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Unit 1: The value of patent information, Part 1

the patent system, What is patent information, How can patent information be accessed?, Some alternatives to patents

Unit 1: The value of patent information, Part 1

Learning outcomes

Upon successful conclusion of this Unit, learners shall be capable of outlining:

  • the objective of the global patent framework

  • the various categories of patent data discoverable within patent filings

  • methods for retrieving patent information

  • certain substitutes for patents

  • several hazards associated with failing to execute patent information searches

  • the application of patent intelligence within corporate strategy. Specifically, regarding identifying prospective business collaborations, licensing prospects; and unsecured technologies; and in aiding mergers and acquisitions; technology transfer and Foreign Direct Investment

  • the WIPO Development Agenda and patent information, encompassing:

    • Traditional Knowledge (TK), Traditional Cultural Expressions (TCEs) and Genetic Resources (GRs);
    • Innovation and Technology Transfer;
    • The WIPO Technology and Innovation Support Centre (TISC) Program

1.1 Introduction - the patent system

Within the framework of the patent system, a government may grant an inventor a patent for a novel invention. The patent confers upon the proprietor the exclusive right to exploit the invention by preventing others from manufacturing, using, selling, offering for sale, or importing the invention without the patent holder's authorization. This right is territorial in nature, specifically country-dependent, and persists for a limited duration, typically a maximum of 20 years.

Nevertheless, this constitutes merely one aspect of the patent system. In exchange for the grant of an exclusive right, the patent system requires the inventor to provide a comprehensive disclosure of how the invention works, and this description is published, thereby rendering the invention accessible to the public. Consequently, for both the inventor and the community, there exists a cost and a benefit—the inventor gains the advantage of a temporary monopoly; and the public gains access to the details of the novel technology.

Therefore, under the patent system, novel inventions are protected for a limited period, and concurrently, their technical details are published a structure that fosters innovation and thereby promotes economic growth.

This secondary function, the dissemination of patent information, has led to the accumulation of millions of technological solutions addressing the numerous challenges individuals encounter. In this curriculum, we will examine this extensive repository of scientific knowledge and technical data disclosed in patent documents.

The course will concentrate on methods for searching and utilizing patent information. Owing to the internet and its data storage and retrieval capabilities, patent information is readily accessible. The immense quantity of available data has necessitated the development of systematic approaches for storing and retrieving patent information. Beyond addressing the applications of patent information, this course will also explain the techniques used internationally to classify and search patent information. You will have the opportunity to review examples of how inventors, companies, and R&D organizations leverage one of the most comprehensive technological information resources globally. Through the Search Drills, Self-Assessment Questions, etc. within the Units, you will be encouraged to conduct patent information searches and gain insights from the experience of patent searchers who use patent databases in their routine work.

1.2 What is patent information?

To submit a patent application, it must be filed with the relevant government authority. While procedural variations exist between countries, there are significant similarities. At a certain stage, the patent document is published, comprising both technical and legal information, such as:

  • a comprehensive description of how the invention works;
  • a definition of the invention in the claims. These claims establish the legal scope of the patent right with respect to the invention's essential features;
  • the identities of the inventor and the patent proprietor (which may be different entities);
  • filing, publication, and other relevant dates, along with various additional details.

The document may also contain citations to other patents or documents if they are relevant to the invention.

For the purposes of this curriculum, we will focus on the standard information contained in patent documents published by patent offices worldwide.

Various countries assign different Offices for this role. These bodies are frequently referred to as Intellectual Property Offices, Industrial Property Offices, or Patent Offices. Occasionally, the Office operates within a Ministry, such as the Ministry of Science and Technology, Trade, or Justice. A directory of Office websites is accessible at
www.wipo.int/directory/en/urls.jsp. In this course, the term ‘Patent Office’ is used, but it is intended to encompass all such offices.

The following is a concise overview of the different parts of a patent document; this topic is explored in more detail in Unit 2, Section 2.9.

Published patent documents worldwide are typically structured in a standardized manner. The front page usually displays so-called bibliographic information, including the invention's title, the filing date, and details of the inventor(s); it may also include an abstract (i.e., a summary of the invention), possibly accompanied by a drawing illustrating the invention.

The description constitutes the most important and informative part of the document from a technical perspective. It must describe the invention in sufficient detail so that a person skilled in the relevant technical field (e.g., pharmaceuticals, computing, agricultural machinery, biotechnology) can understand and carry out the invention without undue burden. In addition to the text, the description may be supported by drawings, flowcharts, circuit diagrams, or chemical structure diagrams.

The claims section of a published patent document represents the legal part. It defines the scope of protection and generally includes all the essential features of the invention. When drafting claims, the applicant seeks to obtain the broadest possible protection by formulating them as broadly as possible; conversely, during examination at the Patent Office, a patent examiner will ensure that the claims are amended, if necessary, so that they are no broader than justified in view of the prior art. This interaction between the applicant and the Office aims to maintain a balance between the applicant’s rights and those of potential competitors. In patent litigation, claim interpretation is the first step in determining the validity of a patent and whether infringement has occurred.

1.3 How can patent information be accessed?

Prior to the advent of the internet, the majority of patent searchers were required to retrieve patent information by manually sifting through hard copies of patent documents housed in large paper archives, which were often accessible only in major libraries.

Currently, many Patent Offices maintain patent information in specialized databases accessible via the internet. Individuals with internet access can search, free of charge, through repositories of patent information, generally searchable by keywords, classifications, names, dates, etc., as will be discussed in detail in Units 2 and 3.

These databases serve as a rich source of information and include those operated by the World Intellectual Property Organization (WIPO), the European, Latin American, Chinese, Japanese, Korean, and United States Patent Offices. WIPO’s website maintains an extensive list of such databases, providing direct links at
www.wipo.int/ipdl/en/resources/links.html

Patent documents comprise descriptions of scientific and technical principles alongside practical details of processes, devices, compositions, etc. Across many technical fields, they constitute one of the most comprehensive and up-to-date sources of technical information available.

Third parties may directly use the technical information contained in a patent document when no patent is in force—for example, because protection was not sought in a particular jurisdiction, or because the patent has expired. Nevertheless, if a patent is in force, other inventors may still benefit by designing around the patent, i.e., finding an alternative solution to the problem addressed by the patent such that it does not fall within the scope of protection of the patent in force.

More than two million patent applications are filed annually worldwide. While many applications do not proceed to grant and granted patents last for a maximum of 20 years, there are more than eight million patents in force globally. Some countries publish only granted patents; others publish both applications and granted patents. The total number of published patent documents is approximately two million per year, across multiple languages and technical fields.

It should be noted that a degree of duplication exists, as an application for the same invention may be filed in multiple countries—thus a single invention can result in several patent documents (referred to as a patent family). On average, there are two or three patent applications for each protected invention.

It is estimated that more than 70 million patent documents have been published to date. It is important to note that approximately two-thirds of the technical information disclosed in patents is not published in any other source. This makes patent information one of the most comprehensive collections of technical data available.^2 In some technologies, only recently published documents are relevant, and older documents are primarily of historical interest. However, in many areas relating to everyday products, such as ladders, brushes, clothing, furniture, and hand tools, older patents may still be highly relevant.

1.4 Some alternatives to patents

You may, however, be able to protect your invention through alternative means, either in addition to or instead of obtaining a patent. For example:

  • Utility models, sometimes referred to as petty patents or innovation patents, are similar to patents but are generally cheaper, faster, and easier to obtain. The requirements for obtaining a utility model are less stringent than those for patents and may not involve substantive examination, for example. However, they do not provide the same level of protection as patents and do not last as long. Furthermore, utility model protection is available only in certain technical fields, and not all countries offer such protection.

  • Industrial designs (sometimes referred to as registered designs or design patents) protect the ornamental or aesthetic aspects, namely the shape or appearance of a product. They are commonly used in sectors such as technical and medical instruments, household electrical appliances, and automobiles.

  • The layout design (topography) of integrated circuits may be protected—in some jurisdictions under specific legislation, and in others under broader intellectual property frameworks, such as copyright, patents, utility models, industrial designs, or unfair competition law.

  • Computer programs may be protected by copyright; however, computer programs in the form of computer-implemented inventions may also be eligible for patent protection (see Unit 3 for further discussion).

  • A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademark protection may be used to prevent third parties from exploiting the name and reputation of a business.

  • Any confidential business information that provides a competitive advantage may be considered a trade secret. Trade secrets, which can include manufacturing, industrial, and commercial information, may be protected under specific laws designed for that purpose, under unfair competition law, or through contractual agreements with third parties.

Source: www.wipo.int/sme/en/ip_business/patents/patent_information.htm

Certain databases include utility models and industrial designs alongside patents, as they may provide valuable prior art.

The Secretariat of WIPO assumes no liability or responsibility with regard to the transformation or translation of the original content. World Intellectual Property Organization (WIPO) (2023). WIPO Patent Drafting Manual, Second edition. Geneva: WIPO. DOI: 10.34667/tind.44657