patented, however, the foreign documents may still be useful as supplying an earlier printed publication date.
If a foreign patent or specification claims the priority of an application in another foreign country, it may sometimes be desirable to check the latter to determine if the subject matter was patented or published at an earlier date. As an example, if a British specification being considered as a reference claims the priority of an application filed in Belgium, it is known at once that a considerably earlier effective date can be established, if needed, because Belgian patents issue soon after filing. In addition, if the application referred to was filed in one of the countries which publish applications in printed form 18 months after filing, the subject matter of the application will be available as a printed publication as of the 18 month publishing date. These remarks obviously also apply to a U.S. patent claiming a foreign priority.
The determination of whether a foreign patent has been issued or the application published is a comparatively simple matter for some countries, but for some it is quite laborious and time-consuming . Sources for this data which are not maintained by the Office do exist and can be utilized for locating corresponding patents. Two possible sources are the Derwent World Patents Index (DWPI) produced by Thomson Reuters, and the International Patent Documentation Center (INPADOC), which is produced by the European Patent Office. Additionally, Chemical Abstracts Service (CAS) publishes abstracts of patents in the chemical arts from a large number of countries. Only one patent or published specification from a family is abstracted in full and any related family members issued or published are cross-referenced. Chemical Abstracts are available online via commercial databases or via Microfilm/CD-ROM in the Main Scientific and Technical Information Center (STIC). To get access to Chemical Abstracts online, examiners should contact their SPE for approval and email the STIC-ERC mailbox. The microfilm collection is available from 1907-1987; and the CD-ROM collection is available from 1987-2011. The coverage is for approximately 83 journals, with the oldest content dating from 1859.
When an application is filed outside the Paris Convention year from an earlier application, the later application may not refer to the first application. It is hence possible that there will be duplicate specifications published without any indication revealing the fact. These may be detected when the two copies come together in the same subclass. Because the later application is filed outside the convention year, the earlier application may be prior art to the latter if it has been published or issued.III.VALIDITY OF DATES DISPLAYED ON FACE OF FOREIGN PATENT DOCUMENTS
The examiner is not required to prove either the date or the occurrence of events specified on specifications of patents or applications, or in official journals, of foreign patent offices which the Office has in its possession. In a court action, certified copies of the Office copies of these documents constitute prima facie evidence in view of 28 U.S.C. 1745. An applicant is entitled to show the contrary by competent evidence, but this question seldom arises.
The date of receipt of copies by the Office, as shown by Office records or stamped on the copies, need only to be stated by the examiner, when necessary.IV.NOTES ON INDIVIDUAL COUNTRIES
The following table gives some data concerning the published patent material of a number of countries to assist in their use and citation as references. This table reflects only the most current patent office practice for each foreign country specified and is not applicable for many older foreign patent documents. The STIC staff can help examiners obtain data related to any documents not covered by this table. The citation dates listed in the following table are not necessarily the oldest possible dates. Sometimes an earlier effective date, which is not readily apparent from the face of the document, is available. If an earlier date is important to a rejection, the examiner should consult STIC staff, who will attempt to obtain further information regarding the earliest possible effective date.How To Use Table
Each horizontal row of boxes contains information on one or more distinct patent documents from a specified country available as a reference under pre-AIA 35 U.S.C. 102(a) and 102(b) or 35 U.S.C. 102(a)(1). If several distinct patent documents are included within a common box of a row, these documents are related to each other and are merely separate documents published at different stages of the same invention’s patenting process. Usually, this related group of documents includes a published application which ripens into an issued patent. Within each box of the second column of each row, the top listed document of a related group is the one that is “published” first (e.g., made available for public inspection by laying open application, or application printed and disseminated to the public). Once an examiner determines the country or organization publishing the documents, the name of the document can be located in the second column of the table and the examiner can determine if a document from the related group containing the same or similar disclosure having an earlier date is available as a reference. Usually, the documents within a related group have identical disclosures; sometimes, however, there are differences in the claims or minor differences in the specification. Therefore, examiners should always verify that the earlier related document also includes the subject matter necessary for the rejection. Some countries issue more than one type of patent and for clarity, in these situations, separate rows are provided for each type.
|ISSUING/ PUBLISHING COUNTRY OR ORGANIZATION||DOCUMENT NAME IN LANGUAGE OF ISSUING COUNTRY (TYPE OF DOCUMENT)||FOREIGN LANGUAGE NAME DESIGNATING THE DATE USED FOR CITATION PURPOSES (TYPE OF DATE)||GENERAL COMMENTS|
|European Patent Office||European patent application||Date application made available to public||Printing of application occurs 18 months after priority date.|
|European patent specification||Date published||EP dates are in day/month/year order.|
|New European patent specification (above specification amended)||Date published|
|France||Demande de brevet d’invention (patent application)||Disposition du public de la demande (date of laying open application)/date published||Date of laying open the application is the earliest possible date. This usually occurs 18 months after the filing or priority date but can occur earlier at applicant’s request. The application is printed a short time after being laid open.|
|Brevet d’invention (patent)||Disposition du public du brevet d’invention (date of publication of the notice of patent grant)|
|FR dates are in day/month/year order|
|France||Demande de certificat d’utilite (utility certificate application 1st level publication)||Disposition du public de la demande (date published)|
|Certificat d’utilite (utility certificate, 2nd publication)||Disposition du public du certificat d’utilite (date published)|
|DE Germany||Offenlegungschrift (unexamined patent application)||Offenlegungstag (date application printed)||Patentschrift are printed (up to four different times) after examination and at various stages of opposition.|
|Patentschrift (examined patent)||Veræfentlichungstag der patenterteilung (date printed)||DE dates are in day/month/year order|
|Germany||Patentschrift (Ausschließungspatent) (exclusive type patent based on former East German application and published in accordance with E. German laws)||First printing coded “DD” (date of first publication before examination as to novelty)||Several more printings (up to four) occur as examination proceeds and patent is granted. Separate DD numbering series is used.|
|Germany||Patentschrift (Wirtschaft-patent) (economic type patent published in accordance with East German laws)||First printing coded “DD” (date of first printing before examination as to novelty)||Another printing occurs after examination. Separate DD numbering series is used.|
|Germany||Gebrauchsmuster (utility model or petty patent)||Eintragungstag (date laid open after registration as a patent)||Copy is supplied only on request.|
|Bekanntmachung im patentblatt (date published for public)||Published from No. DE-GM 1 186 500J.|
|JP Japan||Kôkai Tokkyo kôhô (unexamined patent application) Kôhyo Tokkyo kôhô (unexamined patent application based on international application)||Upper right corner beneath number (date laid open and printed)||INID codes (41)-(47) include first date listed in terms of the year of the Emperor. To convert yrs. prior 1989, add 1925. To convert yrs. after 1988, add 1988.|
|Tokkyo kôhô (examined patent application)||Upper right corner beneath number (date laid open and printed; 1st publication when Kôkai Tokkyo kôhô or Kôhyo Tokkyo kôhô not published)||Newer documents also include second date following the first given in OUR Gregorian Calendar in year/month/day sequence in Arabic numerals intermixed with their equivalent JP characters.|
|JP Japan||Tokkyo shinpan seikyû kôkoku (corrected patent specification)||Upper right corner beneath number (date laid open and printed)|
|JP Japan||Kôkai jitsuyô shin-an kôhô (unexamined utility model application) or Kôhyo jitsuyô shin-an kôhô (unexamined utility model application based on international)||Upper right corner beneath number (date laid open and printed)|
|Jitsuyô shin-an kôhô (examined utility model application)||Upper right corner beneath number (date laid open and printed; 1st publication when Kôkai or Kôhyo not published)|
|JP Japan||Tôroku jitsuyô shin-an shinpan seikyû kôkoku (corrected registered utility model)|
|JP Japan||Isyô kôhô (registered design application)|
|RU Russian Federation||Zayavka Na Izobretenie (unexamined application for invention) Patent Na Izobreteniye (Patent)||Date application printed (1st publication) Date printed (normally 2nd publication, but 1st publication when application not published)|
|RU Russian Federation||Svidetelstvo Na Poleznuyu Model (utility model)||Supplied upon request only|
|RU Russian Federation||Patent Na Promishlenniy Obrazec (design patent)||Supplied upon request only|
|GB United Kingdom||Published patent application (searched, but unexamined) Patent Specification (granted examined patent)||(date of printing the application) (date of printing)|
|United Kingdom||Amended or Corrected Patent Specification (amended granted patent)||(date of printing)|
|World Intellectual Property Organization||International application (PCT patent application)||(date of printing the application)|
901.05(a) Citation Data [R-07.2015]
Foreign patent publications that use Arabic and Roman numerals in lieu of names to indicate the date show in order the day, month, and year, or alternatively, the year, month, and day. Roman numerals always refer to the month.
Japanese patent application publications show the date in Arabic numerals by indicating in order the year of the reign of the Emperor, the month, and the day. To convert the Japanese year of the Emperor to the Western calendar year, for years prior to 1989, add 1925 to the JAPANESE YEAR. For example: 40.3.6 = March 6, 1965. For years after 1988, add 1988 to the JAPANESE YEAR.
901.05(b) Other Significant Data [R-08.2012]I.NUMBERS FOR IDENTIFICATION OF BIBLIOGRAPHIC DATA ON THE FIRST PAGE OF PATENT AND LIKE DOCUMENTS INCLUDING INDUSTRIAL DESIGNS (INID NUMBERS)
The purpose of INID Codes (“INID” is an acronym for “Internationally agreed Numbers for the Identification of (bibliographic) Data”) is to provide a means whereby the various data appearing on the first page of patent and like documents or in patent gazettes can be identified without knowledge of the language used and the laws applied. They are now used by most patent offices and have been applied to U.S. patents since August 4, 1970. Some of the codes are not pertinent to the documents of a particular country and some which are pertinent may, in fact, not be used. INID codes for industrial designs are similar to, but not identical to, those used for patents and like documents. INID codes for industrial designs are provided separately below.INID Codes and Minimum Required for the Identification of Bibliographic Data for Patent and Like Documents (based on WIPO Standard ST.9)
II.NUMBERS FOR IDENTIFICATION OF BIBLIOGRAPHIC DATA ON THE FIRST PAGE OF INDUSTRIAL DESIGNS (INID NUMBERS)
(10) Identification of the patent, SPC or patent document
°(11) Number of the patent, SPC or patent document
°(12) Plain language designation of the kind of document
°(13) Kind of document code according to WIPO Standard ST.16
°(15) Patent correction information
°°(19) WIPO Standard ST.3 code, or other identification, of the office or organization publishing the document
(i) For an SPC, data regarding the basic patent should be coded by using code (68).
(ii) °° Minimum data element for patent documents only.
(iii) With the proviso that when data coded (11) and (13), or (19), (11) and (13), are used together and on a single line, category (10) can be used, if so desired.
(20) Data concerning the application for a patent or SPC
°(21) Number(s) assigned to the application(s), e.g., “Numéro d’enregistrement national,” “Aktenzeichen”
°(22) Date(s) of filing the application(s)
°(23) Other date(s), including date of filing complete specification following provisional specification and date of exhibition
(24) Date from which industrial property rights may have effect
(25) Language in which the published application was originally filed
(26) Language in which the application is published
(i) Attention is drawn to the Appendix 3 of WIPO Standard ST. 9 which contains information on the term of protection and on the date from which industrial property rights referred to under code (24) may have effect.
(ii) The language under code (25) and (26) should be indicated by using the two-letter language symbol according to International Standard ISO 639:1988.
(30) Data relating to priority under the Paris Convention and other agreement not specifically provided for elsewhere
°(31) Number(s) assigned to priority application(s)
°(32) Date(s) of filing of priority application(s)
°(33) WIPO Standard ST.3 code identifying the national industrial property office allotting the priority application number or the organization allotting the regional priority application number; for international applications filed under the PCT, the code “WO” is to be used
(34) For priority filings under regional or international arrangements, the WIPO Standard ST.3 code identifying at least one country party to the Paris Convention for which the regional or international application was made
(i) With the proviso that when data coded (31), (32), and (33) are presented together, category (30) can be used, if so desired. If an ST.3 code identifying a country for which a regional or international application was made is published, it should be identified as such using INID Code (34) and should be presented separately from elements coded (31), (32) and (33) or (30).
(ii) The presentation of priority application numbers should be as recommended in WIPO Standards ST.10/C and in ST.34.
(40) Date(s) of making available to the public
°°(41) Date of making available to the public by viewing, or copying on request, an unexamined patent document, on which no grant has taken place on or before the said date
°°(42) Date of making available to the public by viewing, or copying on request, an examined patent document, on which no grant has taken place on or before the said date
°°(43) Date of making available to the public by printing or similar process of an unexamined patent document, on which no grant has taken place on or before the said date
°°(44) Date of making available to the public by printing or similar process of an examined patent document, on which no grant or only a provisional grant has taken place on or before the said date
°°(45) Date of making available to the public by printing or similar process of a patent document on which grant has taken place on or before the said date
(46) Date of making available to the public the claim(s) only of a patent document
°°(47) Date of making available to the public by viewing, or copying on request, a patent document on which grant has taken place on or before the said date
°(48) Date of issuance of a corrected patent document
°°Minimum data element for patent documents only, the minimum data requirement being met by indicating the date of making available to the public the patent document concerned.
(50) Technical information
°(51) International Patent Classification or, in the case of a design patent, as referred to in subparagraph 4(c) of WIPO Standard ST.9, International Classification for Industrial Designs
(52) Domestic or national classification
°(54) Title of the invention
(56) List of prior art documents, if separate from descriptive text
(57) Abstract or claim
(58) Field of search
(i) The presentation of the classification symbols of the International Classification for Industrial Designs should be made in accordance with paragraph 4 of WIPO Standard ST.10/C.
(ii) With regard to code (56) attention is drawn to WIPO Standard ST.14 in connection with the citation of references on the front page of patent documents and in search reports attached to patent documents.
(60) References to other legally or procedurally related domestic or previously domestic patent documents including unpublished applications therefor
°(61) Number and, if possible, filing date of the earlier application, or number of the earlier publication, or number of earlier granted patent, inventor's certificate, utility model or the like to which the present document is an addition
°(62) Number and, if possible, filing date of the earlier application from which the present patent document has been divided up
°(63) Number and filing date of the earlier application of which the present patent document is a continuation
°(64) Number of the earlier publication which is “reissued”
(65) Number of a previously published patent document concerning the same application
(66) Number and filing date of the earlier application of which the present patent document is a substitute, i.e., a later application filed after the abandonment of an earlier application for the same invention
(67) Number and filing date of a patent application, or number of a granted patent, on which the present utility model application or registration (or a similar industrial property right, such as a utility certificate or utility innovation) is based
(68) For an SPC, number of the basic patent and/or, where appropriate, the publication number of the patent document
(i) Priority data should be coded in category (30).
(ii) Code (65) is intended primarily for use by countries in which the national laws require that republication occur at various procedural stages under different publication numbers and these numbers differ from the basic application numbers.
(iii) Category code (60) should be used by countries which were previously part of another entity for identifying bibliographic data elements relating to applications or grants of patents which data had initially been announced by the industrial property office of that entity.
(70) Identification of parties concerned with the patent or SPC
°°(71) Name(s) of applicant(s)
(72) Name(s) of inventor(s) if known to be such
°°(73) Name(s) of grantee(s), holder(s), assignee(s) or owner(s)
(74) Name(s) of attorney(s) or agent(s)
°°(75) Name(s) of inventor(s) who is (are) also applicant(s)
°°(76) Names(s) of inventor(s) who is (are) also applicant(s) and grantee(s)
(i) °°For patent documents for which grant has taken place on or before the date of making available to the public, and gazette entries relating thereto, the minimum data requirement is met by indicating the grantee, and for other documents by indication of the applicant.
(ii) (75) and (76) are intended primarily for use by countries in which the national laws require that the inventor and applicant be normally the same. In other cases (71) or (72) or (71), (72) and (73) should generally be used.
(80) Identification of data related to International Conventions other than the Paris Convention and to legislation
(90) with respect to SPC’s
(81) Designated State(s) according to the PCT
(83) Information concerning the deposit of microorganisms, e.g., under the Budapest Treaty
(84) Designated Contracting States under regional patent conventions
(86) Filing data of the PCT international application, i.e., international filing date, international application number, and, optionally, the language in which the published international application was originally filed
(87) Publication data of the PCT international application, i.e., international publication date, international publication number, and, optionally, the language in which the application is published
(88) Date of deferred publication of the search report
(91) Date on which an international application filed under the PCT no longer has an effect in one or several designated or elected States due to failure to enter the national or regional phase or the date on which it has been determined that it had failed to enter the national or regional phase
(92) For an SPC, number and date of the first national authorization to place the product on the market as a medicinal product
(93) For an SPC, number, date and, where applicable, country of origin, of the first authorization to place the product on the market as a medicinal product within a regional economic community
(94) Calculated date of expiry of the SPC or the duration of the SPC
(95) Name of the product protected by the basic patent and in respect of which the SPC has been applied for or granted
(96) Filing date of the regional application, i.e., application filing date, application number, and, optionally, the language in which the published application was originally filed
(97) Publication data of the regional application (or of the regional patent, if already granted), i.e., publication date, publication number, and, optionally, the language in which the application (or, where applicable, the patent) is published
(i) The codes (86), (87), (96), and (97) are intended to be used:
• on national documents when identifying one or more of the relevant filing data or publication data of a PCT international application, or of the regional application (or of the regional patent, if already granted), or
• on regional documents when identifying one or more of the relevant filing data or publication data of the PCT international application or of another regional application (or the regional patent, if already granted).
(ii) All data in code (86), (87), (96), or (97) should be presented together and preferably on a single line. The application number or publication number should comprise the three basic elements as shown in the example in paragraph 17 of WIPO Standard ST.10/B, i.e., the two letter code identifying the republishing office, the document number, and the kind of document code.
(iii) When data to be referenced by INID Codes (86) or (87) refer to two or more regional and/or PCT applications, each set of relevant filing or publication data of each such application should be displayed so as to be clearly distinguishable from other sets of relevant data, e.g., by presenting each set on a single line or by presenting the data of each set grouped together on adjacent lines in a column with a blank line between each set. When data to be referenced by codes (86), (87), (96), or (97) refer to two or more PCT international applications and/or regional applications (or regional patents, if already granted), each set of relevant filing or publication data of each such application (or granted patent) should be displayed so as to be clearly distinguishable from other sets of relevant data, e.g., by presenting each set on a single line or by presenting the data of each set grouped together on adjacent lines in a column with a blank line between each set.
(iv) The languages under codes (86), (87), (96), and (97) should be indicated by using the two-letter language symbols according to International Standard ISO 639:1988.
(v) The country of origin in code (93), if mentioned, should be indicated by using the two letter code according to WIPO Standard ST.3.
(vi) Attention is drawn to the Appendix which contains information on the term of protection and on the date from which SPCs referred to under code (94) may have effect.
INID codes for industrial designs are similar to, but not identical to, those used for patents and like documents. INID codes for industrial designs may be of most interest to design patent examiners.INID Codes and Minimum Required for the Identification of Bibliographic Data for Industrial Designs (based on WIPO Standard ST.80)
(10) Data concerning the registration/renewal
°(11) Serial number of the registration and/or number of the design document
°°(12) Plain language designation of the kind of published document
°(14) Serial number of the renewal where different from initial registration number
°(15) Date of the registration/Date of the renewal
(17) Expected duration of the registration/renewal
(18) Expected expiration date of the registration/renewal
°°(19) Identification, using the two-letter code according to WIPO Standard ST.3, of the authority publishing or registering the industrial design.
°°Minimum data element for design documents only
(20) Data concerning the application
°(21) Serial number of the application
°(22) Date of filing of the application
°(23) Name and place of exhibition, and date on which the industrial design was first exhibited there (exhibition priority data)
(24) Date from which the industrial design right has effect
(27) Kind of application or deposit (open/sealed)
(28) Number of industrial designs included in the application
(29) Indication of the form in which the industrial design is filed, e.g., as a reproduction of the industrial design or as a specimen thereof
(30) Data relating to priority under the Paris Convention
°(31) Serial number assigned to the priority application
°(32) Date of filing of the priority application
(33) Two-letter code, according to WIPO Standard ST.3, identifying the authority with which the priority application was made
(i) With the proviso that when data coded (31), (32) and (33) are presented together, category code (30) can be used, if so desired.
(ii) For international deposits made under the Hague Agreement, the two-letter code “WO” is to be used.
(40) Date(s) of making information available to the public
(43) Date of publication of the industrial design before examination by printing or similar process, or making it available to the public by any other means
(44) Date of publication of the industrial design after examination, but before registration, by printing or similar process, or making it available to the public by any other means
(45) Date of publication of the registered industrial design by printing or similar process, or making it available to the public by any other means
(46) Date of expiration of deferment
(50) Miscellaneous Information
°(51) International Classification for Industrial Designs (class and subclass of the Locarno Classification)
(52) National classification
(53) Identification of the industrial design(s) comprised in a multiple application or registration which is (are) affected by a particular transaction when not all are so affected
°(54) Designation of article ( ) or product ( ) covered by the industrial design or title of the industrial design
°°(55) Reproduction of the industrial design (e.g., drawing, photograph) and explanations relating to the reproduction
(56) List of prior art document, if separate from descriptive text
(57) Description of characteristic features of the industrial design including indication of colors
(58) Date of recording of any kind of amendment in the Register (e.g., change in ownership, change in name or address, renunciation to an international deposit, termination of protection)
(i) Code (52) should be preceded by the two-letter code, according to WIPO Standard ST.3, identifying the country whose national classification is used (the two-letter code should be indicated within parentheses).
(ii) °°Minimum data element for design documents only.
(60) References to other legally related application(s) and registration(s)
(62) Serial number(s) and, if available, filing date(s) of application(s), registration(s) or document(s) related by division
(66) Serial number(s) of the application, or the registration, of the design(s) which is (are) a variant(s) of the present one
Category code (60) should be used by countries which were previously part of another entity for identifying bibliographic data elements relating to applications or registrations of industrial designs, which data had initially been announced by the industrial property office of that entity.
(70) Identification of parties concerned with the application or registration
°°(71) Name(s) and address(es) of the applicant(s)
(72) Name(s) of the creator(s) if known to be such
°°(73) Name(s) and address(es) of the owner(s)
(74) Name(s) and address(es) of the representative(s)
(78) Name(s) and address(es) of the new owner(s) in case of change in ownership
°°If registration has taken place on or before the date of making the industrial design available to the public, the minimum data requirement is met by indicating the owner(s); in other cases, by indicating the applicant(s).
(80) Identification of certain data related to the international deposit of industrial designs under the Hague Agreement Concerning the International Deposit of Industrial Designs and data related to other international conventions.
Designated State(s)/State(s) concerned:
(81) Designated State(s) according to the 1960 Act
(82) State(s) concerned according to the 1934 Act
(84) Designated Contracting State(s) under regional convention.
Information regarding the owner(s):
(86) Nationality of the owner(s)
(87) Residence or headquarters of the owner(s)
(88) State in which the owner(s) has (have) a real and effective industrial or commercial establishment
The data to be referenced by INID codes (81) to (88) should be indicated by using the two-letter code according to WIPO Standard ST.3.
901.05(c) Obtaining Copies [R-07.2015]
Until October 1, 1995, the U.S. Patent and Trademark Office (Office) received copies of the published specifications of patents and patent applications from nearly all the countries which issue them in printed form. The Office now receives most foreign patents in the form of CD-ROM and other electronic media. The foreign patents so obtained are available to examiners from the USPTO’s automated search tools such as the Examiner’s Automated Search Tool (EAST), the Web-based Examiner's Search Tool (WEST), the Foreign Patent Access System (FPAS), and from the Foreign Patents Service Center in STIC.
Until October 1995, it was the practice in the Office to classify and place only a single patent family member for each invention in the examiner search files. In addition, all non-English language patent documents placed in the examiner files were accompanied, to the extent possible, by an English language abstract. For countries where the specification is printed twice, once during the application stage and again after the patent has been granted, only the first printing was, in general, placed in the search files, since the second printing ordinarily does not vary from the first as to disclosure. The Derwent World Patents index is available on the EAST and WEST systems and provides patent family information and Derwent titles and abstracts in English of foreign patent documents.
Copies of various specifications not included in the search files, whether non-English-language patent documents or documents not printed or available for exchange, may come to the examiner’s attention. For example, they may be cited in a motion to dissolve an interference, be cited by applicants, or turn up in an online search. Upon request, STIC will obtain a copy from its extensive collection, or if necessary, from the patent office of the particular country. In the case of unprinted patent documents, STIC will request that the date of granting and the date the specification was made available to the public be indicated on the copies provided by the country of origin.
Examiners can request copies of any foreign patent documents by submitting an online request using the Foreign Patent Request Form available through STIC’s NPL website on the USPTO intranet. Examiners may also request copies directly from the Foreign Patents Service Center of STIC. If examiners so choose, they can make copies themselves. The most current patent documents are accessible through the USPTO’s automated search systems, which allow public and USPTO users to look up, view, and print foreign documents. Older documents can be found on microfilm or print copies in the Main Service Center of the STIC. See MPEP § 903.03. The STIC Foreign Patents Service Center and the Electronic Information Centers (EICs) will assist examiners with accessing patent data from foreign countries. If examiners prefer self-service, EAST, WEST and other foreign patent websites are available for foreign patent retrieval. Additionally, STIC translation staff is able to retrieve foreign patent information for examiners.
901.05(d) Translation [R-07.2015]
Examiners may consult the translators in the Translations Service Center of the Scientific and Technical Information Center (STIC) for oral assistance in translating foreign patents or literature that are possible references for an application being examined. Examiners may also request human (written) translations of pertinent portions of references being considered for citation or already cited in applications. See MPEP § 901.06(a), STIC Services - Translations, and MPEP § 903.03, Availability of Foreign Patents.
Examiners may request human (written) translations at any point in the examination process, at the discretion of the individual examiner, but are encouraged to use oral assistance, language reference resources, and machine translations where possible in the early phases of examination. See MPEP § 706.02. Examiners can request human (written) translations, or machine translations, by submitting an online request using the Translations Request Form available through STIC’s NPL website on the USPTO intranet. Examiners should check the box for either a human (written) translation or machine translation. The Translations Service Center uses email as the sole delivery method for human (written) translations. The STIC maintains a listing of available machine translations tools on its website http://w-pattr-05/stic/npl/ index.cfm?type=ResList&var1=MachineTranslations.
Examiners may also contact in-house translators directly via phone or email. To obtain immediate oral and partial human (written) translations, Examiners may walk-in to the Translations Service Center and meet directly with a Translator.
Equivalent versions of foreign specifications, that is, members of the same patent family, are often available in English or other languages known to the examiner. In addition, copies of previously translated documents are stored in the Translations Service Center. Before any translation request is processed, the staff of the Translations Service Center checks for equivalents or previous translations. The staff of STIC’s Foreign Patent and Scientific Literature Service Center or the Translations Service Center can assist examiners in locating equivalents or abstracts. See MPEP § 901.06(a), STIC Services - Foreign Patent Services.
901.06 Nonpatent Publications [R-08.2012]
The Scientific and Technical Information Center (STIC) maintains an Electronic Information Center (EIC) or Library in each Technology Center. Copies of non-patent literature can be requested from these facilities. See MPEP § 707.05(e) for information on how to cite such publications.
901.06(a) Scientific and Technical Information Center (STIC) [R-07.2015]
The main Scientific and Technical Information Center (STIC) is located at the Remsen Building, Room 1D58, 400 Dulany Street, Alexandria, VA 22314. STIC maintains Electronic Information Centers (EICs) in each Technology Center (TC) whose mission is to assist patent examiners in the patent process by providing fast, accurate, prior art searches, document deliver services, the provision of foreign patent copies, translations of foreign documents, and access to non-patent literature in electronic format and in print.
35 U.S.C. 7 Library.
The Director shall maintain a library of scientific and other works and periodicals, both foreign and domestic, in the Patent and Trademark Office to aid the officers in the discharge of their duties.
Technical literature, foreign patent documents, and reference and online search services available in STIC are all important resources for the patent examiner to utilize. These resources provide material which must be known or searched to determine whether claims of applications are directly anticipated and, therefore, unpatentable under the provisions of 35 U.S.C. 102. STIC handbooks, textbooks, periodicals, reports, and other materials assist examiners in deciding the question of patentable invention in cases in which the primary search indicates that there is some novelty as compared to any single reference in the art (35 U.S.C. 103). These resources enable the examiner to determine whether the features novel in the particular combination searched would be obvious to a person skilled in the art from the general state of knowledge as reflected in the technical literature.I.STIC COLLECTIONSA.Books (Electronic and Print)
Based on recommendations by patent examiners and subject area experts, STIC reviews, selects and purchases primarily English-language publications in all fields of applied technology. Collections of e-books, books in print, and trade catalogs are also purchased by STIC for permanent location in specific Technology Centers (TCs). For instance, the Design Patent Art Units have a great many manufacturers’ catalogs. Books in print, and e-books may be ordered by examiners by contacting the STIC EIC in each TC. A request for a publication can be submitted by using the NPL Purchase Request Form which is available on the STIC NPL website. The physical location or database resource of all acquired publications are recorded in the STIC Online Catalog so that users will know where to look for a particular publication, be it on the shelf in the EIC or in particular electronic resource or database. All publications, regardless of location, are processed in STIC’s Collection Management Service Center.
Reference works including encyclopedias, dictionaries, handbooks, and abstracting and indexing services are also available in print in the EIC. Many are available in electronic form and can be accessed via an electronic resource or database. EIC staff can assist examiners in finding information pertinent to the subject matter of a patent application. STIC does not circulate reference materials. Books in the reference collection are so labeled.
Requests for the purchase of books in print or electronic books are accepted at any time throughout the year, with subsequent purchase dependent on demonstrated need and availability of funds. If an electronic copy of a book in print exists STIC will purchase the electronic copy first.B.Periodicals
STIC provides access to a large collection of print and electronic resources. Incorporated into the collection are a number of titles pertinent to the examination of design patent applications and titles of interest to nonexamining areas of the U.S. Patent and Trademark Office (USPTO).
Requests for the purchase of new subscription titles are accepted at any time throughout the year, with subsequent purchase dependent on demonstrated need and availability of funds.
Most periodicals are available electronically via the STIC NPL website. Current issues of select periodicals in print are arranged alphabetically and located on shelves near the reference collection in EICs and in Main STIC. Bound periodicals are interfiled with the book collection. Periodicals on microfilm and CD-ROM are housed in cabinets.C.Foreign Patent Documents
The USPTO receives foreign patent documents through exchange agreements with almost all countries that print or otherwise publish their patent documents. This makes STIC’s collection of foreign patent documents the most comprehensive in the United States.
The collection is located in Main STIC. The most current part of the collection is made available to examiners and the public through the USPTO’s automated search tools which allow users to look up, view, and print documents. The earliest patent documents, as far back as 1617, and documents from smaller countries are found in the paper collection in the stacks or at remote sites.
Most foreign countries issue official patent and trademark journals corresponding to the Official Gazette of the United States Patent and Trademark Office. These journals are shelved under country name. Most countries issue name indexes; some also issue classified indexes. Indexes are shelved with the journals.
The official journals of a few countries include abstracts of the disclosures of the patents announced or applications published.D.Special Collections
Although STIC still houses substantial print collections, the majority of the collections are now in the form of electronic books, journals, and foreign patents. Many rare and historical book collections have been digitized in order to provide electronic access and preserve the materials. The electronic books and journals are accessible via the STIC NPL website. To locate the NPL Services for Examiners on the USPTO Intranet site, go to the Patent Examiner’s Toolkit and click on Non-Patent Literature. Collections are arranged by TC and are also accessible by title via the STIC Online Catalog.
Each Electronic Information Center has a small print collection tailored to the art areas covered by the TC.II.HOW TO LOCATE MATERIALS IN STICThe STIC Online Catalog
The primary vehicle for locating e-books, e-journals, database and subscription resources, books in print and other materials is the STIC online catalog. The online catalog contains a record of all materials held by the STIC collections, including location, call number, and availability. Examiners can access the online catalog from their desktops via the Patent Examiner’s Toolkit or via the STIC NPL website.
Print and electronic materials acquired by STIC are classified according to the Library of Congress classification system. Print materials including books and bound periodicals are intershelved in the stacks according to this classification system. New unbound periodical issues are shelved in a separate area of each EIC, in alphabetical order by title.III.LOAN POLICY
All STIC materials in print except non-circulating items may be checked out at the Reference Desk in the EIC or Main STIC. Non-circulating material includes reference publications, journals in print, foreign patent documents, and microfilm. Examiners may use the Department of Commerce Libraries as well as other Federal Government libraries in the area. STIC’s staff can answer questions regarding the accessibility and lending practices of other libraries. If books in print are needed from another library for official use, a request can be submitted using the Reference Delivery Request Form available via the STIC NPL website. The Reference Delivery Service Center will process the request on behalf of examiners and deliver the reference upon receipt.IV.STIC SERVICESA.Reference Services
STIC’s Reference Desk staff assists examiners in the use of the STIC services and its resources. Upon request, they provide guidance on finding information in the electronic and print collections, and updates on the status of service requests. If any problems are encountered in locating materials or finding answers to informational needs, please check with the staff. They are ready and willing to assist. Queries may be made in person or by using STIC Reference Desk contact resources by phone, email, instant message or simply using the Ask-STIC chat-room.B.Online Text/Prior Art and Bibliographic Searches
STIC staff located in the EICs in each TC perform prior art and bibliographic searches for examiners using commercial databases (CDBs) and subscription resources STIC staff access many CDBs such as ProQuest Dialog, Scientific and Technical Network (STN), Questel-Orbit, IP.com and others. When they are identified as meeting the needs and requirements of the Office, new database vendors are added. A list of the databases offered by each vendor is available on the vendors' websites.
CDBs extensively cover the fields of knowledge examined by USPTO, and make it possible for expert search staff to retrieve bibliographic information e.g. title, author, publication date, source, language etc., and may also include abstracts, chemical structures, and DNA sequences. Often the full text of the articles, depending on the database can be provided in PDF or other electronic formats.
CDBs and other subscription resources provide access to non-patent literature that is typically not available on the Internet, and require expert knowledge in order to use special indexing, perform complex chemical substance and structure searches, and classification search systems that improve retrieval. Examiners can submit a request for a prior art/text search by using the Text/Regular Form on the STIC NPL website. For bibliographic searches, examiners may submit a request for a legal/litigation search by using the Legal/Litigation Form. Patent Family searches may be requested by using the Text/Regular Form or contacting the Reference Desk staff in the EIC. Completed searches are emailed to the examiners.
Online searching of nucleic and amino acid sequences is conducted by the staff of the STIC EIC for TC1600 through the use of an in-house computer system developed for this purpose. On an as-needed basis, introductory classes are conducted by STIC staff to assist examiners in understanding the sequence search results. Examiners can also conduct this search on their own via the in-house ABSS search system.
Examiners may also conduct searches of online commercial databases independently of STIC staff. Once approval for a commercial database login and password from the supervisory patent examiner (SPE) has been obtained, training by the vendor is provided through STIC’s Digital Resources Division. Individual assistance in searching these databases is also available from the Electronic Information Centers (EIC) staff, especially for searching chemical structures and DNA sequences.C.Foreign Patent Services
The staff of the Foreign Patents Service Center of the STIC is available to assist with any problem or informational need regarding foreign patent document retrieval or foreign patent documents. These services are also available to examiners in the Electronic Information Centers.
Online patent family searches are performed for patent examiners by the Foreign Patents Service Center. The services provided include: identification of English-language or preferred-language equivalents; determination of priority dates and publication dates; searches by inventor name or abstract number; other patent family and bibliographic document retrieval searches; and foreign classification information.
Examiners who choose to perform their own foreign patent searches after receiving appropriate training through the Office of Patent Training can consult foreign patent experts for difficult document retrieval searches.
The staff of the Foreign Patents Service Center can supplement the online document retrieval searching effort with manual searches of foreign patent journals, including Official Gazette(s), patent concordances, and/or indexes. The staff also provides training in the use of the Foreign Patents Access System (FPAS) in EAST/WEST and the use of the foreign patent collections.
SPECIAL NOTE: Members of the public can order copies of foreign patent documents from the Foreign Patents Service Center.D.Translations
Examiners may consult the translators in the Translations Service Center of STIC for oral assistance in translating foreign language patents and foreign document sources that may be possible references for applications being examined. Oral translations are performed for the major European languages and for Japanese. Examiners may also request written translations of pertinent portions of references being considered for citation or already cited in applications. Full translations are also made upon request. Written translations can be made from virtually all foreign languages into English. See also MPEP § 901.05(d).
The Translations Service Center maintains a database of all previously completed document translations. Patent translations are indexed by country and patent number; articles are indexed by language and author or title. Any copies of translations coming to examiners from outside the Office should be furnished to the Translations Service Center so that it may make copies for its files.E.Interlibrary Loans
When needed for official business purposes, STIC will borrow from other libraries materials not available in-house. Requests can be submitted to the STIC facility in an examiner’s TC or via the electronic form on the STIC NPL website. STIC has borrowing agreements with libraries throughout the U.S.F.On-Site Photocopying
For the convenience of the Examining Corps, photocopy machines are available for employee use in STIC. These are to be used for photocopying STIC materials which do not circulate, or for materials which examiners do not wish to checkout.G.Obtaining Publication Dates
Requests pertaining to the earliest date of publication or first distribution to the public of publications should be made to the STIC EIC facility in the examiner’s TC. For U.S. publications, the staff can obtain the day and month of publication claimed by the copyright owner. The same information can be obtained for foreign publications through correspondence although it will take a little longer.H.Tours
Special tours of the STIC and its service centers can be arranged for examiners or for outside groups by contacting the STIC EIC facility in the examiner’s TC.
901.06(b) Borrowed Publications [R-07.2015]
See MPEP § 901.06(a), STIC Services - Interlibrary Loans.
901.06(c) Alien Property Custodian Publications [R-07.2015]
Applications vested in the Alien Property Custodian during World War II were published in 1943 even though they had not become patents.
Care must be taken not to refer to these publications as patents; they should be designated as A.P.C. published applications.
An A.P.C. published application may be used by the examiner as a basis for rejection only as a printed publication effective from the date of publication, which is printed on each copy.
The manner of citing one of these publications is as follows: A.P.C. Application of ............, Ser. No. ............, Published ............
The Patent Search Room contains a complete set of A.P.C. published applications arranged numerically in bound volumes. The U.S. A.P.C. bib data is located on the following database (2964 total): http://db.library.queensu.ca/apcdocuments/.
901.06(d) Abstracts, Abbreviatures, and Defensive Publications [R-07.2015]
Abstracts and Abbreviatures are U.S. Patent and Trademark Office publications of abandoned applications. Defensive Publications (the O.G. defensive publication and search copy) are U.S. Patent and Trademark Office publications of provisionally abandoned applications wherein the applicant retains his or her rights to an interference for a limited time period of 5 years from the earliest effective U.S. filing date. On May 8, 1985, the U.S. Patent and Trademark Office stopped accepting Defensive Publication requests and began accepting applications for Statutory Invention Registrations (SIRs), although there was an overlap period where both Defensive Publications and Statutory Invention Registrations were processed; see MPEP § 711.06 and § 711.06(a). Statutory Invention Registrations have now replaced the Defensive Publication program. However, requests for a statutory invention registration filed on or after March 16, 2013 will not be processed, as the provisions of pre-AIA 35 U.S.C. 157 governing Statutory Invention Registrations were repealed. See MPEP § 1101. Statutory Invention Registrations are numbered with document category “H,” beginning with “H1.” Defensive Publications and Statutory Invention Registrations are included in subclass lists and subscription orders.
Distinct numbers are assigned to all Defensive Publications published December 16, 1969 through October 1980.
For Defensive Publications published on and after November 4, 1980, a different numbering system is used.
A conversion table from the application serial number to the distinct number for all Defensive Publications published before December 16, 1969 appears at 869 O.G. 687. The distinct numbers are used for all official reference and document copy requirements.
901.07 Patent Family Information [R-07.2015]
Patent family information is available at the U.S. Patent and Trademark Office (Office) primarily through commercial databases. See MPEP § 901.05 regarding patent family. Examiners have access to this information either directly through the automated search tools such as the Examiner’s Automated Search Tool (EAST) and the Web-based Examiner Search Tool (WEST) or indirectly through the search services of the Scientific and Technical Information Center (STIC). Additionally, Examiners may utilize the Common Citation Document website accessible through the Examiner’s Toolkit to obtain patent family information.I.AVAILABLE DATABASES
Derwent’s World Patents Index (WPI) and International Patent Documentation Center (INPADOC) are two databases used for retrieving foreign patent information.
The WPI database is loaded in-house at the Office and is integrated with the Office’s automated search system. WPI in-house is used whenever abstracts are needed or when searches in addition to publication date or patent family are required, such as searches on inventor name or IPC (International Patent Classification). WPI in-house is also the first choice for searches for publication dates or patent families because of its ease of use and low cost.
INPADOC is used for quick searches for publication dates or patent families. The Office enjoys cost effective rates for INPADOC due to an agreement between the Office and the International Patent Documentation Center (now part of the European Patent Office) negotiated several years ago. The agreement applies only to INPADOC as accessed directly on the INPADOC computer in Austria, not to INPADOC as available on other commercial database systems such as ORBIT, DIALOG, or STN.II.ACCESS TO FOREIGN PATENT INFORMATION
Patent examiners may directly search WPI in-house or INPADOC or both.
Examiners may also request foreign patent searches through STIC. For STIC services, see MPEP § 901.06(a), paragraph IV.