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Experiences with utility model protection in Germany
World Patent Information, Vol. 18, No. 3, pp. 171-178, 1996
Pergamon PII:SO172-2190(96)00033-6
Literature Review Many of these abstracts have been prepared by the Editor-from a list of recent publications kindlyprovided by the Science Reference and Informution Service of the British Library. The other abstracts were provided by WIPO.
Experiences with Utility Model Protection in Germany, C.-P. Brandt, Hrvatski Patentui Gkzsnik, 2(4), 829-838,
August 1995. In Germany, the utility model has already proved so far its practical efficiency. By providing access for all technical inventions to utility model protection, operative as from July 1,1990, and by the grant of a reasonable term of protection of 10 years, the importance of the utility model as a quickly obtainable, low-cost and full protective right will grow considerably. The article discusses the requirements of protection, the registration procedure, as well as the advantages and disadvantages of utility model protection in Germany. Software Patents - Relative Comparison of EPO/USFI’O/JPO Software Searching Capabilities, G. Aharonian, Intellectual Property Rights and New Technologies. Proceedings of the Knowright ‘95 Conference, Oldenbourg,
pp. 182-187, 1995. Patent offices are having problems dealing with software patents, in particular, software prior art. The 1994 annual report of the European Patent Office, in their introductory essay, discusses the difficulties of dealing with software patents. As the majority of software patents are handled by either the United States Patent and Trademark Office (USPTO), European Patent Office (EPO) and Japanese Patent Office (JPO), analysing their abilities to handle software prior art provides a good assessment of such practices around the world. To compare the three Patent Offices, the present author gathered a sample of 250 Patent Cooperation Treaty (PCT) applications dealing with software patents published in 1994, based on patents filed in America, Europe and Japan in late 1992. PCT applications allow you to preserve your US tiling date when applying for patents in other countries. For the 250 PCT software applications, PCT searchers on the average found 1.2 non-patent software prior art references and 4.0 patent software prior art references (comparable to US front page
prior art citations). One hundred and ten of the searches were done by the EPO, 88 by the USPTO, and the rest by the Japanese, Swedish and Australian Patent Offices (whose averages were similar to the EPO and USPTO). For the EPO, EPO searchers found an average of 2.0 non-patent software prior art references and 3.0 patent software prior art references, while the USPTO searchers found an average of 0.66 non-patent software prior art references and 5.4 patent software prior art references. Compared to the many dozens of prior art references that should have been found, there are no appreciable differences between the EPO and the USPTO when it comes to software prior art searching capabilities. Computer Storage and Retrieval of Generic Chemical Structures in Patents, J. D. Holliday, M. F. Lynch, J. Chem Inf Comput. Sci. (USA) 35(4), 659-662, July-August 1995. Results are presented for the atom-level search, called the refined search, for matching components of generic chemical structures. The refined search is the last and most discriminating search strategy used by the Sheffield Generic Structures System and is performed after the faster screening stages, bit screening, and reduced graph screening. It operates on the real atom representations of components of the genetic structure which are defined by reduced graph nodes, nodes which represent aggregates of atoms of the original chemical graph which ate structurally similar. The nature of generic structures means that parts of a structure may be expressed in terms of real atoms and bonds and parts in terms of homologous series identifiers such as alkyl. The fundamental problem concerning the refined search is determining equivalencies between these two types of representation. Search results are presented for four query database searches against one file database. The methodology and results of the screening searches are also briefly described. Guiding Your Literature Searching, R. Cain, K. Schwall, Chemtech 25(8), 8-11, August 1995. Involvement of the user community led to the development of SciFinder, Chemical Abstracts Service’s graphical user interface. It allows subscribers to do complicated searches of the chemical literature easily. Online Statistical Techniques as Patent Search Tools. 2. Patent Classifications, N. Lambert, Database (USA) 19(2), Online Inc., 67-68,70,72-73, April-May 1996. In
177
Elsevier Science Ltd Printed in Great Britain
the previous paper, the use of online patent
statistics tools to manipulate patent indexing and patent citations as search aids to help formulate subject searches was described. In the present paper, the usage of the US Patent Classification and Intemational Patent Classification (IPC) is discussed. Patent classifications are subject descriptor codes that examiners at national patent offices apply as part of the patent examination and search process. They can be important search tools. Patenting gene sequences, D. Sheiness, Patent & Trade Mark Office Sot. J. 78(2), 121-137, 1996. Analyses of the scope of
claims found in a selection of issued patents found using Lexis. The primary group analysed each included claims to segments of DNA containing information sufficient to encode a functional protein or protein domain. The desire to use cloned genes for commercial purposes provides an impetus to patent them and to write claims which encompass all variants of the gene that contain essentially the same sequence. Divide the patents into four categories based on the breadth of the claim. (1) Includes only nucleotide sequence identical with sequences depicted in the specification or the claim itself. (2) Covers all nucleotide sequences encoding a disclosed amino acid sequence - this encompasses variants based on the tedundancy in the genetic code and offers protection against exploitation of allelic variants differing only in codon usage, etc. (3) Covers DNA sequences that encode a protein described by name, physical description or in terms of its biological function. This covers genes encoding proteins that are not necessarily identical to the ones specified in disclosure and (4) covers DNA sequences that may differ substantially from sequences actually described in the specification and that may not encode the same protein. Could even include DNA sequences not capable of encoding any amino acids. Found about half the claims were at least as broad as type (3). Report on Search Comparison: UK, Europe and USA, D. Haselden, CIPA 26(4), 250-261, 1996. Sample of 100 patent families comprising GB, EP and US documents analysed to asses the quality of the respective search in terms of relevance of citation and to identify relevant documents found by one or two offices but not by all three search authorities. Wide spread of UK searches from late 1991 to early 1994. Comparison of UK and EPO against USFTO not truly valid since USPTO often had benefit of earlier
Pergamon PII:SO172-2190(96)00033-6
Literature Review Many of these abstracts have been prepared by the Editor-from a list of recent publications kindlyprovided by the Science Reference and Informution Service of the British Library. The other abstracts were provided by WIPO.
Experiences with Utility Model Protection in Germany, C.-P. Brandt, Hrvatski Patentui Gkzsnik, 2(4), 829-838,
August 1995. In Germany, the utility model has already proved so far its practical efficiency. By providing access for all technical inventions to utility model protection, operative as from July 1,1990, and by the grant of a reasonable term of protection of 10 years, the importance of the utility model as a quickly obtainable, low-cost and full protective right will grow considerably. The article discusses the requirements of protection, the registration procedure, as well as the advantages and disadvantages of utility model protection in Germany. Software Patents - Relative Comparison of EPO/USFI’O/JPO Software Searching Capabilities, G. Aharonian, Intellectual Property Rights and New Technologies. Proceedings of the Knowright ‘95 Conference, Oldenbourg,
pp. 182-187, 1995. Patent offices are having problems dealing with software patents, in particular, software prior art. The 1994 annual report of the European Patent Office, in their introductory essay, discusses the difficulties of dealing with software patents. As the majority of software patents are handled by either the United States Patent and Trademark Office (USPTO), European Patent Office (EPO) and Japanese Patent Office (JPO), analysing their abilities to handle software prior art provides a good assessment of such practices around the world. To compare the three Patent Offices, the present author gathered a sample of 250 Patent Cooperation Treaty (PCT) applications dealing with software patents published in 1994, based on patents filed in America, Europe and Japan in late 1992. PCT applications allow you to preserve your US tiling date when applying for patents in other countries. For the 250 PCT software applications, PCT searchers on the average found 1.2 non-patent software prior art references and 4.0 patent software prior art references (comparable to US front page
prior art citations). One hundred and ten of the searches were done by the EPO, 88 by the USPTO, and the rest by the Japanese, Swedish and Australian Patent Offices (whose averages were similar to the EPO and USPTO). For the EPO, EPO searchers found an average of 2.0 non-patent software prior art references and 3.0 patent software prior art references, while the USPTO searchers found an average of 0.66 non-patent software prior art references and 5.4 patent software prior art references. Compared to the many dozens of prior art references that should have been found, there are no appreciable differences between the EPO and the USPTO when it comes to software prior art searching capabilities. Computer Storage and Retrieval of Generic Chemical Structures in Patents, J. D. Holliday, M. F. Lynch, J. Chem Inf Comput. Sci. (USA) 35(4), 659-662, July-August 1995. Results are presented for the atom-level search, called the refined search, for matching components of generic chemical structures. The refined search is the last and most discriminating search strategy used by the Sheffield Generic Structures System and is performed after the faster screening stages, bit screening, and reduced graph screening. It operates on the real atom representations of components of the genetic structure which are defined by reduced graph nodes, nodes which represent aggregates of atoms of the original chemical graph which ate structurally similar. The nature of generic structures means that parts of a structure may be expressed in terms of real atoms and bonds and parts in terms of homologous series identifiers such as alkyl. The fundamental problem concerning the refined search is determining equivalencies between these two types of representation. Search results are presented for four query database searches against one file database. The methodology and results of the screening searches are also briefly described. Guiding Your Literature Searching, R. Cain, K. Schwall, Chemtech 25(8), 8-11, August 1995. Involvement of the user community led to the development of SciFinder, Chemical Abstracts Service’s graphical user interface. It allows subscribers to do complicated searches of the chemical literature easily. Online Statistical Techniques as Patent Search Tools. 2. Patent Classifications, N. Lambert, Database (USA) 19(2), Online Inc., 67-68,70,72-73, April-May 1996. In
177
Elsevier Science Ltd Printed in Great Britain
the previous paper, the use of online patent
statistics tools to manipulate patent indexing and patent citations as search aids to help formulate subject searches was described. In the present paper, the usage of the US Patent Classification and Intemational Patent Classification (IPC) is discussed. Patent classifications are subject descriptor codes that examiners at national patent offices apply as part of the patent examination and search process. They can be important search tools. Patenting gene sequences, D. Sheiness, Patent & Trade Mark Office Sot. J. 78(2), 121-137, 1996. Analyses of the scope of
claims found in a selection of issued patents found using Lexis. The primary group analysed each included claims to segments of DNA containing information sufficient to encode a functional protein or protein domain. The desire to use cloned genes for commercial purposes provides an impetus to patent them and to write claims which encompass all variants of the gene that contain essentially the same sequence. Divide the patents into four categories based on the breadth of the claim. (1) Includes only nucleotide sequence identical with sequences depicted in the specification or the claim itself. (2) Covers all nucleotide sequences encoding a disclosed amino acid sequence - this encompasses variants based on the tedundancy in the genetic code and offers protection against exploitation of allelic variants differing only in codon usage, etc. (3) Covers DNA sequences that encode a protein described by name, physical description or in terms of its biological function. This covers genes encoding proteins that are not necessarily identical to the ones specified in disclosure and (4) covers DNA sequences that may differ substantially from sequences actually described in the specification and that may not encode the same protein. Could even include DNA sequences not capable of encoding any amino acids. Found about half the claims were at least as broad as type (3). Report on Search Comparison: UK, Europe and USA, D. Haselden, CIPA 26(4), 250-261, 1996. Sample of 100 patent families comprising GB, EP and US documents analysed to asses the quality of the respective search in terms of relevance of citation and to identify relevant documents found by one or two offices but not by all three search authorities. Wide spread of UK searches from late 1991 to early 1994. Comparison of UK and EPO against USFTO not truly valid since USPTO often had benefit of earlier