Patent automation: The Canadian approach

Patent automation: The Canadian approach

World PNIPIII Irlformutiotl, Printed in Great Britain. Vol. 12. No. 3. pp. ISi-154, 0172-2190/90$3.00+.00. Maxwell Online Inc. CEUWIPO 1YYO. Pate...

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World PNIPIII Irlformutiotl, Printed in Great Britain.

Vol.

12. No. 3. pp. ISi-154,

0172-2190/90$3.00+.00. Maxwell Online Inc. CEUWIPO

1YYO.

Patent Automation: The Canadian Approach* Ray Taylor, Director, Automated Systems Branch, Intellectual Property Directorate, Hull, Quebec, Canada purely paper-based not suffice.

Summary The article describes the production of a IO-year plan for the automation of the Canadian Patent Office. Starting in 1986 the plan allotted 2 years to an operational planning stage, which determined the feasibility of patent automation and planned its implementation. The plan includes four phases over the years 1989-1996 covering an operational planning phase, a core system establishment phase for limited databases and workstations. enlargement of the core system to encompass all office internal systems, and finally establishment of the full system including arrangements for the wide dissemination of patent information throughout Canada. The system will include examiner search and support, workflow processing, backfile conversion, management support and dissemination of information.

1. Introduction

system over the long term would

In 1986, it was decided to adopt a lo-year plan that would enable certain long term Canadian objectives to be met. These were of two kinds: first, operational objectives that would allow the CPO to carry out its statutory obligations in the face of rising volumes and static or even reduced resources; and second, objectives having to do with the dissemination of patent information, viz. the stimulation of small and medium size businesses; the enhancement of trade, research, investment and technology transfer opportunities; and to provide more equitable access to patent information throughout the 5000 km breadth of Canada. Starting in April 1986, the IO-year plan was drawn up with the first 2 fiscal years (April 1986 - March 1988) being designated as an operational planning stage, to be followed by phased implementation and phased operational stages. Perhaps in contrast to some other patent offices, there was very little in the way of electronic data processing ‘legacy’ to accommodate or overcome. As well, there was a recognition that patent automation, because of its relative size, importance and complexity, should be treated as a discrete entity, apart from automation for trademarks, copyright and industrial designs. the functions for which the IPD also has responsibility.

and Background

The Canadian Patent Office (CPO) is part of the Intellectual Property Directorate (IPD) within the Department of Consumer and Corporate Affairs in the Federal Government of Canada, and is located in the National Capital Region near Ottawa, Ontario. The CPO had considered the need for applying data processing techniques to parts of its operations for many years, but not until about 1985 did it become evident that a fundamental change in approach was necessary: the need to consider its operations as a whole, rather than from a piecemeal perspective. The problems were familiar: the need to cope with a growing volume of applications and a growing paper file of issued patents; the difficulty of maintaining the quality of Canadian patents; and the difficulty of maintaining adequate service levels. As well, there was recognition that in order to make patent information widely available throughout Canada, a

Early in the planning process it became apparent that in view of the very large expenditures being contemplated internationally for patent automation, it was unlikely that the CPO could find the means to match similar endeavours. Moreover, there were several CPO requirements that were either unique or that required special consideration. These were: a bilingual (French and English) capability; a preponderance of foreign applications; the current practice of publishing patents in the same format as filed; a large dissemination component (and objective) with geographical constraints; and a Canadian system of classification which will eventually be phased out. All of these factors indicated the need for an automated solution that would suit Canadian circumstances while also being very mindful of international patent automation directions, practices and standards.

*Based on a presentation at the Fifth Session of the Executive Coordination Committee of the WIPO Permanent Committee on Industrial Property Information. Geneva 11-15 December 1989.

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2. The Operational Planning Stage (April 1986 - March 1988) The goal of the operational planning stage was to determine the feasibility of patent automation, and. if it were found to be feasible, to derive an implementation plan and a business case analysis. A small team was assembled to undertake the required studies, supplemented by external consultants. Some 16 tasks were identified as being essential to the determination of feasibility, of which the more important were: clarification of objectives; workflow analysis; market analysis; general requirements; technology assessment; and economic impact analysis. The outputs from these tasks were used in conjunction with the feasibility study itself to demonstrate the need for patent automation. It was found that the real requirements of the CPO’s internal operations could not for very much longer be sustained, that the level of service provided to the CPO’s clientele would be subject to decline, and that dissemination objectives could not be met, if continued reliance were to be placed on a purely paper-based system. Moreover, the plans of other patent offices suggested that within the lo-year planning timeframe, patent documents would likely be exchanged in electronic form, raising the spectre of having to convert foreign electronic documents to paper format in order to use them. While a variety of system architectures might suffice, it was found that most of the functionality required in the Canadian context could be obtained for an estimated investment of $65 million 1988 Canadian dollars. After receiving Preliminary Project Approval (approval in principle) from the Canadian central spending authority, the Treasury Board, in October 1988, much of the remainder of fiscal year 1988-1989 was spent revising the implementation plan in order to satisfy the Board’s requirement that there should be more of a phased approach, and if feasible, earlier benefits commensurate with expenditures. A revised plan of four phases was agreed to in June 1989.

3. Phase I - Requirements (June 1989 - May 1990)

Phase

The current phase seeks to confirm the direction and estimates established in the Operational Planning Phase, and to derive detailed functional specifications sufficient for inclusion in Requests for Proposals (RFPs) to be ready for competitive tender by June 1990. To meet this objective, a number of pilot and other studies are in progress. The first pilot study which has recently been completed concerns the search and retrieval of Canadian

patents, whereby the full text of scanned and OCR’d patents is searched to retrieve the image. The separate text and images of 1000 patents were provided to four different consortia on the basis of competitive bidding, with each consortium providing a relatively distinct solution to the problem. These included both centralized and distributed architectures, and different types of local area networks linked to a small number of workstations or terminals. The preliminary results indicate that the four different types of search software tested could be categorized as either very good or excellent. The retrieval of images, however, left much to be desired, with both performance timings and functionality below expectations. The second pilot study currently underway is concerned with workflow processing, or how both electronic and paper documents may be automatically routed and monitored through the complete processing cycle, and how correspondence and notices may be generated by the automated system. Again, four suppliers were chosen on the basis of competitive bidding, with each supplier demonstrating a variation of a workflow processing package, generally modified to suit the documentation requirements of the CPO. Each supplier was provided with the complete files of 10 issued patents and was expected to simulate the progress of the patents throughout the processing cycle. As well, an eleventh file was taken to the site at demonstration time to be fed into the results of the demonstrations process. Preliminary show moderate to very good capabilities available for these functions. A third pilot study concerns backfile conversion. Contracts have been awarded to two companies to undertake the conversion of a representative sample of 1000 Canadian patents to text and image format. The objectives are to simulate production conditions, and to determine appropriate production procedures and probable production costs. The steps involved are scanning, indexing, OCRing, editing, compressing and storing on WORM media. The costs involved in certain elements and in the total conversion process will be determinants in the projected scope of backfile conversion. A fourth pilot is an internal study with respect to application conversion. Here, experiments are underway to test patent applications in mixed mode or integrated text and image processing. The evidence before the CPO suggests that in the long term this may well prove to be the preferred approach because of the large savings in data storage and transmission, and its usefulness for publication. However, it is also apparent that this may not be supported commercially, on a production scale basis, for perhaps another year or two. Consequently, a fallback position, based on separate text and image files, is a requirement.

Patent Automation

The CPO believes that these pilot studies will prove to be well worth the effort and modest expenditures devoted to them. First, they have provided the automation team with education and experience as to the practical state of the art with a variety of suppliers using actual Canadian documentation. Second, there is now a much greater understanding on the part of several potential vendors as to the CPO’s probable automation needs such that when the CPO is ready to go to tender, the responses will be more plentiful and meaningful. Third, the CPO has become aware of some of the strengths and weaknesses of suppliers’ assigned personnel, so that in one sense the evaluation of future potential partners in the project has already begun. Fourth, they have enabled the conclusion to be drawn that text/image retrieval systems of suitable scale are not currently available off the shelf, but the necessary components are available for systems integration. Finally, they will assist materially in their objective of providing meaningful input to realistic, detailed functional specifications. The other studies in the current phase include a review of submission standards for paper-based applications; the specification of quality assurance and acceptance procedures for inclusion in RFPs; a review of document lifecycle management and evidentiary requirements in conjunction with the National Archives of Canada, covering both paper and electronic documents; and a study in conjunction with the procurement department of the Canadian Government as to the appropriate contracting strategy to adopt. The outputs of these studies will also, as appropriate, feed into the detailed functional specifications, the RFPs, and a new Treasury Board submission seeking Effective Project Approval (EPA) by the end of May 1990.

4. Phase II - Core System (August 1990 - September 1991) Assuming the receipt of EPA about mid-1990, the CPO plans to procede with the benchmarking, selection and procurement of a core system at that time. By core system, the CPO has in mind a module or modules of the required final system, having the capability of most of the necessary functionality, but with restricted databases and very limited quantities of workstations. terminals and other peripherals. The prime objectives of this phase will be to develop and test the bibliographic database for all Canadian patent holdings; the search and retrieval facility; and the case management system. As well, the backfile and applications conversion process will be started. The completion of Phase II is planned for September, 1991, at which point a project pause is scheduled to determine if the objectives have been achieved,

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and what changes to the project plan are necessary before Phase II can be signed off, and the next phase commenced.

Phase III - CPO Operations (January 1992 - March 1994)

5.

The objective of Phase III is to extend the core system to encompass the CPO’s internal operations. This will entail the construction, deployment and testing of the complete databases; the addition of required workstations and terminals, together with a comprehensive training programme; the development, testing and implementation of new and improved Canadian patent publications; and the extension of the case management system into a production processing system. Phase III is scheduled to start in January 1992, and is expected to take 2 years to complete. At that point, the system will again be measured against objectives, and in particular, against appropriate quality and security measures. Assuming these are met, the stage is then set for what promises to be the final phase commencing in April 1994.

6. Phase IV - Full External System (April 1994 - December 1996) The objective of Phase IV, the final phase of development, is to accomplish the long term goals mentioned at the beginning of this paper having to do with the dissemination of patent information, whereas previous phases have more to do with the ability of the CPO to carry out its statutory obligations. In the CPO’s view, it is probably not possible and certainly unwise to attempt to leapfrog the internal development phases in order to achieve the objectives of Phase IV. This is not to suggest that benefits from the automated system in terms of dissemination cannot be achieved - the area of improved publications is an example - but rather that logically, internal development must precede external access. The specific objectives under Phase IV are to integrate foreign automated information into the system, either through local storage or through authorized direct access, as may be appropriate; to develop, test and implement access to laid-open applications and issued patents by the patent profession in Canada; and to develop, test and implement general user access to the same data. In the latter instance, it is envisaged that at least some access will take place in conjunction with certain patent examiners acting as expert interfaces, and all external access will be available via five or six regional nodes across Canada. At the end of this phase, a post-completion audit will review the entire system to determine its

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degree of success, and whether further development is required.

7. System Description The system that will meet the CPO’s requirements can be described at this point only in terms of what its major components are meant to do. The market is expected to respond to the CPO’s detailed functional specifications in a variety of ways, and it will become a question of evaluating and benchmarking before the appropriate system can be selected. Seven major system components are foreseen. The first, and at the heart of the system, is Examiner Search and Support which is concerned with the identification, location and display of prior art using internal and external databases. The second is Workflow (Applications) Processing which is concerned with the control of applications processing, their initial capture or conversion, their routing, related correspondence and standard forms up to time of issue or denial. Backfile Conversion is the third and temporary component, and concerns the conversion of issued patents generally since 1978. It will meet up with captured applications. The fourth component is dissemination, and it covers access by the patent profession and the public, the publication of the Patent Office Record and other publications, access to patent documents through the public search room, and profiles for Technical Information Searches (TIS). The Archive, consisting of some 1.1 million Canadian patents, is the fifth component, and is concerned with long term storage scheduling, access from and transfer to secondary media, and management of and retrieval from deep archives. The sixth component is data import/export, and covers the integration of, or access to, external data, and the creation of Canadian data for INPADOC and other offices. The final component, Management Support, is concerned with quality assurance control, statistical reporting and productivity analysis.

From the perspective of data holdings. the system is expected to encompass the following: a bibliographic database. covering some 1.3 million Canadian patents plus cross-references. online; a database of in-force patents and pending applications amounting to some 200 000 Canadian documents. online; an archive consisting of electronic. microfilm and paper holdings, amounting to some 1.1 million Canadian patents, near-line and off-line; and foreign data holdings, largely paper. but with anticipated electronic holdings and/or direct external access. As noted previously, the preferred data format over the long term is mixed mode or integrated text and image. However. the development of the system is not predicated on this mode, and immediate plans will assume separate text and image files until the mixed mode can be demonstrated in a production-type setting to the CPO’s satisfaction. Searching is expected to be undertaken on the basis of the Canadian Classification System, the IPC and full-text. The CPO has left open the questions of a centralized versus distributed system and centralized versus distributed databases, at least until the detailed functional specifications are drawn up and reviewed.

The CPO might summarize the Canadian approach to patent automation as follows. It is a project of moderate scale with modest or low risk. It does not attempt to include solutions that rely on research and development efforts, but it does attempt to be at the leading edge of production solutions. The project embodies a vision of where the CPO wishes to be in terms of patent automation in the years ahead, but it recognizes at the same time the need for flexibility within the plan should circumstances dictate the need for changes in direction. The CPO recognizes the pioneering efforts of other patent offices, and it hopes to make its own contribution to this very worthwhile endeavour.