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Guidelines for Examination

 
 
9.1.2
"Corresponding documents" 

The examiner will often be confronted by the existence of "corresponding" documents (see B-VI, 6.2), that is to say documents which have the same or substantially the same technical content. These usually fall into one of two groups, namely patent documents from a patent family and abstracts:

(i)
Patent documents in the same patent family 

These are patent documents from the same country or from different countries, and which share at least one claimed priority.

If a cited patent document belongs to a patent family, the examiner need not cite all the members of the family which are known or accessible to him, since these are already mentioned in the annex to the search report. However, he may mention one or more members in addition to the one cited (see B-IV, 3.1). Such documents should be identified by the Office of origin, type and number of document, and preceded by the sign ampersand (&). There are a number of possible reasons why the examiner may wish to draw attention in the search report to more than one document in the same patent family, including the following:

(a)
One document of the patent family is published before the earliest priority date of the application, but is published in a non-EPO language, whereas a different member of the same patent family is published in an EPO language (see Art. 14(1)), but after the earliest priority date of the application.

Example

A European application claims a priority of 3 September 1999. In the search on this application, a relevant document – WO 99 12395 A – is found. This document is published in Japanese on 11 March 1999 – in time to constitute prior art according to Art. 54(2). There also exists the European family member published in an English translation according to Art. 153(4) on 1 March 2000 – too late to constitute prior art according to Art. 54(2), but cited in the search report as an "&" document of the Japanese-language WO publication and sent to the applicant (see B-X, 11.3). It will be used in examination of the application to interpret the content of the Japanese language WO publication (see G-IV, 4). In the search report, these documents would be cited as follows (for the mentioning of the claims to which the cited documents relate, here claims 1-10, see B-X, 9.3):

X

WO 99 12395 A (SEKI SHUNICHI; KIGUCHI
HIROSHI (JP); SEIKO EPOSON CORP (JP))
11 March 1999 (1999-03-11)
* figure 1 *
& EP 0 982 974 (SEIKO EPSON CORP)
1 March 2000 (2000-03-01)
* figure 1 *
* claim 1 *

1-10

(b)
Different documents in the same patent family each containing relevant technical subject-matter not present in the other family members; 
(c)
Where a family member is cited in the application in a non-EPO language and there exists another family member in an EPO language, where these are both published before the earliest priority date. 

Example

Y

WO9001867 A (WIDEGREN LARS (SE))
8 March 1990 (1990-03-08)
* claim 1 *

1-10

D,Y

& SE461824 B (WIDEGREN LARS (SE))
2 April 1990 (1990-04-02)

1-10

The fact that the applicant has already cited the relevant SE document in the application, which is a family member of the relevant WO document, means that the applicant has already satisfied the requirement that he mention in the description the state of the art (Rule 42(1)(b)). It is of value to the Examining Division that this be made known in the search report (see F-II, 4.3).

(ii)
Abstracts of documents (see B-VI, 6.2)

These are provided by one of a number of database providers (for example Chemical Abstracts, or Derwent or Patent Abstracts of Japan) and may relate to many different types of disclosure such as patent documents, journal articles, PhD theses, books etc. The abstract provides a summary of the most important aspects of the technical content of the original document. Most abstracts cited are in the English language. In all cases where an abstract is cited in the search report, the examiner must input the original document to which the abstract relates after the "&" sign.

Example

Y

PATENT ABSTRACTS OF JAPAN vol. 002, no 148 (C-030)
9 December 1978 (1978-12-09)
& JP 53 113730 A (TOSHIBA CORP)
4 October 1978 (1978-10-04)
* abstract *

1-10

X

DATABASE WPI
Week 200961
Thomson Scientific, London, GB;
AN 2009-N01904
& WO 2009/104990 A1 (VALEXPHARM CO LTD) 27 August 2009 (2009-08-27)
* abstract *

 

1-5

The examiner may choose to cite the abstract (in which case the original document must be cited as an "&" document) rather than cite the original document for one of a number of reasons. These reasons include: the original document is not easily available to the examiner (for example, retrieval of PhD theses); or the original document is in a non-EPO language and no other corresponding document exists (for example, a Japanese patent document with no family members, or a journal article in Russian). The original document is sent to the applicant only if it is selected for printing ("-&").

If the examiner wishes to refer to a Japanese or Korean published patent application (with kind code A), he should cite the Japanese or Korean publication in the search report. If there is an English abstract available in the EPO databases (Patent Abstracts of Japan or Patent Abstracts of Korea), both the Japanese or Korean publication and the English abstract are sent to the applicant.