Recently I was fortunate to attend the EPO Patent Information Conference (EPOPIC), held October 22-24th in Bologna, Italy. In addition to enjoying beautiful sights and delicious food, I was also treated to an excellent conference program on patent information. Read on for the highlights of my EPOPIC 2013 conference experience.
The major theme of this year’s EPOPIC was legal status information, and there were many European Patent Office experts on hand to discuss the subject. Other topics of interest included both the Cooperative Patent Classification, and the new Unitary Patent.
Patent legal status is one of the most challenging aspects of patent information. It’s difficult to find, difficult to interpret, and difficult to trust. At EPOPIC, suggestions were raised for the future development of better methods to provide patent legal status to the masses. Read on to learn more about ideas discussed at the conference.
Legal Status Information: Where do we go from here?
Context for the ongoing legal status discussion was given in a keynote talk by Susanne Hantos, Senior Associate at DaviesCollisonCave in Australia, and chair of the Patent Information User Group (PIUG).
Patent legal status plays a critical role in business decision making, yet the availability of legal status information is poor for many countries. Susanne offered her personal view that we should strongly encourage patent offices to both collect more information about their patents, and to make more information available to the public in order to enable the public to ascertain patent infringement risks. We should do this not only as information professionals, but also as concerned citizens. From her experience, Susanne warned that the lack of legal patent status information can delay or even discourage foreign investment. A patent system plays a major part in a nation’s economic growth. However, when it’s near impossible to find out what patents exist, who owns those patents, and whether they are enforceable, a patent system can actually discourage innovation and investment by creating uncertainty in the business environment.
A key piece of information is patent transfer-of-ownership events (re-assignments). Susanne pointed out that right now, the minimum documentation requirement under the Paris Convention is to record the patent owner at the time of grant, meaning that unless countries take additional measures to track re-assignments, the public has no reliable way of tracing current patent ownership. This obviously has an economic downside: as a simple example, if you don’t know who owns a patent, how do you know who to license that technology from? There have been some proposed measures to require companies to disclose ownership information, but none go far enough. Susanne suggested a number of ways that the situation could be addressed. As just one example, patent offices could require a regular declaration of ownership at the time of renewal fee payments.
It’s also essential to be able to monitor Patent Cooperation Treaty (PCT) applications as they progress to the regional and national patenting systems on their way to becoming granted patents. We need to know in which jurisdictions a PCT applicant has decided to pursue rights, and where they have missed the filing deadline for doing so. This is an important piece of business intelligence, and the reporting for these events has to become more timely.
Patent expiration dates are another major challenge. Although some commercial search systems attempt to calculate and display this information, as of right now, only a qualified patent attorney should advise a client of an expected expiration date. Susanne called for all patent offices to calculate this date, make it available to the public, and to update it each time a relevant status event (such as a term adjustment or extension) is recorded.
Susanne also gave some guidelines for those patent offices that do already provide electronic data to the public. They should strive to offer more individually searchable fields (e.g. “opponent name”), provide status for ALL types of IP they grant (e.g. designs or utility models), and should never delete any historical data from their records, as such data can have real value for researchers.
These are just some of the highlights of Susanne’s excellent talk, and every patent office should heed her call to action in order to enable the public to ascertain patent infringement risks and at the same time to facilitate foreign investment in our now single, global marketplace.
Developing better patent legal status dissemination systems
There are two common approaches to disseminating legal status – a distributed, federated search system, or a centralized data collection. A presentation by the EPO’s Heiko Wongel outlined the costs and benefits of each approach. In a nutshell, the federated approach can get the most up-to-date information from the national patent registers, while the centralized database can be incorporated into other software products for search and analysis work. The federated approach works well when you need accurate data for a single patent, and the centralized approach works well when you need to limit searches by legal status criteria.
Another benefit of a centralized database for legal status is that it allows similar legal events across countries to be standardized. For example, re-assignment events from different nations can all be tagged with a “reassignment” superclass, simplifying search and analysis work. The EPO is considering adding these superclasses to their INPADOC legal status database. However, many at the conference were concerned that such a step would lead to oversimplification of the status events: patent laws vary from nation to nation, and legal status codes can only be understood in their national context. An excellent example is non-payment of maintenance fees: some countries will allow a patent to be re-instated if a fee payment is missed, while others will not. Thus, a non-payment event carries very different implications depending on which country it occurred in.
The Cooperative Patent Classification (CPC)
The 2013 introduction of the Cooperative Patent Classification, a new system developed jointly by the US and European patent offices, has been a major event in the lives of patent information professionals. But it’s not only the USPTO and EPO who will be adopting the new classification system. Austria, Denmark, Finland, Greece, Hungary, Spain, Sweden, and the UK are now all using CPCs at the national level. In addition, some Asian patent offices are beginning to adopt the system, another major step towards making the CPC truly global. China, Korea, and Russia have all signed agreements indicating that they intend to start classifying their patent documents using CPCs, and discussions are currently ongoing with the Brazilian patent office.
The Unitary Patent
A “unitary patent” is really nothing more than a granted EP patent with a special “unitary effect” making it uniformly enforceable in all participating member states.* The holder of a unitary patent does not have to worry about losing rights in any member states by failing to comply with national requirements such as filing translations, paying national fees, etc. Any re-assignment of a unitary patent will take effect in all countries, and national rights cannot be assigned piecemeal. (Note: I am not an attorney and this does not constitute legal advice.)
Since this was a patent information conference, the main topic of discussion with relation to the unitary patent was: how will these documents be represented in our patent data sets? The applicant can file for unitary effect up to 4 weeks after their EP patent application is granted, suggesting that there could be a second publication upon the issuance of the unitary effect. Will European granted patents with unitary effect be published a second time? If so, will these publications bear a UP country code, or will there be a special kind code to denote the unitary effect? Alternatively, perhaps the unitary effect will appear only as an INPAODOC legal status event. All these questions are as yet undecided, and will have a major effect on our future practices (especially in patent analytics!).
*All states participating in the unitary patent program on the date the unitary effect is granted.
Share your comments!
The EPOPIC 2013 conference included a great exchange of ideas about how to solve patent information challenges. Do you have any theories about how to improve patent legal status information services? Share your thoughts in the comments below!
This post was contributed by Landon IP Librarian Kristin Whitman. The Intellogist blog is provided for free by Intellogist’s parent company, Landon IP, a major provider of patent search, technical translation, and information services.