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WIPO state-of-the-art search program for developing countries
WIPO, The Classification
and Patent
Information
Division
WIPO state-of-the-art search program for developing countries
Summary
The World Intellectual Property Organization (WIPO) has organized, since September 1975, for the benefit of developing countries, a free-of-charge state-of-the-art search program based upon the use of patent documents as a vehicle for the transfer of technology. The many varied features of patent documents are discussed together with the various types of searches possible. WIPO’s search program started following an agreement of cooperation with the Austrian Government and has recently been augmented by agreements with Germany (Federal Republic of), Soviet Union, Sweden, Switzerland and the European Patent Office. Up to the end of June 1980, 839 requests for searches had been received, of which 637 had been finalized. The number of requests is steadily growing - illustrating the positive reaction to the program. Depuis septembre 1975, l’organisation Mondiale de la Propriite Intellectuelle (OMPI) organise au profit des pays en dkeloppement un programme gratuit de recherche sur l’etat de la technique qui Porte sur l’utilisation des documents de brevets comme moyen de transfert des techniques. Les differents aspects de la documentation de brevet sont Ctudib en parallele avec les differents types de recherches possibles. Le programme de recherche de 1’OMPI a commence a la suite d’un accord de cooperation avec le gouvernement autrichien et s’est recemment elargi par des accords avec 1’Allemagne (Republique fed&ale d’), 1’Union sovietique, la Sugde, la Suisse et 1’Office Europeen des Brevets. A la fin de juin 1980, 839 demandes de recherches ont ete faites dont 637 sont ache&es. Le nombre de demandes de recherches augmente progressivement, ce qui est l’indication de la reaction positive h un tel programme. Die Weltorganisation fur geistiges Eigentum (WIPO) organisiert seit September 1975 ein Programm kostenloser Recherchen zum Stand der Technik zugunsten von Entwicklungsllndern, das auf der Nutzung von Patentdokumenten als Quellen fur den Technologietransfer aufbaut. Die verschiedenen Charakteristika von Patentdokumenten werden im Zusammenhang mit den verschiedenen moglichen Recherchetypen untersucht. Das WIPO-Rechercheprogramm wurde im Ergebnis einer Kooperationsvereinbarung mit der osterreichischen Regierung begonnen und ist in jiingster Zeit durch Vereinbarungen mit der Bundesrepublik Deutschland, der Sowjetunion, Schweden, der Schweiz und dem Europaischen Patentamt erweitert worden. Bis Ende Juni 1980 waren 839 Rechercheanfragen eingegangen, von denen bis dahin 637 abschlieBend bearbeitet werden konnten. Die Anzahl der Anfragen wachst standig, was die positive Reaktion auf das Programm verdeutlicht.
Introduction
One of the functions of the World Intellectual Property Organization (WIPO) is to encourage and organize legal-technical assistance and training programs for development purposes. Chapter IV, Articles 50 and 5 1, of the Patent Cooperation Treaty provide for the establishment of technical and similar information services on the basis of published documents, primarily patent documents and published know-how. The information services are intended to facilitate the acquisition of technical knowledge, technology and know-how, particularly by developing countries, and the International Bureau of WIPO can provide those services itself or 164
with the help of national or international specialized institutions. The WIPO State-of-the-Art Search Program is such a service provided on the basis of agreements reached between WIPO and several Industrial Property Offices. It uses the document collections maintained and the experience gathered by Industrial Property Offices of developed countries when fulfilling the provisions of industrial property legislation. The investigations made by those Offices particularly in connection with the grant of patent rights usually include a comprehensive documentary search conducted by legally and tcchnitally qualified experts, principally through published patent documents and through technical journals. in d large document collection classified in such a way as to permit efficient retrieval of technical information.
World Patent Information
2 (1980)
No. 4
WIPO
- State-of-the-art
search program
Use of patent documents as a vehicle for the transfer of technology
To understand better the possibilities given for the promotion of inventive activities in and the transfer of technology to developing countries by providing freeof-charge searches in collections of patent documents one has to keep in mind some main features of patent documents as a source of technological information. (a) Patent documents disclose technological information by describing inventions in accordance with the requirements of the applicable patent law and by indicating the claimed novelty and inventiveness by reference to the existing state of the art. They are thus sources of information not only on what is new (the invention) but also on what is already known (i.e. the state of the art), and in many cases furnish a history, in summary form, of the technological progress in the field to which they relate. (b) Patent documents normally disclose information on new inventions earlier than other sources of technological information. They often contain information which would not be divulged through articles or journals, as such information is divulged only in consideration of the legal protection which the patent affords. (c) Patent documents bear ‘classification symbols’. For the purposes of maintaining search files and performing searches for the state of the art, Patent Offices classify patent documents according to the field or fields of technology to which their contents relate. Patent documents belonging to a given classification subdivision contain a highly concentrated supply of usually technically advanced information on a given technological field. (d) Patent documents often disclose not only concepts concerning the general utility of the invention, but, generally, also detailed information on the possibility of its practical application in industry. (e) Patent documents indicate the name and address of the applicant, the patentee and the inventor, or at least one or two of these persons. These indications allow any potential licensee to contact the persons concerned in order to find out under what conditions he may be authorized to exploit the invention. (f) Patent documents bear data from which conclusions can be drawn as to the age of the invention and to the question of whether the inventions they describe are still under legal protection. If they are no longer legally protected, they can be used without the consent of the patentee. World Patent
Information
2 (1980)
No. 4
WIPO - State-of-the-art
Types of state-of-the-art
searches
The various types of ‘state-of-the-art’ searches are discussed below. Some of the searches are directed towards patent rights and licenses, whilst others are basically concerned with technological information. Establishing novelty or inventive level. These ‘investigations’ are carried out with respect to applications, or contemplated applications, for industrial property rights. Their main purpose is to evaluate the chances which the purported invention described in the application has of maturing into a useful industrial property right. Judicial proceedings in which the validity of a patent is contested or opposition proceedings instituted before the grant of a patent right are usually conducted on the basis of the state of the art established by a documentary search. Infringement actions. Another reason for requesting a search report on the state of the art could be the intention of undertaking a specific industrial production either of articles destined for the home market or in connection with the export to certain countries of manufactured articles. Before starting the construction of a new plant it is important to know whether existing patent rights would be infringed either in the country of production or in the intended export market, It should be kept in mind that although patent documents should be, and generally are, written in a way which allows the invention to be executed on the basis of them alone, it will frequently be cheaper and faster in practice to execute it with the cooperation of the inventor (for example, by acquiring his know-how and blueprints under a contract concluded with him) than without such cooperation. Providing technological information for research activities. Requests for search reports on the state of the art may also be submitted for the purpose of completing and supplementing one’s own documentation and knowledge in certain technological fields. Since in technical literature, such as books or periodicals, patent documentation is sometimes badly neglected, any information taken exclusively from books or periodicals is inevitably incomplete as far as the state of development in a certain field of technology is concerned. Also, there is often important information contained in patent documents which might be an indication of the direction to be taken by the research worker on a certain technological problem. It is not true to say that only technical details are of importance for the researcher; it is also essential for him to know what patent rights already exist in the field of the research activity. search
program
165
Identifying alternative technologies. A further reason for requesting a search report on the state of the art could be the wish to identify alternative technologies which could replace known technology to provide economic or environmental benefits. Statements concerning the economics of an invention can be expected in patent literature. For example, information may be given about the advantages to be gained over known devices by employing a new and essentially improved device, by using cheaper initial materials, by using fewer manufacturing steps or parts and perhaps even by the use of by-products of existing processes that previously had no use. Evaluation of a specific technology offered for acquisition (e.g. licensing offer). Another problem similar to the identification of alternative technology is the evaluation of a specific technology which is being considered for acquisition or which is being offered for license. However, whilst in the former case identification of possible alternative technologies is sought, in the present case an evaluation of the offered technology against other technologies, which may already be in use, is necessary. Identifying enterprises which are active in a specific field of technology. This question may arise with the construction of a new branch of a specific type of production or with the intended improvement of already existing procedures or processes. This might be of great importance if raw materials were no longer to be exported but were to be processed within the country, or if by-products of an already existing process were to be used to form products instead of being wasted. In such cases, a search report might give valuable information which would enable the applicant to choose the most favorable conditions before entering into negotiations with firms delivering the know-how as well as complete plants for his intended production. Identifying solutions to a technical problem. A state-of-the-art search through patent documents will usually identify those solutions to a technical problem that have been proposed in the past. Patent literature will often discuss disadvantages and difficulties that can be avoided by use of a particular process or design or will discuss advantages or benefits of a particular process or design.
art searches free-of-charge, for the benefit of developing countries. The program is executed from the side of the Government of Austria by the Austrian Patent Office. Under a recently signed agreement with WIPO. the Patent Office of Sweden has also started processing free-of-charge search requests for the benefit of developing countries. In June 1978, the President of the Patent Office of the Federal Republic of Germany informed the Director General of WIPO that his Government had made funds available to provide free-of-charge state-of-the-art searches for the benefit of developing countries in those fields of technology where the German Patent Office has computerized search systems, based on indexing terms, available. These fields are the following: Metallic materials Detergents Glass technology Insulated cables and lines Explosives Ammunition Color television Check-valves Steroids. Under an agreement with WIPO srgned on February 22, 1980, the USSR State Committee for Inventions and Discoveries is also joining the program. The Soviet Union contribution is especially intended to assist the examination of patent applications for inventions made in Developing Countries as to novelty and inventive step.
WIPO’s program of free-of-charge state-of-theart searches for the benefit of developing countries
Thr specific
In September 1975, Austrian Government signed to that effect, 166
WIPO, in cooperation with the and by virtue of an agreement started a program of state-of-theWorld Patent
The European Patent Office, under an agreement with WIPO, is completing the first in a series of monographies dealing in depth with areas of technology of specific relevance to developing countries. It is intended to publish the monographies as they become available. As from June 1980, the Swiss Federal Industrial Property Office has also been contributing to the program by furnishing copies of patent documents requested in connection with this program free of’ charge.
Processing procedures and requirements met by the search request
to be
provisions agreed upon for having a search processed by one or the other Office vary’ slightly. but in any case certain general requirements ha\c to bc met by the search request, otherwise it would be impossible to identify the relevant material-if there is suchamidst the tens of millions of patent ducumrnt5 SO far published. In any case, the initial request for the state-
Information
2 (1980)
No. 4
WIPO - State-of-the-art
search program
of-the-art search is addressed to WIPO which transmits it to a cooperating Office. The search is carried out by a competent examiner in one of the technical departments of this Office. As a rule, this examiner uses the search files of his special field and such other documentary material as may be available at the Patent Office library. The search report, is then transmitted together with copies of the documents cited therein, to the requestor together with a questionnaire for the evaluation of search results. On the basis of the experience gathered, ‘Guidelines for the Submission of Search Requests’ were elaborated. According to these Guidelines, based on the needs of an efficient work, each search request shall comprise: (a) The designation of the authority of the developing country which is transmitting the search request. This authority may be the Industrial Property Office or any other governmental institution. (b) The designation of the end user of the search report for whom the search is requested. The user may be the above-mentioned authority or any national institution or individual as approved by the said authority. (c) A brief description of the subject matter to be searched (title). (d) Any further details available from the search requestor. Furthermore, the following should be attached to each search request: (e) A description enabling the examiner to better understand the technical problem which is the subject of the search request accompanied by any necessary drawings. (f) A summary indicating the exact scope. In order to facilitate compliance with the above-mentioned formal requirements, a printed form is to be used as the first page of the request. Search requests can be submitted in English, French, German, Spanish or Russian. With reference to requirements (e) and (f), it must be borne in mind that it depends on the quality and clarity of the description, the summary and the drawings whether a search can be carried out or not and whether satisfactory results can be expected within a reasonable period of time or only after time-consuming investigations. It should also be borne in mind that every translation of a search request adds some ambiguity and that only a more elaborated request can be translated with the clarity needed. The description must be full and detailed. The purpose of the search request and the intended use of the World Patent
Information
2 (1980)
No. 4
WIPO - State-of-the-art
search report should be clearly indicated. When appropriate, the description should also be accompanied by any additional statement, designed to assist in carrying out the search, concerning any limitation of the search (e.g. by date or language) or other matters of such kind. In any case, the technical problem and/or the field of technology must be of limited scope and explained in sufficient detail to enable the searcher to locate any relevant documents. In drafting the description, the following should be borne in mind: (a) If the requestor is interested in establishing the novelty or inventive level of an invention, the technical problem and the solutions found should be indicated as clearly as possible in order to enable a quick and systematic search similar to a search under a patent granting procedure. (b) If the purpose of the search is the evaluation of a specific technology which is being considered for acquisition (e.g. is being offered for license), the search request must give comprehensive and clear information concerning the specific technology, including a clear reference to patent documents associated with an offer for license. (c) If the purpose is to identify possible solutions to a known technical problem, with a view to choosing one solution to be applied in practice, the technical problem itself should be clearly described in detail as well as any solutions to the problem known to the search requestor. (d) If the search report is to be used for identifying technologies which could replace a known technology (e.g. for part of a manufacturing process), for identifying enterprises which are active in a specific field of technology or for providing technological information for research activities a clear and detailed description of the technology should be given. Detailed guidelines for the submission of search requests have been prepared and can be obtained on request.
Deficiencies to be avoided Experience has shown that the processing of a remarkable percentage of searches is sometimes delayed or even made impossible due to deficiencies in the request submitted. Such deficiencies are mostly: (a) The technology is defined in a too broad a manner; in this case the search would yield a great number of documents, which would be of little use to the search requestor. (b) The technical problem is not clearly enough described: in this case more precise information will search program
167
have to be furnished by the search the searcher can clearly identify sought.
requestor so that the information
(c) The description comprises a multiplicity of technical problems; in this case, a splitting up of the search request will be necessary, i.e., instead of one search request, two or more requests will have to be submitted, each request concerning one problem. (d) The technical problem cannot be clearly understood on account of language deficiencies; in this case, the submission of a totally new description is neces-
search request, were made on the basis of the evaluation results. The overall reaction to the program is a very affirmative one, the clearest expression thereof being the steadily growing number of incoming requests. Additional contributions to the program by other Patent Offices and similar institutions, therefore, would seem to be a necessity.
sary .
(e) The technical problem is a particular problem of technical know-how which cannot be solved solely on the basis of patent documents; in this case, the Patent Office will, as far as possible, identify enterprises with relevant technical experience in the required field on the basis of documents published.
Present status of the program and evaluation resu Its
of
ERRATUM On-line data bases for chemical The article (1980) No. p. 122. The order hence does The comect
World Patent Information
searches
of the 4 last column headings has been changed not correspond to the rest of the columns. table is reproduced below.
Since the initiation of the program in October 1975, a total of 839 search requests had been received up to June 25, 1980, of which 637 have been finalized, 35 were rejected and 167 are still being processed. The average number of search requests received per month is at present approximately 3 5. Analysis of the completed evaluation questionnaires returned to WIPO up to the end of 1979 showed, with respect to the purpose or purposes for which the searches were requested, the following: (a) Evaluation of a specific technology which is being considered for acquisition (e.g. is being offered for license) 14% (b) Establishing novelty or inventive level of an invention 40% which could re(c) Identifying technologies place a known technology (e.g. for part of a manufacturing process) 11% (d) Identifying possible solutions to a technical problem, with a view to choosing a solution to be applied in practice 52% information for (e) Providing technological research activities 67% (0 Identifying enterprises which are active in a specific field of technology 18% 1% k) Other Many replies indicated more than one purpose. Where the originally intended purpose and the actual use differ, both are included. In some cases, supplementary searches, mainly with regard to additional aspects not covered by the original 168
patent
of Dr. M. Herz in World Patent Information, Vol. 2 3 unfortunately containsascriousmisprint in table 9,
. CA-SEARCH . CLAIMS l CPIlWPI l 0 FSTA 0 . INSPEC l . PAPERCHEM . . TITUS 0 WORLD ALUMINIUM 0 l WORLD TEXTILES
and
.
(1980)
No. 4
WIPO - State-of-the-art
ABSTR
search program
and Patent
Information
Division
WIPO state-of-the-art search program for developing countries
Summary
The World Intellectual Property Organization (WIPO) has organized, since September 1975, for the benefit of developing countries, a free-of-charge state-of-the-art search program based upon the use of patent documents as a vehicle for the transfer of technology. The many varied features of patent documents are discussed together with the various types of searches possible. WIPO’s search program started following an agreement of cooperation with the Austrian Government and has recently been augmented by agreements with Germany (Federal Republic of), Soviet Union, Sweden, Switzerland and the European Patent Office. Up to the end of June 1980, 839 requests for searches had been received, of which 637 had been finalized. The number of requests is steadily growing - illustrating the positive reaction to the program. Depuis septembre 1975, l’organisation Mondiale de la Propriite Intellectuelle (OMPI) organise au profit des pays en dkeloppement un programme gratuit de recherche sur l’etat de la technique qui Porte sur l’utilisation des documents de brevets comme moyen de transfert des techniques. Les differents aspects de la documentation de brevet sont Ctudib en parallele avec les differents types de recherches possibles. Le programme de recherche de 1’OMPI a commence a la suite d’un accord de cooperation avec le gouvernement autrichien et s’est recemment elargi par des accords avec 1’Allemagne (Republique fed&ale d’), 1’Union sovietique, la Sugde, la Suisse et 1’Office Europeen des Brevets. A la fin de juin 1980, 839 demandes de recherches ont ete faites dont 637 sont ache&es. Le nombre de demandes de recherches augmente progressivement, ce qui est l’indication de la reaction positive h un tel programme. Die Weltorganisation fur geistiges Eigentum (WIPO) organisiert seit September 1975 ein Programm kostenloser Recherchen zum Stand der Technik zugunsten von Entwicklungsllndern, das auf der Nutzung von Patentdokumenten als Quellen fur den Technologietransfer aufbaut. Die verschiedenen Charakteristika von Patentdokumenten werden im Zusammenhang mit den verschiedenen moglichen Recherchetypen untersucht. Das WIPO-Rechercheprogramm wurde im Ergebnis einer Kooperationsvereinbarung mit der osterreichischen Regierung begonnen und ist in jiingster Zeit durch Vereinbarungen mit der Bundesrepublik Deutschland, der Sowjetunion, Schweden, der Schweiz und dem Europaischen Patentamt erweitert worden. Bis Ende Juni 1980 waren 839 Rechercheanfragen eingegangen, von denen bis dahin 637 abschlieBend bearbeitet werden konnten. Die Anzahl der Anfragen wachst standig, was die positive Reaktion auf das Programm verdeutlicht.
Introduction
One of the functions of the World Intellectual Property Organization (WIPO) is to encourage and organize legal-technical assistance and training programs for development purposes. Chapter IV, Articles 50 and 5 1, of the Patent Cooperation Treaty provide for the establishment of technical and similar information services on the basis of published documents, primarily patent documents and published know-how. The information services are intended to facilitate the acquisition of technical knowledge, technology and know-how, particularly by developing countries, and the International Bureau of WIPO can provide those services itself or 164
with the help of national or international specialized institutions. The WIPO State-of-the-Art Search Program is such a service provided on the basis of agreements reached between WIPO and several Industrial Property Offices. It uses the document collections maintained and the experience gathered by Industrial Property Offices of developed countries when fulfilling the provisions of industrial property legislation. The investigations made by those Offices particularly in connection with the grant of patent rights usually include a comprehensive documentary search conducted by legally and tcchnitally qualified experts, principally through published patent documents and through technical journals. in d large document collection classified in such a way as to permit efficient retrieval of technical information.
World Patent Information
2 (1980)
No. 4
WIPO
- State-of-the-art
search program
Use of patent documents as a vehicle for the transfer of technology
To understand better the possibilities given for the promotion of inventive activities in and the transfer of technology to developing countries by providing freeof-charge searches in collections of patent documents one has to keep in mind some main features of patent documents as a source of technological information. (a) Patent documents disclose technological information by describing inventions in accordance with the requirements of the applicable patent law and by indicating the claimed novelty and inventiveness by reference to the existing state of the art. They are thus sources of information not only on what is new (the invention) but also on what is already known (i.e. the state of the art), and in many cases furnish a history, in summary form, of the technological progress in the field to which they relate. (b) Patent documents normally disclose information on new inventions earlier than other sources of technological information. They often contain information which would not be divulged through articles or journals, as such information is divulged only in consideration of the legal protection which the patent affords. (c) Patent documents bear ‘classification symbols’. For the purposes of maintaining search files and performing searches for the state of the art, Patent Offices classify patent documents according to the field or fields of technology to which their contents relate. Patent documents belonging to a given classification subdivision contain a highly concentrated supply of usually technically advanced information on a given technological field. (d) Patent documents often disclose not only concepts concerning the general utility of the invention, but, generally, also detailed information on the possibility of its practical application in industry. (e) Patent documents indicate the name and address of the applicant, the patentee and the inventor, or at least one or two of these persons. These indications allow any potential licensee to contact the persons concerned in order to find out under what conditions he may be authorized to exploit the invention. (f) Patent documents bear data from which conclusions can be drawn as to the age of the invention and to the question of whether the inventions they describe are still under legal protection. If they are no longer legally protected, they can be used without the consent of the patentee. World Patent
Information
2 (1980)
No. 4
WIPO - State-of-the-art
Types of state-of-the-art
searches
The various types of ‘state-of-the-art’ searches are discussed below. Some of the searches are directed towards patent rights and licenses, whilst others are basically concerned with technological information. Establishing novelty or inventive level. These ‘investigations’ are carried out with respect to applications, or contemplated applications, for industrial property rights. Their main purpose is to evaluate the chances which the purported invention described in the application has of maturing into a useful industrial property right. Judicial proceedings in which the validity of a patent is contested or opposition proceedings instituted before the grant of a patent right are usually conducted on the basis of the state of the art established by a documentary search. Infringement actions. Another reason for requesting a search report on the state of the art could be the intention of undertaking a specific industrial production either of articles destined for the home market or in connection with the export to certain countries of manufactured articles. Before starting the construction of a new plant it is important to know whether existing patent rights would be infringed either in the country of production or in the intended export market, It should be kept in mind that although patent documents should be, and generally are, written in a way which allows the invention to be executed on the basis of them alone, it will frequently be cheaper and faster in practice to execute it with the cooperation of the inventor (for example, by acquiring his know-how and blueprints under a contract concluded with him) than without such cooperation. Providing technological information for research activities. Requests for search reports on the state of the art may also be submitted for the purpose of completing and supplementing one’s own documentation and knowledge in certain technological fields. Since in technical literature, such as books or periodicals, patent documentation is sometimes badly neglected, any information taken exclusively from books or periodicals is inevitably incomplete as far as the state of development in a certain field of technology is concerned. Also, there is often important information contained in patent documents which might be an indication of the direction to be taken by the research worker on a certain technological problem. It is not true to say that only technical details are of importance for the researcher; it is also essential for him to know what patent rights already exist in the field of the research activity. search
program
165
Identifying alternative technologies. A further reason for requesting a search report on the state of the art could be the wish to identify alternative technologies which could replace known technology to provide economic or environmental benefits. Statements concerning the economics of an invention can be expected in patent literature. For example, information may be given about the advantages to be gained over known devices by employing a new and essentially improved device, by using cheaper initial materials, by using fewer manufacturing steps or parts and perhaps even by the use of by-products of existing processes that previously had no use. Evaluation of a specific technology offered for acquisition (e.g. licensing offer). Another problem similar to the identification of alternative technology is the evaluation of a specific technology which is being considered for acquisition or which is being offered for license. However, whilst in the former case identification of possible alternative technologies is sought, in the present case an evaluation of the offered technology against other technologies, which may already be in use, is necessary. Identifying enterprises which are active in a specific field of technology. This question may arise with the construction of a new branch of a specific type of production or with the intended improvement of already existing procedures or processes. This might be of great importance if raw materials were no longer to be exported but were to be processed within the country, or if by-products of an already existing process were to be used to form products instead of being wasted. In such cases, a search report might give valuable information which would enable the applicant to choose the most favorable conditions before entering into negotiations with firms delivering the know-how as well as complete plants for his intended production. Identifying solutions to a technical problem. A state-of-the-art search through patent documents will usually identify those solutions to a technical problem that have been proposed in the past. Patent literature will often discuss disadvantages and difficulties that can be avoided by use of a particular process or design or will discuss advantages or benefits of a particular process or design.
art searches free-of-charge, for the benefit of developing countries. The program is executed from the side of the Government of Austria by the Austrian Patent Office. Under a recently signed agreement with WIPO. the Patent Office of Sweden has also started processing free-of-charge search requests for the benefit of developing countries. In June 1978, the President of the Patent Office of the Federal Republic of Germany informed the Director General of WIPO that his Government had made funds available to provide free-of-charge state-of-the-art searches for the benefit of developing countries in those fields of technology where the German Patent Office has computerized search systems, based on indexing terms, available. These fields are the following: Metallic materials Detergents Glass technology Insulated cables and lines Explosives Ammunition Color television Check-valves Steroids. Under an agreement with WIPO srgned on February 22, 1980, the USSR State Committee for Inventions and Discoveries is also joining the program. The Soviet Union contribution is especially intended to assist the examination of patent applications for inventions made in Developing Countries as to novelty and inventive step.
WIPO’s program of free-of-charge state-of-theart searches for the benefit of developing countries
Thr specific
In September 1975, Austrian Government signed to that effect, 166
WIPO, in cooperation with the and by virtue of an agreement started a program of state-of-theWorld Patent
The European Patent Office, under an agreement with WIPO, is completing the first in a series of monographies dealing in depth with areas of technology of specific relevance to developing countries. It is intended to publish the monographies as they become available. As from June 1980, the Swiss Federal Industrial Property Office has also been contributing to the program by furnishing copies of patent documents requested in connection with this program free of’ charge.
Processing procedures and requirements met by the search request
to be
provisions agreed upon for having a search processed by one or the other Office vary’ slightly. but in any case certain general requirements ha\c to bc met by the search request, otherwise it would be impossible to identify the relevant material-if there is suchamidst the tens of millions of patent ducumrnt5 SO far published. In any case, the initial request for the state-
Information
2 (1980)
No. 4
WIPO - State-of-the-art
search program
of-the-art search is addressed to WIPO which transmits it to a cooperating Office. The search is carried out by a competent examiner in one of the technical departments of this Office. As a rule, this examiner uses the search files of his special field and such other documentary material as may be available at the Patent Office library. The search report, is then transmitted together with copies of the documents cited therein, to the requestor together with a questionnaire for the evaluation of search results. On the basis of the experience gathered, ‘Guidelines for the Submission of Search Requests’ were elaborated. According to these Guidelines, based on the needs of an efficient work, each search request shall comprise: (a) The designation of the authority of the developing country which is transmitting the search request. This authority may be the Industrial Property Office or any other governmental institution. (b) The designation of the end user of the search report for whom the search is requested. The user may be the above-mentioned authority or any national institution or individual as approved by the said authority. (c) A brief description of the subject matter to be searched (title). (d) Any further details available from the search requestor. Furthermore, the following should be attached to each search request: (e) A description enabling the examiner to better understand the technical problem which is the subject of the search request accompanied by any necessary drawings. (f) A summary indicating the exact scope. In order to facilitate compliance with the above-mentioned formal requirements, a printed form is to be used as the first page of the request. Search requests can be submitted in English, French, German, Spanish or Russian. With reference to requirements (e) and (f), it must be borne in mind that it depends on the quality and clarity of the description, the summary and the drawings whether a search can be carried out or not and whether satisfactory results can be expected within a reasonable period of time or only after time-consuming investigations. It should also be borne in mind that every translation of a search request adds some ambiguity and that only a more elaborated request can be translated with the clarity needed. The description must be full and detailed. The purpose of the search request and the intended use of the World Patent
Information
2 (1980)
No. 4
WIPO - State-of-the-art
search report should be clearly indicated. When appropriate, the description should also be accompanied by any additional statement, designed to assist in carrying out the search, concerning any limitation of the search (e.g. by date or language) or other matters of such kind. In any case, the technical problem and/or the field of technology must be of limited scope and explained in sufficient detail to enable the searcher to locate any relevant documents. In drafting the description, the following should be borne in mind: (a) If the requestor is interested in establishing the novelty or inventive level of an invention, the technical problem and the solutions found should be indicated as clearly as possible in order to enable a quick and systematic search similar to a search under a patent granting procedure. (b) If the purpose of the search is the evaluation of a specific technology which is being considered for acquisition (e.g. is being offered for license), the search request must give comprehensive and clear information concerning the specific technology, including a clear reference to patent documents associated with an offer for license. (c) If the purpose is to identify possible solutions to a known technical problem, with a view to choosing one solution to be applied in practice, the technical problem itself should be clearly described in detail as well as any solutions to the problem known to the search requestor. (d) If the search report is to be used for identifying technologies which could replace a known technology (e.g. for part of a manufacturing process), for identifying enterprises which are active in a specific field of technology or for providing technological information for research activities a clear and detailed description of the technology should be given. Detailed guidelines for the submission of search requests have been prepared and can be obtained on request.
Deficiencies to be avoided Experience has shown that the processing of a remarkable percentage of searches is sometimes delayed or even made impossible due to deficiencies in the request submitted. Such deficiencies are mostly: (a) The technology is defined in a too broad a manner; in this case the search would yield a great number of documents, which would be of little use to the search requestor. (b) The technical problem is not clearly enough described: in this case more precise information will search program
167
have to be furnished by the search the searcher can clearly identify sought.
requestor so that the information
(c) The description comprises a multiplicity of technical problems; in this case, a splitting up of the search request will be necessary, i.e., instead of one search request, two or more requests will have to be submitted, each request concerning one problem. (d) The technical problem cannot be clearly understood on account of language deficiencies; in this case, the submission of a totally new description is neces-
search request, were made on the basis of the evaluation results. The overall reaction to the program is a very affirmative one, the clearest expression thereof being the steadily growing number of incoming requests. Additional contributions to the program by other Patent Offices and similar institutions, therefore, would seem to be a necessity.
sary .
(e) The technical problem is a particular problem of technical know-how which cannot be solved solely on the basis of patent documents; in this case, the Patent Office will, as far as possible, identify enterprises with relevant technical experience in the required field on the basis of documents published.
Present status of the program and evaluation resu Its
of
ERRATUM On-line data bases for chemical The article (1980) No. p. 122. The order hence does The comect
World Patent Information
searches
of the 4 last column headings has been changed not correspond to the rest of the columns. table is reproduced below.
Since the initiation of the program in October 1975, a total of 839 search requests had been received up to June 25, 1980, of which 637 have been finalized, 35 were rejected and 167 are still being processed. The average number of search requests received per month is at present approximately 3 5. Analysis of the completed evaluation questionnaires returned to WIPO up to the end of 1979 showed, with respect to the purpose or purposes for which the searches were requested, the following: (a) Evaluation of a specific technology which is being considered for acquisition (e.g. is being offered for license) 14% (b) Establishing novelty or inventive level of an invention 40% which could re(c) Identifying technologies place a known technology (e.g. for part of a manufacturing process) 11% (d) Identifying possible solutions to a technical problem, with a view to choosing a solution to be applied in practice 52% information for (e) Providing technological research activities 67% (0 Identifying enterprises which are active in a specific field of technology 18% 1% k) Other Many replies indicated more than one purpose. Where the originally intended purpose and the actual use differ, both are included. In some cases, supplementary searches, mainly with regard to additional aspects not covered by the original 168
patent
of Dr. M. Herz in World Patent Information, Vol. 2 3 unfortunately containsascriousmisprint in table 9,
. CA-SEARCH . CLAIMS l CPIlWPI l 0 FSTA 0 . INSPEC l . PAPERCHEM . . TITUS 0 WORLD ALUMINIUM 0 l WORLD TEXTILES
and
.
(1980)
No. 4
WIPO - State-of-the-art
ABSTR
search program