CD-ROM services to meet user needs: Experiences from an emerging information market

CD-ROM services to meet user needs: Experiences from an emerging information market

World Patent Information, Printed in Great Britain. Vol. 13, No. 4, pp. 193-200, 1991. 0172.2190/91$3.00+.00. Pergamon Press plc CEC/WIPO Designin...

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World Patent Information, Printed in Great Britain.

Vol. 13, No. 4,

pp. 193-200, 1991.

0172.2190/91$3.00+.00. Pergamon Press plc CEC/WIPO

Designing Online/CD-ROM Services to Meet User Needs: Experiences From an Emerging Information Market * Pascual Segura and Bernabe’ Zea, Patent Documentation Training Centre (Centre d’Estudis de Documentacib de Patents, CEDP) of the University of Barcelona, Diagonal 647, E-08028 Barcelona, Spain

Summary

(1) On Users

The needs of new users of patent information and some ways of getting them are stressed firstly. Secondly, the most common information problems and their recommended solutions using existing or future online/CD-ROM products are summarised. It is then shown how different kinds of users would face different problems, and consequently would need different online/CD-ROM services. A recommended order of subscription to CD-ROM patent databases is given. The summary message is: If you can, search CD-ROM first. If you find what you are after, then the search is over. If you don’t, then search online, but benefiting from the experience you gained previously with the CD-ROM.

User needs or need of users? The main problem in the world of online/CD-ROM patent information does not lie in the quality of existing databases and retrieval languages (that certainly can always be improved) but in the scarcity of users. Leaving aside the patent offices and the patent/information departments of the largest companies (two groups of extremely specialised producers and consumers of information that, arbitrarily, we will not include in the term users), it seems that the patent system, as well as its value for trade and industry, is only known or appreciated by a rather small number of experts. This is so, not only in countries like Spain, with a recent history of weak patent protection, but also in industrialised countries of the EEC(i) and the EFTA(*). A question arises: Are more users really needed?

The title of this paper includes the terms online and CD-ROM which are rather precise. It also includes the term services which, on the contrary, may have different meanings: Webster’s Unabridged Dictionary lists 22 of them, the 15th one being ‘activities carried out to provide people with the use of something’. Even within the highly-specialised world of information retrieval, the word services can refer to either the activities of database producers (Chemical Abstracts Service, National Technical Information Service . .) and vendors (ORBITSearch Service, Dialog Information Services . . .), or to the activities of brokers and information specialists in libraries, companies, etc. Arbitrarily, in the context of this paper we will refer to this second group of information services. Thus, under the expression designing onlineleD-ROM services we do not pretend to make suggestions to database producers or vendors, neither online nor on CD-ROM. We just want to share some ideas drawn from our daily contact with information users.

Patent offices and patent information suppliers (abstracting services, database producers and vendors, patent libraries, photocopying services, etc.) perhaps could survive without more users than they already have. However, on the one hand, the number of potential users is enormous, specially from small and medium sized companies, as clearly shown, for example, in some studies sponsored by the EEC Commission(‘) (in this context, the term potential user means ‘those people who are capable of using or have a latent need for patent information’). On the other hand, free access to the information in patent documents is considered to be beneficial for society as a whole, and it represents one of the most important features that justify the patent system. Therefore, converting potential users into actual users constitutes a public problem that should be addressed to governments and administration bodies. This is so, regardless of whether more users are needed or not for the survival of patent offices or patent information suppliers. Such a problem is even more important for developing nations, as has been suggested(

*Paper presented at the Symposium on the Practical Problems in the Online Search of Patent Information held bv OLPI (International Association of Producers’ and Users oi Online Patent Information) in association with the World Intellectual Property Organisation, Geneva, 4-5 July 1991.

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Getting more users

available

and the Spanish patents on CD-ROM are ready to appear. According to the RPI policy for dissemination of patent documents, collections of Spanish patents have been deposited in 18 different places in Spain, and the initiatives of some universities (e.g. that of the University of Barcelona) have been backed-up@). (ESPACE-ES)

All kinds of training, publicity and/or service activities would help to increase the number of users of patent information. Educational programmes in collaboration with interested circles, such as the one organised by the Swedish Patent Office@), will certainly be very useful. Promotionallpublicity activities like those of the INPI suboffice in Lyon are most effective. Creation of patent depository libraries, either being regional sub-offices of the national patent offices (like in France and USA) or being information services attached to other public bodies (like in Germany and Great Britain), would help a lot in promoting the local use of patent information(s). Obviously, if a network of patent depository library is supplemented with a network of highly-specialised patent information services devoted to technical information and patent statistical analysis, as projected in Germany(l), results should be even better. However the latter situation is far from-that of an emerging patent information market such as the one in Spain. In Spain the interest in online/CD-ROM information retrieval and the interest in patents (both in patent information and in the patent system itself) took off simultaneously in the mid-‘80s, mainly as a consequence of the coming into force of the new Spanish patent system. In the previous legal patent system, Spanish managers were not worried about patent infringement because, in practice, it proved to be very difficult to enforce patent rights. On the other hand, Spanish patent agents (all of them being independent professionals, no company employees) were not worried about carrying out novelty searches before filing their applications, because patents would be granted anyway, given the absence of any examination or opposition. Thus, the standard practice among Spanish patent agents was to ‘believe’ the typical inventor’s remark that ‘this must be new, because I have never seen or read about anything like it’. Taking into account the strength of the legal protection and the severity of the patentability requirements of the new Spanish patent system (similar to systems in other EPC contracting states), it is no wonder that a sudden interest in patent information has arisen among Spanish companies and patent agents. This interest is being fostered by the activities of the Spanish Patent Office (Registro de la Propiedad industrial, RPZ) and some public bodies like the University of Barcelona. The technological information policy of the RPI was a modern one@) even before the change in the patent system occurred, as proved by the introduction in 1983 of online access to CZBEPA T, the bibliographic database of Spanish patents and utility models. Nowadays, the RPI is a pioneer in the introduction of CD-ROM technology: the CD-CIBEPAT CD-ROM database is already

As a recent initiative of this university, a public patent library named Biblioteca de Patents CIDEMIUB.‘FBG has been established to promote patent information in Catalonia, as well as to provide online/CD-ROM services and some patent document supply to Catalan inventors and small and medium sized companies. The strong support of the RPI and some agencies of the Catalan Government, together with some sponsorship by the European Patent Ofice, Chemical Abstracts Service and Derwent Pubhcations, have made possible the establishment of this new library which is being heavily used. On the aspect of our training and publicity activities, it is worth nothing that in 1987 the University of Barcelona received the first COMETT project of the EEC granted to Spain under Section D (multimedia training systems). A goal of the project was the creation of a patent documentation training centre in Barcelona. In 1990 such a training centre, named Centre d’Estudis de .Documentacio de Patents (CEDP), became an official unit of the university, offering two unique postgraduate courses: a 200 hour Diploma on Spanish, European and International Patents, and a 300 hour MASter in Online and Compact-disc Information Retrieval (MASDOC). Somewhat modified, the course on

patents will be offered for the next academic year in Madrid, under the direction of the Head of the Spanish Patent Office. Other patent promotion activities of the CEDP have been as follows: participation in courses, workshops, conferences, etc., of several entities (universities, chambers of commerce, industrial associations, etc.); publication in technical journals and professional bulletins of a collection of divulging papers on patent information and the patent system; a constant collaboration with the media (newspapers, radio and TV) to publicise patents for the general public; and the mailing of thousands of circulars to companies, either directly or through associations, explaining to managers why they need patent information (Appendix shows the contents of one of these circulars). End-users

End-users, either potential or actual, are ultimate addressees of patent information. They can be employees of a company or institution, or they can work in private practice. Patent professionals (agents, attorneys, lawyers . . .) are typical end-users who can work in a company (usually in a medium or large one) or in private practice (as all of them do in Spain).

Online/CD-ROM

Private consultants be typical end-users

and backyard inventors would who work in private practice.

It is surprising how little is published about the needs of individual inventors. Apparently their most important need is to find companies or investors ready to develop and commercialise their inventions. This problem is shared by the academic inventors when there is no institution able to help them. According to the experience at our above-mentioned patent library, individual inventors are very numerous in Catalonia (there are two inventor’s clubs in Barcelona). Individual inventors ask for searches at our patent library very often but, unfortunately, most of the times it turns out that they have ‘rediscovered the wheel’. A quick CD-ROM search is usually enough to demonstrate that a similar ‘invention’ was proposed before. We have also detected (and perhaps contributed to its creation) an unexpected kind of individual inventor: housewives who, after listening to some of our radio or TV broadcasts, call to patent improved household items. In a given company people would have different needs of patent information depending on their tasks. Patent professionals, i.e. those involved in patenting, licensing and infringement, would need legal information. People involved in R&D would be mainly interested in patents as a source of technical information. The marketing department would be interested in the corporate intelligence use of patent information, e.g. in monitoring competitors or the market through patent statistical analysis. Managers and, in general, all those who make decisions ought to have some general ideas about the patent system, the role of patents as company investment, and the value of patents as intangible assets. Concerning the latter, one of the most critical problems for Spanish companies is that their owners/managers had no idea about patents in the times of the old patent system: patents were ignored or considered to be bureaucratic or public-image matters. Given the strong patent protection of the new Spanish patent system, especially from October 1992 when the new Patent Act will fully come into force, some of those owners/managers are somewhat frightened about patents (with the fear of the unknown) and, therefore, they feel suddenly interested in learning and being informed about the subject. Intermediaries Much has been said about the dichotomy intermediary/end-user since the advent of online searching. It is commonly accepted that in many circumstances professional intermediaries (information scientists, librarians. . .) are needed. In any case, when it comes to patent information retrieval it is indispensible that the intermediary has some previous knowledge of the patent system and of the patent documents involved. In this respect our experience agrees with

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the conclusions of a published study on the use of patent information in industry(‘): if the librarian or information specialist in the library/information unit of an industrial firm lacks expertise in patents, he/she would be afraid to use patent information or to carry out searches in patent databases. It is evident to us that the ideal patent information intermediary, either working in a company, in a patent library or as a broker, should have a scientific/technical background (to be familiar with technical language) and some knowledge of legal and documentation aspects of patents (to understand patent problems and to choose suitable solutions), together with the relevant training in online information retrieval, as any other online searcher. Actually, the intermediary will be forced to give some opinion or legal advice before carrying out the search or when interpreting its outcome. Sometimes simple legal advice will make the search unnecessary. In our opinion, as CD-ROM searches are easier and more friendly than online searches for end-users, the recent commercialisation of patent databases and patent documents on CD-ROM will allow more and more patent information retrieval to be obtained directly by end-users who are knowledgeable about patents and hence do not need intermediaries.

(2) Problems and Online/CD-ROM Solutions A multiplicity of possible problems can arise when dealing with patents. The online/CD-ROM searcher will use his/her knowledge and experience to look for the best solution at hand, i.e. the most economical one in general terms of time and money, considering the resources at his/her disposal. In the following, some common situations are considered, without intending to be exhaustive. Getting copies of patent documents Surprisingly enough, in our experience many requesters of copies still do not know that there are divisional applications differing only in the claims, or that some offices publish both patent applications and granted patents, not to mention the subtleness of some US or Japanese patent documents. Some useful advice from the intermediary to the end-user could simply refer to the choice of the most suitable document for copying, when possible. When the patent document is unambiguously identified by a suitable reference (patent office, type of document and application/publication number) the problem of getting a copy is solved through a patent depository library or document supply service. Often, the initial number will not correspond to the ordering number of the document in the file, and some searching will be necessary. For example, in

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our cabinets, Spanish patents (in microfiche) are ordered by publication number, whereas in practice documents of the old law are usually requested by application number. Our European B documents (on aperture cards), which are arranged by publication date, are usually requested by publication number. Thus, when the initial information on the requested document does not correspond to the ordering in the cabinets, a simple search is necessary. Although such a search can be carried out online in any suitable database, we find it much more convenient to have at hand the corresponding bibliographic/index database on CD-ROM, that can easily be used by any person. Thus, for instance, the CD-CIBEPAT database on CD-ROM solves any identification problem for all kinds of Spanish patent documents including utility models and old-law introduction patents. For the European patent documents, the EPO ESPACE-BULLETIN database, which is equivalent to the printed European Patent Bulletin, solves any identification problems. Of course, these CD-ROM databases are useful for many other purposes as mentioned below. Searching

for equivalents

The problem of retrieving and patent family tracing in databases with patent family information (INPADOC, World Patents Index-WPI, EDOC and others) has been recently reported(x). It is concluded there that, in general, INPADOC, by covering the largest number of countries and kinds of document and usually having the largest time-scope, allows the maximum recall. However, WPI provides more information and covers some non-conventional (nonpriority) equivalents. Thus, for instance, the Derwent family of EP 94764 does not mention its equivalent Spanish document (ES 281128-U) because it is a utility model, whereas this equivalent document appears in an INPADOC family search. However, an INPA DOC search does not retrieve the equivalent Spanish document corresponding to DE 3443962, because it is a non-priority one. In this case, the Spanish document (ES 8705011, which is an old-law introduction patent) is mentioned in the corresponding Derwent family. As this is not always the case, a search in CIBEPAT may be necessary. Often (e.g. when infringement is considered) the user’s need is limited to finding out a possible equivalent of a patent in a given country/office. In this case, searching in a database with family information would probably be more expensive than necessary. In fact, searching in a database of the country/office of interest (if available) would probably solve the problem in the most convenient way. When such a search can be carried out on a CD-ROM, this would be the recommended approach. Examples of online patent databases covering only one country/office are: CLAIMS and USPAIB for

and B. Zea

USA, CIBEPAT for Spain, Chinapats for China, EPA T for the European Patent Office, FPAT for France, Italpat for Italy, Japio for Japan, and PATDPA for Germany. Examples of CD-ROM patent databases covering only one country/office are the above-mentioned ESPACE-BULLETIN and CD-CIBEPAT, as well as the following: CASSIS from the USPTO and APS from Chadwyck-Healey, for US patents, ESPACE-ACCESS for European Applications, and a WIPO prototype provisionally named PraCTis, for PCT applications, (to our knowledge, it has not been announced how it will be commercialised). All these CD-ROM databases, except for ESPACE-BULLETIN, have searchable abstracts. Unfortunately, although CASSIS and APS are very useful for other purposes, they cannot be used to locate a US equivalent of a non-US patent or patent application, because these two databases lack the priority field. Apparently, no remedy to this drawback is foreseen. In the chemical field, a limited (but often sufficient) equivalent searching can be done via the printed volumes of CAS Patent Index, which since 1977 (beginning of 10th Collective Index) is partially based on the INPADOC family system. Searching tion data

for legal information

and other registra-

All online/CD-ROM patent databases include some registration data (applicant, inventor, application and/or publication numbers and dates . . .) that is very useful for identification and many other purposes. Most of these data are stable, i.e. do not need updating after being introduced in the database. However, information on legal status, which grows steadily along the life of the patent, has to be updated. From the user point of view, the frequency of the necessary updating depends on the problem. In the European granting procedure, for instance, after the publication of notice of grant in the European Patent Bulletin, third parties have nine months to file an opposition. Obviously for this purpose the updating frequency of the CD-ROM ESPACE-BULLETIN (three months) is enough. On the contrary, as the time allowed to translate a granted European patent into the official languages of the designated states is only three months, for translating purposes the time-span between updating may be too long. For instance, we have found that a Spanish patent agent who had been requested to prepare a given translation in advance, and who will not receive any later notice of grant from the applicant, would need to be informed within the first month after publication. For this purpose, an online search in EPA T is necessary. Actually,

to our knowledge

ESPACE-BULLETIN

Online/CD-ROM

is the only CD-ROM database with legal status information (request and despatch of examination reports, granting, revocation, opposition, licences, lapses . .). However, online databases with legal status information are numerous, e.g. the abovementioned EPAT (EP), CLAIMS Reassignments (US), FPAT (FR), Legal Status (AT, CH, DE, DK, FR, GB, NL, US, EP, WO), Patent Status (US), SITADEXISZTADZN (ES), etc. There are several online databases with information on patent case law, which can be useful to lawyers, attorneys and academics. Besides, as good access to decisions of the Boards of Appeal of EPO-DG3 are of the utmost importance for European patent attorneys and other professionals, the project of the EPO Principal Directorate of Patent Information to publish a CD-ROM series of legal data (decisions, laws, guidelines, etc.) is extremely interesting. This is so because the existing four series of decisions of the Boards of Appeal on microfiches (published, unpublished and two indexes) are good for the reproduction of decisions, btit very limited for their retrieval. Subject

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the technical field. In this respect, our experience with the CD-ROM databases CD-CIBEPAT, ESPACEBULLETIN, ESPACE-ACCESS, CASSIS-BIB, APS and the PraCTis prototype is a very positive one. The International Patent Classification (IPC) is a useful tool for patent searching, especially in those non-chemical fields for which no other coding exists. As discussed recently(iY), an effective use of IPC codes needs careful preparation, taking into account the changes between the different editions. Although CD-CIBEPAT and PraCtis discs incorporate a file with the text of the IPC 5th editions (in Spanish and English, respectively), the announcement of the immediate release by WIPO of the IPC:CLASS CD-ROM is great news. ZPC:CLASS (standing for ‘IPC: Cumulative and Linguistic Advanced Search Support system’) will cover 3rd ed. in English and French, 4th ed. in English, French and German, and 5th ed. in all those languages plus Spanish. Besides, it will include the keyword indexes and the German/English Stich- undSchlagworterverzeichnis of the IPC, plus the valid symbol files and the revision concordance data. No doubt this disc will become ‘a must’ on the desk of any patent searcher.

searching

As in many other areas, subject searching is probably the most difficult task in patent online/CD-ROM information retrieval, given the intrinsic ambiguities in the descriptions of subjects. It is commonly said that in online/CD-ROM patent searches recall is more important than precision. Recall is really essential for the most difficult searches, namely, those ‘never-ending’ patentability/opposition searches in which no novelty-destroying document is found. In this case the searcher can never be sure about the full completeness of the search. However, a patentability/opposition search can be finished when a document that clearly describes the invention and destroys its novelty is found. In this case the searcher is sure that his/her search is complete enough. The former case is a typical example of what can be referred to as a search with a negative result, whereas the second case could be called a search with a positive result. Positive novelty-destroying results could well be obtained from a preliminary prospecting search in a small or limited database, thus saving the time/effort/cost of an exhaustive search. For this sort of prospecting, searches in CD-ROM databases prove to be very useful. Even if the desired results are not obtained, the study of retrieved referenceswithout the urgency of being online -can be extremely useful for designing the profile that will be run afterwards in online databases. In particular, such a prospecting CD-ROM search can give insight about the pertinent controlled or uncontrolled vocabulary and the patent classification codes (IPC, US or others). This is specially useful for searchers with little knowledge of

Several versions of IPC are also available online: CLZNPAT (RPI) in Spanish, CZB (Questel) in French, and the EPO-modified ECLATXin English. The latter is very useful in combination with online access to EDOC. The US Patent Classification, which is available online (US CLASS and CLAIMS CLASS in Dialog and ORBIT), is a search tool more important than the IPC for US patent databases. The Manual of Classification file included in the CASSIS-BIB CD-ROM disc is a useful and cheap search aid. The USPTO also publishes CLASSZSICLSF and ASIST on CD-ROM, which can be of great value when searching US patents. Besides, one should never forget that sometimes online/CD-ROM subject searching in US patents databases allows longer backwards time coverage than in other databases. Substance

searching

Searching for chemicals, pharmaceuticals and biological compounds has improved very much over the past years. Online searching for documents related to specific substances via Registry Numbers in the bibliographic databases from Chemical Abstracts Service (CAS) has become commonplace, both among intermediaries and end-users. However, benefiting from the deep indexing of Chemical Abstracts (CA) for subject searching or combined subject/substance searching is not so straightforward, because it requires some knowledge of the indexing policy of CAS. Familiarity with search aids like Index Guide, Subject Coverage Manual, CA Heading List, etc., is recommended to make the best use of CA

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controlled vocabulary. The patent coverage and the abstracting policy in CAS publications is rather special and should be well known by any intermediary or end-user before carrying out a search in its databases. For many chemists, the bibliographic CA database would be the most reliable (and cheap) source of patent information. Sub-structural, family or exact searches for specific substances can be carried out, either in the CASbased databases Registry (STN) or DARC (Questel), or in the Be&&n database (STN, Dialog, ORBIT and soon in Data-Star). Crossover possibilities among different databases add extra power to substance searching. Derwent’s subscribers can also search for substance information (stored as fragments) in the CPI part of WPZ, which has been made easier recently with a microcomputer program. The above-mentioned searching possibilities have been recently supplemented with those offered by structural databases with Markush formulae information (WZZ’M in Questel and MARPAT in STN). Besides, one should not forget the substance searching possibilities offered by chemical dictionary files (CHEMSEARCH in Dialog, CHEMDEX in ORBIT, a part of Registry in STN), which can be cost-effective for certain problems. Given its complexity, highly specialised intermediaries, like those working in libraries/information units of pharmaceutical companies, can master online searching in all these databases. Nevertheless, before claiming substances described by a generic formula, it would be reasonable to carry out a search in these databases, and even in the recently appeared Current Facts on CD-ROM, which contains very recent information on substances to be later included in the Beilstein database and handbook.

(3) Designing Patent Online/CD-ROM Services The design of an online/CD-ROM patent service, either inside a company or open to the public, will depend on the circumstances. In the first case the design will surely focus on the specific fields of company activity and patent information sources will mostly be selected according to their subject, not to their country of origin. In a public service, on the contrary, request of information from any field will be expected. In any case, the design of the online/CD-ROM service involves three main decisions: (a) Who will work as information intermediary/ies? (b) Which information retrieval tools will be used? (c) Which patent documents and/or abstracts will be subscribed to (if any)?

The choice of the information specialist(s) to work in a company will depend on its field of activity. But, as said above, either in a company or in a public service, they should have a scientific/technical background and some knowledge of legal and documentation aspects of patents. In Spain these professionals are very scarce, a situation that we try to improve with our MASDOC master course. In the following decisions (b) and (c) are considered in turn. Selecting vendors

pat&t

online/CD-ROM

databases

and

For an efficient patent information retrieval, online access to (in alphabetical order) Dialog, ORBZT, Questel and STN is essential. This is so mainly because Dialog has the largest number of databases, and because everyone of the other three has some important patent databases in exclusivity. In some instances, access to other hosts may be necessary. This is the case in Spain, where the Spanish Patent Office, acting both as a producer and a vendor, gives exclusive online access to its databases CZBEPAT and SZTADEXISZTADZN. Gradually the working needs will indicate which online databases are the most useful for the service. After some time, an analysis of the searches carried out will possibly suggest the acquisition of some patent databases on CD-ROM. For a high quality public patent information service, we recommend consideration be given to subscription, in the given order, to the following CD-ROM databases: (1) One corresponding to patent documents of the country in which the service operates (e.g. CZBEPAT in Spain), because these documents will be those to be considered when it comes to an infringement. (2) Those corresponding to PCT and EPO patent documents, i.e. the successor to the PraCTis project (when available) and ESPA CE-A CCESS (unless your interest is mainly legal, in which case ESPACEBULLETZN will be the best choice). A reason for the choice of PCT and EPO databases lies in the fact that their documents are very numerous and are published very quickly. Another reason appears when the country in question is a PCT or EPC contracting state. (3) One of the databases corresponding to US patents, i.e. either to CASSZSIBIB or to APS, given the language, the relative importance and the quality of US patent documents. (4) If it were available, an English language database corresponding to Japanese patents would probably be a good choice.

Online/CD-ROM

In our experience, one of the best investments that any online/CD-ROM service can make is the acquisition of those search aids which are useful. This includes a variety of printed or microform documents, but also some CD-ROM databases such as the patent classification ones. In a way, any CD-ROM database acts as a sophisticated search aid for access to a related online database. Building up a collection andlor abstracts

of patent

documents

Some sort of patent document/abstract supply is unavoidable in any circumstance. For technical information purposes end-users frequently need access to full patent documents written in an understandable language. They also need access to the granted patent of the country in question (or to a translation) when a legal question arises. Besides, it seems that human beings still prefer to read printed papers rather than computer screens or projected images from microforms. Depending mainly on its size and its R&D activities, a company may consider subscribing to some abstracting services, like those by Derwent or CAS. As more and more abstracts are available online (e.g. WPI, CA), in many cases online access can be more cost-effective than subscription to the corresponding printed or microfilm version, although the online system may not provide drawings and formulae (except in the CAS abstracts requested offline from S7’N). It is worth noting the announcement of the new Derwent policy of publishing CPI Documentation Abstracts and non-CPI Alerting Abstracts on CD-ROM, and the release of CD-ROM products in defined subject areas. Only very large companies would be interested in subscribing to patents in all fields of industrial activity, coming from several patent-issuing authorities. However, some medium sized ones would like to have in-house access to the patent documents in its field of activity, coming from the most important countries/offices. Such a service, in microfilm, is offered by Derwent to subscribers of a given section. The Spanish Patent Office offers subscription to its patents in microfiche, these being selected by several criteria (IPC, applicant, priority country, etc.). In contrast to companies, patent libraries and patent information services would be interested in building up a patent document collection, embracing all fields of technology, in order to supply photocopies of patent documents to local users. This is especially important when no other patent document supply centre is near. For a patent library or information service, scarcity of shelf space can be a serious problem. Although

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microforms partially solved the problem, the recent distribution of patent documents on CD-ROM represents a giant step forward, not only in reducing filing ease and speed of space, but also by increasing reproduction (saving a lot of work and personnel), as well as the quality of paper copies. One of the most exciting pieces of news in recent times in the world of patent information is the release of EPO ESPACEproducts: ESPACE-EP(EPA1, A2andA3 documents) and ESPACE- WO are a reality already. ESPACE-EP-B (EP granted patents), ESPACE-ES, ESPACE-DE, ESPACE-UK and ESPACE-AT and the corresponding ones for Benelux countries have been announced. A good feature of all these products is that they have in common the retrieval and printing software (Patsoft by Jouve). This software allows laser printing via a video interface card, making the printing rate of up to 15-20 pages per minute, an order of magnitude higher than that corresponding to standard laser printing of facsimile images. Print rate is of utmost importance for a service which makes patent copies on demand. Some more good news is that US patents on CD-ROM using Patsoft software have been announced for 1991. In our opinion, depending on its budgetary limits, a public patent library or patent information service should subscribe to some patent documents on CD-ROM and get a workstation suitable for fast reproduction. It is almost certain that the supply of patent copies will not be self-financing. Nevertheless such a service ought to be subsidised by public institutions, given the social benefits of patent information. Our recommended order of choice for subscription to patent documents parallels the above-mentioned one for CD-ROM databases, i.e. first the national patents of the respective country, then WO and EP, then US, etc. Special mention is deserved by the information product ESPACE-FIRST which, in 6 CD-ROMs per year, gives the first pages of all EP and PCT applications and their bibliographic data, at a low price. We think that this is a product with many information possibilities but which requires some imagination from the user. Although the retrieval possibilities of ESPACE-FZRSTare limited (abstracts are not searchable), the product can prove useful for current awareness. Reading the facsimile images on a standard VGA or EGA screen is difficult, but very good copies can be printed with a standard laser printer (at a low rate, but printing rate is not essential for a few pages or for personal use). An end-user with a set of several years of ESPACE-FIRST will have a private collection of patent documents (first pages) stored in an incredibly small space and at a very low price: a revolutionary new concept in patent information.

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Remark

A final message that summarises some of our comments is the following: If you can, search CD-ROM first. If you find what you are after, then the search is over. If you don’t, then search online, but benefiting from the experience you gained previously with the CD-ROM.

Appendix: Partial Contents of a Circular Used in Catalonia to Promote Patent Information Among Small and Medium Sized Enterprises As a manager, you need information on patents Q. BUI I have nothing to patent! A. Even if you don‘t carry any R&D, your industrial commercial activity may infringe a patent of somebody else.

or

soon as your product goes into the market. Besides. if you don’t patent and you keep your technology secret, others could patent it afterwards and limit or prevent you from using your own technology. Q. What should I patent? A. Only those inventions which, after an exhaustive patentability search, prove new and inventive enough to be the subject-matter of a strong patent. Previous information will save you work and money! Q. How should I patent? A. If your invention is important. it is worth writing the patent application through a gooi professional, recommend to you the most suitable procedure European or PCT). Q. What profit do I make from patenting? A. The monopoly rights conferred by the patent valuable, both to exploit the technology yourself and to transmit the ownership or to grant licenses.

(2) (3)

and

analysis

of patents

in force

in (4)

Q. What about operating without paying royalties? A. Very rarely a company can be run using only its own technology. In any case, patent information will tell you what constitutes public domain. either because there is no patent in the country or because the patent has lapsed. There is nothing wrong in imitating without infringement!

As an innovating manager, you’d better be informed first and your patent afterwards Q. Why do I have to patent? A. You don’t need to; but if you don’t patent, pass gratis and legally into the hands of your

your R&D competitors.

(5)

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(7) (8)

will as

and tiling who will (national.

may be very in exclusivity

References

(1)

Q. So what may happen to me.? A. The patentee can stop your activity through a preventing injunction, take evidence of infringement through a .srrisieconrrefagon and sue you asking for damages. Q. How could I avoid i/? A. Via a previous search the countries to operate.

and B. Zea

(Y)

U. Schmoch, Disclosure of patent information for small and medium sized enterprises. World Patent Informatiorl. 12. 1.58-164; 1990. J. L. Averdal. The Swedish Patent Office’s External Education Program. World Patmt I!lfcmnntio,z. 6. 101-103; 1984. E. Thornsen, Access to patent information and documentation in public patent libraries. World Patent Informutim, 3, lt&lOY; lY81; and references therein. R. D. Walker, Patents as a source of scientific and technical information in developing nations. World Patent Information, 10, S-10; 1988. M. W. Hill, A comparison of patent depository library resources in four countries. World Patent Itlformatio~l. IO. 1lb-1 19: lYX8. J. Delicado, The Spanish experience in the field of technological information. World Patent Informatiort. 10, 108-l 13; lY88. J. Stephenson, The use of patent information in industry. World Patent Information 4, 16+171; 1982. Y. V. Sipapin and A. P. Kolcsnikov, Patent cquivalcnts: problems of retrieval and patent family tracing in databases. World Patent Information, 11. 139-146; 1989. W. G. Vijvers, The International Patent Classification as a search tool. World Potent Ir7formation. 12. 2630; lY90.