- Email: [email protected]
Search Matters 2014, EPO, The Hague, The Netherlands, April 2014
World Patent Information 39 (2014) 89e90
Contents lists available at ScienceDirect
World Patent Information journal homepage: www.elsevier.com/locate/worpatin
Search Matters 2014, EPO, The Hague, The Netherlands, April 2014 Jane List* Extract Information Ltd, Cambridgeshire, England, UK
a r t i c l e i n f o Article history: Available online 18 October 2014
Search Matters is an annual two day seminar organised by the European Patent Office. This year it was located at the EPO office in The Hague, but from 2015 it will alternate between The Hague and Munich. Originally entitled the Seminar on Search and Documentation Working Methods, and now in its 26th year, Search Matters, clearly still has search very much at its centre [1e4]. The Seminar provides a valuable learning opportunity for all those engaged with searching, filing, prosecuting, and opposing patents; and uniquely provides attendees with an opportunity to learn more about the EPO's approach to search, useful knowledge for anyone who is proposing to file a European Patent. If search is at the heart of the seminar, the claims are at the heart of the patent specification, and attendees discovered exactly how the wording of the claims, in defining the scope, influences the outcome of the search, and therefore the likelihood of the patent application to be found inventive, novel, or lacking in unity by the examiner [5]. To get the most out of the seminar, attendees should have some experience of patents, patent searching, and patent documentation. There are nonetheless learnings for all from relative newcomers to more experienced patent searchers, IP Analysts and Engineers working in industry. (I attended my first event in 1999!) Search Matters should certainly be considered as an event with much to offer any patent searcher certification training programme, and also for Continuing Professional Development (CPD), with 26 workshops on offer there is enough scope to adapt the two days to best meet individual training needs. 1. Welcome speech Guillaume Minnoye, VP DG-1 Operations, welcomed participants and set the scene by giving an overview of the EPO (European Patent Office) and the EPC (European Patent Convention), which
* Tel.: þ44 1763 853029. E-mail address: [email protected]. http://dx.doi.org/10.1016/j.wpi.2014.08.002 0172-2190/© 2014 Published by Elsevier Ltd.
has 38 member states. At the EPO DG-1 oversees Search, Examination and First Instance Opposition; and in 2013 it handled 265,690 patent filings (an increase of 2.8%). Each patent application is examined by three examiners taking different roles, focussing on search, examination protocol and overall review. In 2013 77% of EP patent applications originated from PCT filings. The top five countries filing at the EPO are currently US, Japan, Germany, China, and Korea, only one of the top five - Germany e is also a member of the EPC. Guillaume Minnoye also emphasised the continuing importance of quality at the EPO, in terms of classification, examination timeliness and search. The EPO has plans to become ISO9001 certified by the end of 2014. The EPO's initiatives of primary interest to patent search were introduced, and the topics were followed up later in the Workshops. The Cooperative Patent Classification (CPC) is now fully operational at the US and EPO offices. More offices are in training, which should increase the use of the CPC as a tool for searching. The online CPC look up facility is available through espacenet.
2. Plenary and keynote speeches The Plenary sessions provided a useful update on the latest features of the EPO's publically available search, analysis and legal status tools e namely espacenet www.espacenet.com, the European Patent Register (http://www.epo.org/searching/free/register. html), and The Common Citation Document web application (http://ccd.fiveipoffices.org/CCD-2.0.4/). We also learnt how the EPO is ensuring its search is truly global, by continually improving access to and awareness of, Asian language patents and literature, so that examiners can confidently cite this art. Access to Asian literature varies, but where machine readable text in the original language is available then examiners will have access to machine translations, with options to obtain human assisted machine translation, and ultimately full translation of documents when required. The EPO is also establishing teams who act as centres of excellence within each technological field, and who take responsibility for increasing knowledge within the EPO on Asian documentation needed in their field. This is in addition to the East Asian help desk which provides assistance to the public on understanding Asian documentation. The keynote speaker Steven van Dulken, who retired from the British Library last year, presented a most informative talk on some
90
J. List / World Patent Information 39 (2014) 89e90
of the potential pitfalls in searching using the English language. Steve focussed his talk on the peculiarities of American vs/British English, a concern not immediately obvious to the non-native speaker, and of the participants at Search Matters, less than 5% were native English speakers. This topic was therefore of great interest. (Editor's Note: multiple versions of English exist, and are increasing wherever a large number of non-native speakers are conversing in English; machine translations are another version of the English language, and considering these in search will be needed). Another highlight for me was Giuseppe Fiorani's talk entitled Notorious knowledge: when it is known that it is known. Giuseppe reviewed the cases developed by the boards of appeal where knowledge was found to be so obvious it cannot be disputed, and no search may even be necessary. This happens most frequently in business methods and software patents where the claims are of a very broad nature. 3. Workshops Most of the time is spent in Workshops, which provide the chance to have a deep dive into a particular aspect of search and examination, in a chosen technical field, or learn more about search reports or other procedural matters. Primary points made in the plenary were covered in more detail during workshops, using examples from different technical fields. Best practice to formulate a strong patentability involved: planning the search by isolating all of the concepts in each claim. refining the search according to documents found (or not found). thinking laterally to extend concepts and re-define problem/ solution/and keep questioning and refining. (i.e. look in neighbouring technical fields). None of which is new to readers of World Patent Information I am sure. The major key difference between industry and patent office searching is that in industry the search tends to be carried out prior to the formulation of any claims, and is based upon knowledge of the invention. At the patent office the examiner must work purely from what is written, starting with what is claimed. 4. Suggestions for future Search Matters The seminar was an excellent learning opportunity, so these are just small points, which may assist the participants to gain even
more benefit from the two days, to improve the quality of their prior art searching. The search and analysis techniques showcased naturally are based on those tools which are available to examiners at the EPO. These are not always open to use outside of the patent office, so it would be helpful if this could be indicated. This way participants would know what they can ‘ try at home’. In a similar vein, could practical search and analysis be facilitated during appropriate workshops? Hands on experience always helps make the message clearer, and improves understanding.
5. Conclusion A worthwhile event for anyone needing to search patents for a living, the seminar provides the opportunity to ‘ see inside the mind of an EPO examiner’, as Philippe Lahorte put it in his plenary presentation. World Patent Information is hoping to publish some of the material presented during the seminar as full articles in due course. You can also find the lectures in the e-learning area on the EPO website: http://e-courses.epo.org/wbts/sm2014_en/index. html, and for a more informal view some images are available on the EPO's facebook page (https://www.facebook.com/media/ set/?set¼a.637615639646375.1073741841.436896529718288&typ e¼3. I would like to finish by thanking Rita Bazzanini, her DG1 team and the European Patent Academy team for the excellent programme, organisation and smooth running of the event. And finally give readers advance notice that although the seminar has so far always taken place in The Hague, in Spring 2015 the seminar will be held at the EPO's office in Munich. This is where the European Patent Academy has its base, and I believe the plan is to alternate between the two locations, and I look forward to attending a future Search Matters.
References [1] Search Matters 2013, The Hague, The Netherlands, March 2013, Michael Blackman. World Patent Information 2013;35(3):245e7. [2] Search Matters 2011, The Hague, The Netherlands, March 2011, Michael Blackman. World Patent Information 2011;33(3):289e91. [3] Search Matters 2010, The Hague, The Netherlands, April 2010, Georg Steinke. World Patent Information 2010;32(4):347e8. [4] Search Matters 2008: Seminar on Search and Documentation Working Methods,The Hague, 7 and 8 April 2008, David Newton. World Patent Information 2008;30(4):346e7. [5] The European patent office ‘Raising the bar’ initiative, John Beatty. World Patent Information 2011;33(4):355e9.
Contents lists available at ScienceDirect
World Patent Information journal homepage: www.elsevier.com/locate/worpatin
Search Matters 2014, EPO, The Hague, The Netherlands, April 2014 Jane List* Extract Information Ltd, Cambridgeshire, England, UK
a r t i c l e i n f o Article history: Available online 18 October 2014
Search Matters is an annual two day seminar organised by the European Patent Office. This year it was located at the EPO office in The Hague, but from 2015 it will alternate between The Hague and Munich. Originally entitled the Seminar on Search and Documentation Working Methods, and now in its 26th year, Search Matters, clearly still has search very much at its centre [1e4]. The Seminar provides a valuable learning opportunity for all those engaged with searching, filing, prosecuting, and opposing patents; and uniquely provides attendees with an opportunity to learn more about the EPO's approach to search, useful knowledge for anyone who is proposing to file a European Patent. If search is at the heart of the seminar, the claims are at the heart of the patent specification, and attendees discovered exactly how the wording of the claims, in defining the scope, influences the outcome of the search, and therefore the likelihood of the patent application to be found inventive, novel, or lacking in unity by the examiner [5]. To get the most out of the seminar, attendees should have some experience of patents, patent searching, and patent documentation. There are nonetheless learnings for all from relative newcomers to more experienced patent searchers, IP Analysts and Engineers working in industry. (I attended my first event in 1999!) Search Matters should certainly be considered as an event with much to offer any patent searcher certification training programme, and also for Continuing Professional Development (CPD), with 26 workshops on offer there is enough scope to adapt the two days to best meet individual training needs. 1. Welcome speech Guillaume Minnoye, VP DG-1 Operations, welcomed participants and set the scene by giving an overview of the EPO (European Patent Office) and the EPC (European Patent Convention), which
* Tel.: þ44 1763 853029. E-mail address: [email protected]. http://dx.doi.org/10.1016/j.wpi.2014.08.002 0172-2190/© 2014 Published by Elsevier Ltd.
has 38 member states. At the EPO DG-1 oversees Search, Examination and First Instance Opposition; and in 2013 it handled 265,690 patent filings (an increase of 2.8%). Each patent application is examined by three examiners taking different roles, focussing on search, examination protocol and overall review. In 2013 77% of EP patent applications originated from PCT filings. The top five countries filing at the EPO are currently US, Japan, Germany, China, and Korea, only one of the top five - Germany e is also a member of the EPC. Guillaume Minnoye also emphasised the continuing importance of quality at the EPO, in terms of classification, examination timeliness and search. The EPO has plans to become ISO9001 certified by the end of 2014. The EPO's initiatives of primary interest to patent search were introduced, and the topics were followed up later in the Workshops. The Cooperative Patent Classification (CPC) is now fully operational at the US and EPO offices. More offices are in training, which should increase the use of the CPC as a tool for searching. The online CPC look up facility is available through espacenet.
2. Plenary and keynote speeches The Plenary sessions provided a useful update on the latest features of the EPO's publically available search, analysis and legal status tools e namely espacenet www.espacenet.com, the European Patent Register (http://www.epo.org/searching/free/register. html), and The Common Citation Document web application (http://ccd.fiveipoffices.org/CCD-2.0.4/). We also learnt how the EPO is ensuring its search is truly global, by continually improving access to and awareness of, Asian language patents and literature, so that examiners can confidently cite this art. Access to Asian literature varies, but where machine readable text in the original language is available then examiners will have access to machine translations, with options to obtain human assisted machine translation, and ultimately full translation of documents when required. The EPO is also establishing teams who act as centres of excellence within each technological field, and who take responsibility for increasing knowledge within the EPO on Asian documentation needed in their field. This is in addition to the East Asian help desk which provides assistance to the public on understanding Asian documentation. The keynote speaker Steven van Dulken, who retired from the British Library last year, presented a most informative talk on some
90
J. List / World Patent Information 39 (2014) 89e90
of the potential pitfalls in searching using the English language. Steve focussed his talk on the peculiarities of American vs/British English, a concern not immediately obvious to the non-native speaker, and of the participants at Search Matters, less than 5% were native English speakers. This topic was therefore of great interest. (Editor's Note: multiple versions of English exist, and are increasing wherever a large number of non-native speakers are conversing in English; machine translations are another version of the English language, and considering these in search will be needed). Another highlight for me was Giuseppe Fiorani's talk entitled Notorious knowledge: when it is known that it is known. Giuseppe reviewed the cases developed by the boards of appeal where knowledge was found to be so obvious it cannot be disputed, and no search may even be necessary. This happens most frequently in business methods and software patents where the claims are of a very broad nature. 3. Workshops Most of the time is spent in Workshops, which provide the chance to have a deep dive into a particular aspect of search and examination, in a chosen technical field, or learn more about search reports or other procedural matters. Primary points made in the plenary were covered in more detail during workshops, using examples from different technical fields. Best practice to formulate a strong patentability involved: planning the search by isolating all of the concepts in each claim. refining the search according to documents found (or not found). thinking laterally to extend concepts and re-define problem/ solution/and keep questioning and refining. (i.e. look in neighbouring technical fields). None of which is new to readers of World Patent Information I am sure. The major key difference between industry and patent office searching is that in industry the search tends to be carried out prior to the formulation of any claims, and is based upon knowledge of the invention. At the patent office the examiner must work purely from what is written, starting with what is claimed. 4. Suggestions for future Search Matters The seminar was an excellent learning opportunity, so these are just small points, which may assist the participants to gain even
more benefit from the two days, to improve the quality of their prior art searching. The search and analysis techniques showcased naturally are based on those tools which are available to examiners at the EPO. These are not always open to use outside of the patent office, so it would be helpful if this could be indicated. This way participants would know what they can ‘ try at home’. In a similar vein, could practical search and analysis be facilitated during appropriate workshops? Hands on experience always helps make the message clearer, and improves understanding.
5. Conclusion A worthwhile event for anyone needing to search patents for a living, the seminar provides the opportunity to ‘ see inside the mind of an EPO examiner’, as Philippe Lahorte put it in his plenary presentation. World Patent Information is hoping to publish some of the material presented during the seminar as full articles in due course. You can also find the lectures in the e-learning area on the EPO website: http://e-courses.epo.org/wbts/sm2014_en/index. html, and for a more informal view some images are available on the EPO's facebook page (https://www.facebook.com/media/ set/?set¼a.637615639646375.1073741841.436896529718288&typ e¼3. I would like to finish by thanking Rita Bazzanini, her DG1 team and the European Patent Academy team for the excellent programme, organisation and smooth running of the event. And finally give readers advance notice that although the seminar has so far always taken place in The Hague, in Spring 2015 the seminar will be held at the EPO's office in Munich. This is where the European Patent Academy has its base, and I believe the plan is to alternate between the two locations, and I look forward to attending a future Search Matters.
References [1] Search Matters 2013, The Hague, The Netherlands, March 2013, Michael Blackman. World Patent Information 2013;35(3):245e7. [2] Search Matters 2011, The Hague, The Netherlands, March 2011, Michael Blackman. World Patent Information 2011;33(3):289e91. [3] Search Matters 2010, The Hague, The Netherlands, April 2010, Georg Steinke. World Patent Information 2010;32(4):347e8. [4] Search Matters 2008: Seminar on Search and Documentation Working Methods,The Hague, 7 and 8 April 2008, David Newton. World Patent Information 2008;30(4):346e7. [5] The European patent office ‘Raising the bar’ initiative, John Beatty. World Patent Information 2011;33(4):355e9.