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Establishing PCT search files in the Chinese patent office
W&d Parent Jnformarion, Vol. 18, No. 2, pp. 83-85, 1996 Copyright 0 1996 published by Elsevier Science Ltd Printed in Great Britain. All rights reserved. 0172-2190/96 815.00 + 0.00
Pergamon
PII:S0172-2190(%)00004-X
Establishing PCT Search Files in the Chinese Patent Office Cao Lingling, Deputy Director; Management Division for Examining Search Files, Patent Documentation Department, The Chinese Patent Ofice, Beijing, People’s Republic of China
which were arranged according to the list in the CAPRI system), and kept in the examiners’ rooms. English language abstracts of Japanese patent documents and non-patent literature were kept separately. These search files comprised: Compared to the PCT Minimum Documentation, the CPO still lacked the documents published by some countries between 1920 and 1974, and OAPI documents. It was very clear that our search files before 1994 had not covered the PCT Minimum Documentation and that we could not meet the needs of the international search using only the above-mentioned materials.
Summary On 1 January 1994, China acceded to the PCT; the Chinese Patent Office became a Receiving Office (RO) and, simultaneously, became an International Searching Authority and an International Preliminary Examining Authority (IPEA) appointed by the PCT Union. At the same time, Chinese became a working language of the PCT. By the end of September 1995, the CPO had received a total of 183 PCT applications. In order to set up the necessary search files in a very short time for the examiners performing the intemational search, the CPO took a new way of establishing the PCT search files according to the examiner’s needs. Copyright 0 1996 published by Elsevier Science Ltd.
Preparing search files according to the PCT The CPO has put a great deal of effort into obtaining the missing documents to ensure that the search files meet the PCT Minimum Documentation requirements. In 1993, with the full assistance of WIPO, the CPO obtained missing patent documents on paper or in microform through international channels. In all, about three million documents were collected comprising:
PCT Minimum Documentation According to the minimum requirements for an International Search Authority, under Rule 36 of the PCT Regulations, the national office or intergovernmental organisation must have in its possession, or have access to, at least the PCT Minimum Documention referred to in Rule 34, properly arranged for search purposes. This documentation may be in the form of paper, on microfilm, or stored on electronic media.
Search files in the CPO before 1994 Before 1994, the search files in the CPO were all classified according to the IPC (except US patents from 1940 to 1968
l
US documents from 1926 to 1967
l
GB documents from 1920 to 1939
l
DE documents from 1920 to 1939
l
CH documents from 1920 to 1940, and
l
FR documents from 1920 to 1939
Establishing search files ‘on demand’ CN unexamined patent application for invention, patent specification for utility model
1985 to present
US patent specifications, reissues, defensive publications and reexamination certificates
1940 to present
PCT applications
1978 to present
EPC applications
1978 to present
Denvent Abstracts of AT, AU, CA, CH, DE, JR GB and former SU
1975 to present
English language abstracts of JP documents published by the JPG
1977 to present
All non-patent literature announced in the PCT Gazette
1978 to present
Combining the knowledge of the CPO’s current state with a knowledge of the experiences of the Australian Patent, Trade Mark and Design Office, the Patent Department of the CPO proposed a new method for establishing PCT search files ‘on demand’. This meant the collection and sorting of documents from the numerical files stored in the Office and other sites according to the INVE (Inventory of European Search Files) using the ECLA (a version of the IPC used within the EPO), and setting up of PCT Minimum Documentation together with IPC search files. 83
84
Cao Lingling
This method of establishing the PCT search files means that not only can search files be produced very quickly, but it is very economical with regard to both labour and storage space. We think that it is veryefficient and effective.
ing to the IPC symbols he chose, and then fill in the form. 2.
Adapting the ECLA system of the EPO It is widely accepted in the patent world that the USPTO is not particularly good at assigning the IPC to its patent documents. Some patent offices, such as the EPO and the JPO, together with other organisations, find it necessary to reclassify US patent documents and to give them new IPC symbols. The CPO examiners believe that about 30-50% of the IPC symbols printed on US documents are incorrect. Additionally, they think that the EPO’s ECLA codes are more reliable and specific than the IPC symbols used by the USPTO. In order to ensure the quality of the PCT search, the CPO made the decision to adopt the ECLA system in supplementary search files. In addition, the CPO would build up a second set of US search files classified according to the INVE for the PCT international search (from 1975 onwards, this searching was done using CD-ROM according to the INVE).
Meanwhile, the examiner searches the IPC-based search files located in the examiner’s office and other relevant information provided by the Patent Documentation Department. 3.
To keep the PCT search working efficiently, the CPO deliberately set up PCT working procedures for the international search and international preliminary examination. The establishment of the PCT search files on demand was a very important part of the procedures for the international search. It was intended to make the CPO’s search files meet the requirements of the PCT Minimum Documentation as well as satisfying the needs of the PCT international search in both quality and quantity.
1.
These units copy the patent documents requested on the list and send them back within a very short time. 4.
At the same time, the examiner goes to the CD-ROM Section of the Patent Documentation Department to search US patent documents from 1975 onwards on CD-ROM. In the light of this search result, the examiner reconsiders the earlier search results obtained from the IPC search listed under point 2 above.
5.
The group for establishing the PCT search files on demand sorts the documents obtained from the holding units according to INVE, checks the classifications under ECLA, and arranges the documents to form the complete PCT search file on demand for this case. The documents are handed over to the examiner, normally within 28 days.
6.
The examiner completes the search by means of the supplementary search files and the earlier IPC search. The examiner fills in the search report and hands it
The examiners start the international search three months before the required completion time when they receive the PCT international application from the PCT Division within the CPO. The examiner allocates the IPC symbols (including the main classification, the subsidiary classification and the classifications in other technical fields) to the PCT international application and fills in a form called ‘procedure form for establishing PCT search files on demand’ and sends this form to the group responsible for the work in the Management Division for Examining Search Files in the Patent Documentation Department. This group asks the examiner to check the ECLA classification for those ECLA symbols correspond-
When the group receive the INVE from the EPO they (1) divide the numbers of the patent documents listed in the INVE according to their publication years and the place in which they are stored, (2) arrange the patent numbers under the various ECLA symbols in INVE into numerical order according to their storage place and (3) send these lists to the relevant units storing the documents. These units are: Science and Technology Institute of Chongqing in Si Chuan province. Science and Technology Institute of Sang Hai. Patent Documentation Library of the Patent Documentation Department of the CPO. Patent Document Depository of the CPO in the northern suburb of Beijing. Micro form Documents Section of the Patent Documentation Department of the CPO Depository of US patent documents from 1926 to 1974 in the Patent Documentation Library of the CPO.
Procedure for establishing PC’J’ search files on demand
The detailed procedure for establishing the PCT search files on demand is as follows:
The group then sends a fax with the IPC symbols to the EPO requesting the Inventory of European search files (INVE) associated with these symbols. After about 8-12 days, the Documentation Department of the EPO in the Hague kindly send the INVE back to the CPO by DHL.
Establishing PCT Search Files in the Chinese Patent Office over to the PCT Division of the CPO together with copies of the quoted documents within the stipulated time.
Conclusions For nearly two years, this practice has proved that the method for establishing the PCT search files on demand
85
to be highly effective. So far, the group of the Patent Documentation Department has finished the task of supplying 87,48 1 documents under 879 different IPC symbols for the 158 PCT international applications handled by the CPO. It guaranteed the availability of the PCT h4inimum Documentation and supported the international search activities of the CPO.
Pergamon
PII:S0172-2190(%)00004-X
Establishing PCT Search Files in the Chinese Patent Office Cao Lingling, Deputy Director; Management Division for Examining Search Files, Patent Documentation Department, The Chinese Patent Ofice, Beijing, People’s Republic of China
which were arranged according to the list in the CAPRI system), and kept in the examiners’ rooms. English language abstracts of Japanese patent documents and non-patent literature were kept separately. These search files comprised: Compared to the PCT Minimum Documentation, the CPO still lacked the documents published by some countries between 1920 and 1974, and OAPI documents. It was very clear that our search files before 1994 had not covered the PCT Minimum Documentation and that we could not meet the needs of the international search using only the above-mentioned materials.
Summary On 1 January 1994, China acceded to the PCT; the Chinese Patent Office became a Receiving Office (RO) and, simultaneously, became an International Searching Authority and an International Preliminary Examining Authority (IPEA) appointed by the PCT Union. At the same time, Chinese became a working language of the PCT. By the end of September 1995, the CPO had received a total of 183 PCT applications. In order to set up the necessary search files in a very short time for the examiners performing the intemational search, the CPO took a new way of establishing the PCT search files according to the examiner’s needs. Copyright 0 1996 published by Elsevier Science Ltd.
Preparing search files according to the PCT The CPO has put a great deal of effort into obtaining the missing documents to ensure that the search files meet the PCT Minimum Documentation requirements. In 1993, with the full assistance of WIPO, the CPO obtained missing patent documents on paper or in microform through international channels. In all, about three million documents were collected comprising:
PCT Minimum Documentation According to the minimum requirements for an International Search Authority, under Rule 36 of the PCT Regulations, the national office or intergovernmental organisation must have in its possession, or have access to, at least the PCT Minimum Documention referred to in Rule 34, properly arranged for search purposes. This documentation may be in the form of paper, on microfilm, or stored on electronic media.
Search files in the CPO before 1994 Before 1994, the search files in the CPO were all classified according to the IPC (except US patents from 1940 to 1968
l
US documents from 1926 to 1967
l
GB documents from 1920 to 1939
l
DE documents from 1920 to 1939
l
CH documents from 1920 to 1940, and
l
FR documents from 1920 to 1939
Establishing search files ‘on demand’ CN unexamined patent application for invention, patent specification for utility model
1985 to present
US patent specifications, reissues, defensive publications and reexamination certificates
1940 to present
PCT applications
1978 to present
EPC applications
1978 to present
Denvent Abstracts of AT, AU, CA, CH, DE, JR GB and former SU
1975 to present
English language abstracts of JP documents published by the JPG
1977 to present
All non-patent literature announced in the PCT Gazette
1978 to present
Combining the knowledge of the CPO’s current state with a knowledge of the experiences of the Australian Patent, Trade Mark and Design Office, the Patent Department of the CPO proposed a new method for establishing PCT search files ‘on demand’. This meant the collection and sorting of documents from the numerical files stored in the Office and other sites according to the INVE (Inventory of European Search Files) using the ECLA (a version of the IPC used within the EPO), and setting up of PCT Minimum Documentation together with IPC search files. 83
84
Cao Lingling
This method of establishing the PCT search files means that not only can search files be produced very quickly, but it is very economical with regard to both labour and storage space. We think that it is veryefficient and effective.
ing to the IPC symbols he chose, and then fill in the form. 2.
Adapting the ECLA system of the EPO It is widely accepted in the patent world that the USPTO is not particularly good at assigning the IPC to its patent documents. Some patent offices, such as the EPO and the JPO, together with other organisations, find it necessary to reclassify US patent documents and to give them new IPC symbols. The CPO examiners believe that about 30-50% of the IPC symbols printed on US documents are incorrect. Additionally, they think that the EPO’s ECLA codes are more reliable and specific than the IPC symbols used by the USPTO. In order to ensure the quality of the PCT search, the CPO made the decision to adopt the ECLA system in supplementary search files. In addition, the CPO would build up a second set of US search files classified according to the INVE for the PCT international search (from 1975 onwards, this searching was done using CD-ROM according to the INVE).
Meanwhile, the examiner searches the IPC-based search files located in the examiner’s office and other relevant information provided by the Patent Documentation Department. 3.
To keep the PCT search working efficiently, the CPO deliberately set up PCT working procedures for the international search and international preliminary examination. The establishment of the PCT search files on demand was a very important part of the procedures for the international search. It was intended to make the CPO’s search files meet the requirements of the PCT Minimum Documentation as well as satisfying the needs of the PCT international search in both quality and quantity.
1.
These units copy the patent documents requested on the list and send them back within a very short time. 4.
At the same time, the examiner goes to the CD-ROM Section of the Patent Documentation Department to search US patent documents from 1975 onwards on CD-ROM. In the light of this search result, the examiner reconsiders the earlier search results obtained from the IPC search listed under point 2 above.
5.
The group for establishing the PCT search files on demand sorts the documents obtained from the holding units according to INVE, checks the classifications under ECLA, and arranges the documents to form the complete PCT search file on demand for this case. The documents are handed over to the examiner, normally within 28 days.
6.
The examiner completes the search by means of the supplementary search files and the earlier IPC search. The examiner fills in the search report and hands it
The examiners start the international search three months before the required completion time when they receive the PCT international application from the PCT Division within the CPO. The examiner allocates the IPC symbols (including the main classification, the subsidiary classification and the classifications in other technical fields) to the PCT international application and fills in a form called ‘procedure form for establishing PCT search files on demand’ and sends this form to the group responsible for the work in the Management Division for Examining Search Files in the Patent Documentation Department. This group asks the examiner to check the ECLA classification for those ECLA symbols correspond-
When the group receive the INVE from the EPO they (1) divide the numbers of the patent documents listed in the INVE according to their publication years and the place in which they are stored, (2) arrange the patent numbers under the various ECLA symbols in INVE into numerical order according to their storage place and (3) send these lists to the relevant units storing the documents. These units are: Science and Technology Institute of Chongqing in Si Chuan province. Science and Technology Institute of Sang Hai. Patent Documentation Library of the Patent Documentation Department of the CPO. Patent Document Depository of the CPO in the northern suburb of Beijing. Micro form Documents Section of the Patent Documentation Department of the CPO Depository of US patent documents from 1926 to 1974 in the Patent Documentation Library of the CPO.
Procedure for establishing PC’J’ search files on demand
The detailed procedure for establishing the PCT search files on demand is as follows:
The group then sends a fax with the IPC symbols to the EPO requesting the Inventory of European search files (INVE) associated with these symbols. After about 8-12 days, the Documentation Department of the EPO in the Hague kindly send the INVE back to the CPO by DHL.
Establishing PCT Search Files in the Chinese Patent Office over to the PCT Division of the CPO together with copies of the quoted documents within the stipulated time.
Conclusions For nearly two years, this practice has proved that the method for establishing the PCT search files on demand
85
to be highly effective. So far, the group of the Patent Documentation Department has finished the task of supplying 87,48 1 documents under 879 different IPC symbols for the 158 PCT international applications handled by the CPO. It guaranteed the availability of the PCT h4inimum Documentation and supported the international search activities of the CPO.