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In-house vs. outsourcing - the view point of a user concerning IP service providers

Ingrid Baele, General Manager Business Management Office
Intellectual Property & Standards, Philips Group Innovation

Outsourcing is a strategic choice, both in terms of what and to whom. Outsourcing creates a virtual resource pool and can free up capacity for activities that from strategic point of view are to be performed in-house. But outsourcing only helps when quality standards are adhered to. Therefore, we consider periodic extended quality checks as an integral part of outsourcing. 

The EPO PATLIB survey 2014 – results and conclusions

Heidrun Krestel

In 2014 the EPO, in collaboration with a market research institute, conducted a survey on patent information centres. The objective was to gain up-to-date knowledge on the structure and functioning of the PATLIB centres and to find out how the EPO could provide the right level of support according to their needs. 

Main aspects analysed were staffing, funding, service portfolio and a self- assessment in how far customer needs are met by the centres. In addition the survey addressed tools PATLIBs are using to establish their services, the centres’ training needs and networking issues. 

Based on the findings of the survey, action areas have been identified where the EPO could contribute to the PATLIBs’ reorientation process, directly or indirectly. 

When to stop your search

Sabine Kruspig

With the expansion of available databases and search tools, the question of when to stop your search is becoming increasingly relevant. 

In the past, a search was finished when the bottom of the pile of the correct classification groups was reached. Now, with the advent of new search strategies, better tools and a string of procedural changes, how do we define the end of the search? What is the influence of those changes on our ability to determine when to stop a search? 

This presentation will give an overview on the EPO’s in-house search stop prerequisites, general parameters which influence the search, and the effect that clarity, complexity and the wording of the claims have on searches and their result. 

Searching in non-patent literature

Stephen Adams

This session will give an overview of why the non-patent literature remains an important resource, for both patentability searching and later invalidity or opposition proceedings. There are enormous back-files of cumulated scientific knowledge available in a variety of formats. Efficient searching in the non-patent literature can be particularly helpful when seeking to show lack of inventive step, and in gathering evidence for opposition proceedings. Some trends in availability of resources will be discussed, as well as the contribution of the internet. 

A1 Basics of patent information

Nigel Clarke

Hopefully you know what a patent is, so we won't go that far back. But we'll certainly look at the different parts of a patent document and see why every bit is important.  But first we'll go back to the source of patent information; where it comes from and why. During the session we'll find out what you can do with patent information too. Patents are not solitary creatures and we'll look at the relationships between a given patent and its "relatives". We'll take a look at the perils of patent terminology, and the challenges of presenting IP to an IP-innocent audience. We'll visit the patent information market - who the stall holders are - who the customers are - and what persuades them to "buy". Finally we'll round up by taking a (metaphorical) helicopter ride to get a bird's eye view of patent information resources.

A2. Legal status databases for patents, trade marks and designs

Sofie Leplae, European Patent Office
Stephen Adams, Magister Ltd

Is a patent still valid or not? Who owns a patent? Has anyone opposed this patent? An exploration of the EPO's legal status databases will reveal the richness and limits of both the EP Register and the INPADOC worldwide legal status database. Practical examples will show how to use the databases and what you can expect from them. We will also cross-check our results with databases from other patent offices. Unlike patents, the national term granted for trade marks and designs can vary widely across the world. Users wishing to establish the status of these IP rights will have to understand the basic legal principles underlying these rights and to consult a range of less-familiar sources. Trade mark and design databases are also highly dependent upon visual elements, rather than text, so the effectiveness of these databases is governed in part by how well they store and distribute image information. Comments will be made on both free-of-charge and commercial sources.

A3 Patent systems in IP5 and PCT - filing strategies for applicants

Irene Schellner, Christof Mathoi and David Molnia

The IP5 offices (the five biggest IP offices in the world: EPO, JPO, KIPO, SIPO and USPTO) together handle about 80 per cent of the world's patent applications, and 95 per cent of all work carried out under the Patent Cooperation Treaty (PCT). 

This session looks at the most important features of the patent systems in the IP5 regions and aims at giving participants a quick reference guide to the major similarities and differences in the patent procedures before the IP5 offices and in the PCT. The session also explores by means of examples and case studies what may be the most suitable routes for different types of applicants and market situations.

The objective of this session is to enable staff from PATLIB centres to explain to their clients

  • basic characteristics of the patent systems in the IP5 regions as well as the PCT
  • main differences
  • suitable filing strategies depending on business requirements (case studies)

A4 CPC - project update and classification procedure at the EPO

Frédéric Lequeux

Since its launch in 2013, the Cooperative Patent Classification scheme (CPC) makes it easier for examiners of patent offices and for global users worldwide to access the relevant patent documentation.  An overview of the latest developments of CPC itself and of the related processes will be presented.

A6 How to bring university inventions to the market

Gillian McFadzean, Carlos Serpa Soares

This session will look at the motivation and the ways that universities can take inventions to market from the perspective of both the university and a spin out company.

It will discuss some of the good and not so good practice and it will illustrate the ways in which one researcher maximised available support and cut a path through obstacles to become a CEO of a growing company. The session will include an interactive team competition on "Pitching to Investors" with an appropriate prize for the winning team.

B1. Patent documentation: standards, comparison of tools, information sources

Sofie Leplae, European Patent Office
Stephen Adams, Magister Ltd.

Patents are issued by approximately 160 countries, each following national principles of publishing and identifying official documents. WIPO standards are in place to help patent offices take a harmonised approach to their patent documentation; these will be reviewed from the point of view of the patent searcher. We will then follow a patent document as delivered by a national office in XML through the EPO's standardisation, reformatting and enriching process, until it is inserted in the master database and visible in Espacenet. This will reveal features of the database, like the patent family building, and it explain some of the peculiarities. The database file ultimately sent to users complies with WIPO Standard 36 – it is an example of the interesting dialogue between standards and real data. Commercial database producers have somewhat more freedom than patent offices to create additional fields and to standardise them in a way which suits their editorial processes. We will consider a patent record as it enters the public domain via official channels (first-level data) and what happens to the same document when it is incorporated into value-added databases as well.

B2 EPO search tools: Espacenet and Global Patent Index

Nigel Clarke, Björn Jürgens

The EPO has created sophisticated patent databases to enable its examiners to carry out the highest quality searches. The EPO has also made it possible to access those same databases via its publicly available search tools. The public tools can be used in PATLIB centres for your clients' searches. Of these tools, probably the most well-known is Espacenet. Espacenet is designed as the entry level search tool for general public use. However, less well known is Global Patent Index, based on the same databases as Espacenet but featuring more sophisticated search possibilities. GPI is aimed at the experienced patent searcher. We present Espacenet and GPI side by side. Which one to use? It's up to you!

B4 International patent information - overview and focus on Asia, including translation tools

Irene Schellner, Barnaby Hoyal

In 2014, the five biggest IP offices in the world, EPO, JPO, KIPO, SIPO and USPTO, collectively known as the IP5, received more than 2 million patent applications. Of these, more than 1.4 million patent applications were filed in China, Japan and Korea.

These constantly growing volumes of prior art, in particular from Asia, present one of the biggest challenges for patent searchers, both in patent offices and in industry. While the number of domestic patent applications in Asia is growing, the percentage of those having an English-language family member or equivalent in a Western language is falling. Patent information users limiting their searches only to English-language data, risk ignoring a major part of prior art coming from Asia. 

This session looks at the patent information offer at the IP5 offices, with a particular focus on the free patent information sources provided by the Asian patent offices. Participants will learn about content and search functions and will get practical tips on how to make the most of these databases. Hands-on exercises will allow participants to explore themselves the search and automatic translation features on offer by the JPO, SIPO and KIPO. In addition the Global Dossier function available in Espacenet and the European Patent Register will be explained.

B5 Oral proceedings relating to examination proceedings before the EPO - a demo

Alex Gardiner

The examiner and the applicant have been exchanging written communications, but now a summons to oral proceedings has been issued. What does that mean for an applicant? How should they behave and what can happen?

It is important to prepare for what may be a decisive and nerve-racking situation. The module looks at both the legal procedure and the human experience of oral proceedings. It considers the interaction of applicants, representatives and examiners in order to better advise those who may attend on preparation and the avoidance of major pitfalls.

C2 How to set up and maintain monitoring profiles on technical trends, competitors and legal information

Patrick Le Gonidec, Rudolf Nickels

Patent monitoring is an essential service to regularly inform customers on technical trends, competitors' activities or legal events occurring in the life of a particular patent. In the break-out session participants will learn about the following aspects:

  • What is the business case for patent monitoring
  • How to set up monitoring profiles according to keywords, IPC/CPC, applicants names, inventors' names or specific documents concerning legal status
  • Explaining the process of creating a profile: The example of a fictive company
  • How can the results be presented to the customer
  • Which tools are suitable for patent monitoring
  • How can EPO patent information products be used for patent monitoring

C3 EPO Search Tools - Global dossier and Common Citation Document

Nigel Clarke

Patent offices worldwide continuously look for ways to increase efficiency through cooperation. The public spin-off benefit is visible in the emergence of services like Global Dossier and Common Citation Document. Global Dossier provides access to file wrapper data from partner offices direct from source and is a powerful means of rapidly accessing complex procedural and legal data. The Common Citation Document provides search report citations, and other citation data from all the members of a patent family, worldwide. Both can be used in a static "observation" or instantaneous "snapshot" mode or in a dynamic "predictive" way. This session will briefly outline the background to the development of these two very different services, and then illustrate the features and applications of each.

C4 Search strategies in the field of business methods

Sabine Kruspig

On the one hand, business methods are excluded from patentability if claimed as such (Art. 52 (2,3) EPC). On the other hand, technologies in the area of ICT (information and communication technology) industry become key enabler for new business environments. A short historical overview on “business methods” in the IPC, the requirements of EPC and PCT with respect to search documentation and the patentability of business method related patent applications will be given. The question of what is searched and where it can be searched remains a fascinating challenge within the legal frameworks, particularly in the area of computer-implemented business methods.  

C5 Help tools for patent information centres - presentation and discussion round

Lisa McDonald

In this session we will provide you with an overview of support materials available to help users make better use of patent information products and services. Participants will be shown where these materials can be found and in which formats they are available.

The subsequent discussion round will provide a platform for patent information centres to voice their requirements for support material for their users and to brainstorm with the EPO on how to improve their patent information  user support services.

D1 is a repeat of C2

D2 EPO search tools: Espacenet and Global Patent Index

Nigel Clarke, Björn Jürgens

The EPO has created sophisticated patent databases to enable its examiners to carry out the highest quality searches. The EPO has also made it possible to access those same databases via its publicly available search tools. The public tools can be used in PATLIB centres for your clients' searches. Of these tools, probably the most well-known is Espacenet. Espacenet is designed as the entry level search tool for general public use. However, less well known is Global Patent Index, based on the same databases as Espacenet but featuring more sophisticated search possibilities. GPI is aimed at the experienced patent searcher. We present Espacenet and GPI side by side. Which one to use? It's up to you!

D5 Trade marks and designs: classification schemes and search

Belkis Fava

The International Bureau of WIPO administers four international classification systems, namely, the International Patent Classification, the Nice and Vienna Classifications for the registration of marks and the Locarno Classification for the registration of industrial designs.

The first part of the presentation will show the basic structure and purpose of the international mark and design classifications and explain briefly the main differences in classification criteria and the classification revision process.

The second part of the presentation will focus on WIPO search tools and will show some examples on how to use the classifications for searching marks and designs in WIPO international registries.

Preparing patent maps and statistics and communicating them to your customers

Matthieu Azzopardi

The IP research service patent team of the National Institute of Industrial Property (INPI France) performs research on quotation for clients, public and private. They mainly include the study of prior art, novelty and patent monitoring. Nevertheless, new needs have appeared, and new services, called panoramas, had to be created in order to bring industrial property material to decision-maker, corporate staff, who desire to use patent information to get an overview of their environment.

With the increasing power of mapping and statistical tools, issues such as research collaborations, partnerships, licensing, technology dynamics, technological and geographical positioning, can be dealt with effectively. This presentation will focus on different graphical representations appropriated for decision-makers to optimise the knowledge of their market thanks to a previously unseen patent approach.

Social media - successful concepts for PATLIBs

Nigel Spencer, British Library

The British Library Business and IP Centre (BIPC) opened in 2006 and since that time has assisted over 400 000 businesses. The BIPC has made extensive use of social media to raise awareness of services well as engaging with users and other service providers and stimulating discussion on a range of topics of interest through groups like our LinkedIn British Library Entrepreneur Network.  We have also used our BIPCTV YouTube channel and our Innovation and Enterprise Blog to share valuable content. In this talk Nigel will share the BIPC experiences of using social media with a focus on learnings that have a practical application for PATLIBs.

Outlook on EPO's activities related to PATLIB centres

Heiko Wongel

PATLIB centres are an important multiplier of patent information for the EPO.

The EPO is offering a number of services and events to PATLIB centres for increasing their knowledge in patent information matters.

Intensifying this relation can enable PATLIB centres to apply their growing expertise to a larger number of shared tasks, supporting our common mission to make patent information better understood and even more useful for the citizens of Europe.

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