Report Overview

This report was developed in a consultancy for IP Australia, but has been expanded to make it relevant for all jurisdictions. It provides an informed view of current and future directions in IP related information search and retrieval. It is particularly relevant for IP professionals in Australia, but also holds useful observations and applications for IP professionals around the world. We analyse the technical trends in search and character recognition software and how these interact with the needs of innovators. Innovation is better enabled if the information that government patent offices provide is clear and readily searchable.  Fee-charging patent search services may not provide the best information.

Australian patent data, unlike trademark data and plant variety rights data, is currently largely unavailable to the public in a unified, full text searchable form.  This report will examine some of the mechanisms that are available to searchers of IP data with an eye to identifying the best features to incorporate into IP services. The recommendations are made in response to internal (examiners) and external (the public, particularly innovators and implementers of technology) stakeholders’ needs.

The report will also look at pathways to interim and future solutions to support these stakeholders.

Report Components:

The status of IP informatics and the need for full text searching

The IP informatics landscape has undergone significant change in recent years.  Some of these changes relate primarily to information technology and the sociological change that advances in this area are bringing about:

The latter provides a new window on possibilities that neither national offices nor “value-added” commercial providers have yet realised, to add true value to IP data and metadata.1 

Why is this useful and timely? National offices need to consider not only how to handle the volumes of data for proper prior art searches, but how to foster healthy domestic innovation for economic growth. 

Formerly, national offices worldwide could consider themselves as independent actors while fulfilling their roles as receiving offices for international patent filings.  However, increasingly, international patent harmonisation efforts places pressure on these offices to act uniformly, despite potentially different national agendas. There have been many other changes in the landscape in recent years, related to trade, that in combination with IT and IP factors result in both disadvantages and opportunities for Australian innovation and the Australian economy:

We suggest that the provision of a search service, offering not only full text searching of Australian patents but the harmonised datasets of other important jurisdictions, will support Australian economic development.

Much of the cost of developing technology de novo or extending the use of technology in Australia can be economised by uncovering enabling descriptions of technology and shedding light on where this technology can be freely used.

The intent of the enabling description requirement was to provide information on the technology so that it could be used outside the monopoly grant and readily improved. Thus, there is a latent potential in the patent system for prudent legal use of technology that has been described but is not subject to valid claims in a particular jurisdiction. 

Where technology has been claimed, good patent informatics can support the discovery of invalidating information such as prior art, possible invent-arounds and invent-beyonds.  It is also reasonable to use informatics to encourage wide licensing and delivery of patented technology.

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1 For example, in CAMBIA’s Canberra-based Patent Lens IT team, we are working on developments such as links to status information, tutorials, and tools for annotation, for exampling regarding licensing, that may be able to lead users of patent data to more robust conclusions on where the dominant rights are held.

Summary of the Report

This report is structured in five components: 

  1. A discussion of emerging and potential new uses for IP information.
  2. An overview of currently available IP information sites and approaches, with appendices providing commentary on and analysis of their strengths and weaknesses.
  3. A discussion of emerging trends in searching and accessing IP information of special relevance to Australian stakeholders, together with likely future directions in this field. These trends include:
    In these two chapters, much of the information from other sites was inferred through a number of iterative searches in several art areas, including mechanical, chemical, biotechnology and nanotechnology.  Due to our detailed knowledge of how our systems work, we have been able to provide exact information on the mechanisms that are used in the CAMBIA BiOS Patent Lens, and the subset of challenges presented with life sciences as exemplary of the underlying information management and technology implications and issues at stake.
  4. There are aspects of search and retrieval of trademarks and plant variety information that present some specific challenges.  Here again, the perspective offered is that the interests of the internal customers, i.e. the examiners, and the external customers and stakeholders (such as business marketers, packaging industries, breeders, customs inspectors, and the public in general) may be different, but understanding of trends in search and retrieval and future plans for implementation of certain improvements relative to these trends may be beneficial to both.
  5. Aspects of plant variety rights including sui generis systems.

This chapter concludes that all three preceding chapters support a recommendation and provide practical advice in a single major direction:  that the most urgent and important step is implementation of a Boolean accessible, scalable search engine capable of doing full-text searches of Australian patent data, with unified searching as soon as possible of Australian data together with the largest patent data sets, namely the US, EPO and PCT data. 

Status data on Australian patent applications and those in the same patent family in other jurisdictions should be incorporated as soon as possible in the portions or versions of the Australian database available to the public, so as not to disadvantage Australian inventors and investors. 

Support for searches that assist in understanding breadth and interpretation of claims can and should be developed, even in the challenging areas of chemistry and biological sequence data.  While the PCT data already requires a search engine and OCR that can handle Japanese language, eventual incorporation of at least the Chinese and Korean datasets has similar requirements and should be planned.

Emerging and potential new uses for IP information

This chapter considers emerging and potential new uses of IP information for National Patent Offices, their customers and other stakeholders. We consider that these customers and stakeholders comprise both internal (examiners) and external, which includes the public and not only innovators and implementers of technology.  In the increasingly globalised world of trade, we also recognise that innovation systems must produce technologies deliverable to markets outside the country of origin.  

In the context of the worldwide trend for patent transparency, it is now possible to conceive of wise use of search trends to put countries providing excellent patent search facilities in a leadership position rather than in catch-up mode.  It is also possible to use this total transparency to allow the leverage of many rights into industry, environment and social prosperity.

Searching of IP information for trade leverage

The last twenty years has seen an unprecedented increase in worldwide patenting.  Article 7 of the international treaty on Trade Related aspects of Intellectual Property rights (TRIPs) states “the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.”  Increased compliance with TRIPs is seeing many national patent systems inundated with patent filings from major overseas corporations. This is causing new barriers but also new opportunities including:

IP barriers may be as significant, or more, than tariffs and other trade barriers in affecting market pull.  Though a national entity may develop and own a technology, injunctions can force cessation of production and sales.  Imports may also be stopped or delayed in countries where blocking patents are in force, even if such patents are vulnerable to later legal challenge.

Thus, we see a necessary extension of IP informatics and search considerations to emerging economies and their markets of interest.

It is in the interest of all national governments to consider how intellectual property information could be leveraged for the continuing industrial, cultural and financial development of export markets. Searchable and timely information on technology being constrained in overseas patents is important to a very wide community of national patent office stakeholders.  

Stakeholders interested in improved search technology

We consider stakeholders with invested interests in improved search technology to be:

Commercialisation and Production Industries:

Financial Community and Public Good Funders:

Inventors, Examiners and Legal Professionals:

Utilising IP information for Trade Leverage

A number of  key markets are emerging economies with recently developed IP systems. Effective public access to IP information emerging within these systems has become necessary to foster local innovation and economic growth. Clearly, researchers, business people and stakeholders in the innovation process need to find, combine and utilize IP information from both domestic and foreign jurisdictions. This is key to making good decisions about technologies, potential markets, and partners.  

Therefore, IP offices must consider new solutions to search and retrieval technology. Improved access to IP information is not only vital to innovation, but also urgent.  Therefore, both long-term investment and rapidly placed interim solutions will significantly improve strategic use of IP information. It will be important to start with the right technology, that is flexible enough to expand while long term solutions are set in place.

At a minimum, innovation stakeholders need:

Searching IP information to foster technology development

There is significant potential in the patent system for strategic and legal use of technology that has been described but is not subject to valid claims in a particular jurisdiction. This is because the intent of an enabling description is to provide information on the technology so that it can be used outside the monopoly grant and readily improved.

The cost of developing technology de novo  or extending use of technology could be minimised by uncovering enabling descriptions of technology and shedding light on where this technology can be freely used.

CAMBIA’s focus has been the development of IP information as a reservoir for understanding constraints related to existing technology. In doing so we find open opportunities for development or improvement.  Our opinion and experience is that this is highly successful, a view shared by the EPO:
“Because of a lack of information, existing inventions are re-invented, problems that have already be solved are solved again, and products that already are on the market are re-developed. Duplication of efforts in this way costs European industry US $ 20 000 000 000 every year - simply because of the lack of information… 80% of technical information is published in patent documentation - and often nowhere else. “

Key jurisdictions with growing innovation systems are focusing on developing, using and enforcing their patent systems.  For example, China and Korea are prolific innovators in a number of areas and India and Brazil are leading the way for software and drug production processes.  The availability of IP databases from multiple jurisdictions, searchable simultaneously, would create major opportunities for technology discovery.   Making IP databases more accessible and interlinked is essential to achieving this.

Availability to patent status information fosters technology development

The opportunity for technology discovery increases if patent status information (e.g. INPADOC) is incorporated into patent information. Status information from the USPTO and other mature patenting systems is currently available via their patent offices. However, this is not in a friendly interface that allows comparison with other jurisdictions.

With status information users can readily locate information in the jurisdiction(s) of interest. Also, an interesting technology may not be patented in particular jurisdictions due to exhaustion of patenting rights. Leads obtained through patent status information can then be verified and further developed to allow the leverage of technologies, into local industry, environment and social prosperity.

Searching IP information to place markets in a leadership position

In the context of the worldwide trend for patent reform, it is now possible to conceive that wise use of search informatics would put nations in a leadership position rather than catch-up mode.  This would lead to increased transparency and integration. 

The cost and time involved in obtaining data lengthens the patent drafting process and the examination process.  However, unless data searches actually uncover the “prior art” relevant to validity, they do not contribute to increased rigor of patent grants.  Instead, they contribute to opportunity costs in innovation where investment has been misdirected into technology that already exists elsewhere. 

Patent grants unrelated to deliverability, furthermore, increase rather than decrease the fear, uncertainty and doubt (FUD, a technical term used in the software industry) which is a disincentive to investors and innovators.  

Better data-handling will support obligations under TRIPS and other agreements. It is also supportive of the public good to examine the innovation system and find where incentives are occurring and by what behavior.  

The concept of a monopoly grant is, with varying emphasis in different jurisdictions, an economic exchange.  It is an incentive for enabling disclosure of inventions in the arts that is useful to the public.  Monopoly grants also bring leverage to capital recruited into the downstream portions of the innovation chain. 

Importance of accessible IP information when processing patents

Discovery of invalidating prior art should be made before a patent is granted.  Failure to do so blows investor confidence and is negative to the economy.  In processing patents National Patent Offices should conduct highly effective prior art searches of:

Conducting effective searches would ensure that all prior art invalidating claims of patent applications are found. Commitment to the rigour of the patent grants ensures patent monopolies are granted for truly novel and inventive work and not for obvious innovation in relation to prior art.

Developing and encouraging IP information commenting processes will harness the ability of the wider public to uncover prior art that may have been missed by the patent office.  Also, increasing accessibility to patent documents and decreasing the cost of obtaining them will validate rigour that went into the allowance of past patents. 

Advice for National Patent Offices

Service to patent offices in this section requires discussion of revenue implications.  National Patent Offices may consider that filing fees may be raised to cover increased search costs in order to gain such increased respect.   The following recommendations offer concomitant opportunities to increase respect for the patent system in ways that may have a smaller effect on patent examination costs, or to mitigate effects on revenue streams while supporting the domestic economy in a wide-ranging way.

Recommendations

  1. Support other means of disclosure for innovations Provide and support other means of disclosure for innovations, by disseminating awareness of incentives to innovation that may be less costly, in both real and opportunity cost and time, different from the process of obtaining a monopoly grant.
  2. Adopt "open source" practices In software development, “open source” alternatives have been used to generate largely pre-competitive innovations in a “protected commons”.  This has resulted in thousands of projects with over a million contributors worldwide. These projects are bringing billions of dollars to small, medium and large enterprise. An "open source" model can be followed in other industries. Patent applications are still being filed in this area for truly inventive technologies for which the applicant desires a competitive advantage.  However, the known alternative of the open source protected commons has allowed many innovations to come to light that might not have been disclosed in patent applications. Examples include innovations too small to justify the cost of patenting, still comprising useful adjustments in implementation or a productive basis for improvement. Some of the most active inventors in this area are scattered worldwide rather than concentrated in the Trilateral jurisdictions where most of the world’s patent filing occurs (Japan, US and EPO). In an "open source" model, “examination” is provided by the peer review of the user community, and incentive by known capability for such technology to be used in deliverables.
  3. Encourage wider licensing of patented technology By providing incentives to license patented technology widely, inventions can be used and improved.  For example, the Brazilian patent office has undertaken measures to charge higher annuities to entities that cannot show a technology is being licensed in country.  In a similar vein, the patent grant may be subject to earlier lapse in enforceability if the patentee cannot show evidence of implementation in country.  Similar measures in any country could provide disincentives for an alien patentee to maintain  a patent that largely serves the purpose only of excluding nationals from using the technology.

In supporting these practices patent offices would find new solutions to foster and expand innovation, leading to economic growth.

Current IP Information Systems

The primary need of a national Patent Office for intellectual property informatics analysis is related to patents searching and use of patents search information by its internal and external stakeholders.  Examiners need ready access to the patent data set, and they need to be able to do prior art searching that will support granting only claims with a reasonable presumption of validity.  The public also needs ready access to the patent data set, and the patent data sets of other jurisdictions, to do technology searching and freedom to operate analysis for specific innovations.

Over recent years the volume of filings and related data has greatly increased, as has the capacity of IT systems to store, search, and process this material. At the same time the growth of the Internet has changed public expectations and influenced the needs of examiners and the public, particularly with respect to prior art searching.

National IP offices, fee-based and subscription-based data providers and public good providers have responded to these challenges in different ways.  Clearly, there are a variety of potential measures of what constitutes acceptable search functionality and performance; by some metrics, very few providers meet the high standards of public requirements.

Scope of the study

This chapter presents an overview of the strengths and weaknesses of these different approaches based on the perspectives of two different broad classes of users:

  1. The user skilled in patent terminology and searching, representing primarily examiners but also patent attorneys able to make ready use of interfaces that demand or offer, for example, Boolean queries, patent classification systems such as IPC and ECLA, and searches of patent-specific data fields such as “inventor” and “claims”.

    The assumption was made that the primary requirement of such a user is to find information related to validity of patent claims. In particular, this user should be able to find, for any patent application, the entirety of prior art that should require modification of claims such that no claim reads on any available prior art.

    The needs of this user are very important to the credibility and quality of a national patent system. Patents issued may be respected more widely if the metes and bounds of claims are clear and non-overlapping, and the presumption of validity following examination is well supported.

  2. The innovator or user of technology, who may not be an expert in patent terminology (though possibly expert in the terminology of a particular field of art).  In this document we refer to the “public” technology searcher.
    This user has a strong economic interest in quality intellectual property informatics.  The desire is to avoid wasteful investment, either in attempts to develop and patent technology that is already in the prior art, or in attempts to implement and market technology covered by exclusionary rights to which access may not be available.

    A clear understanding of what is claimed must be supported by the availability of definitions and citations from the specifications (and any literature deemed relevant in construing claims, such as contemporaneous dictionaries).  For such a user, ability to search titles and abstracts only would be quite insufficient.  Full text searching of specifications is a requirement.

    Prior art is certainly of interest to this type of user, including both patent and non-patent data, but so is status information (where is this patent in force?) and applicant or assignee information (from which entities would practicing this technology require a license?).

    The needs of this user are very germane to IP Australia’s function within the innovation system upheld by Australian and international intellectual property law. If such users are facilitated in their attempts to invent new technology rather than re-inventing the wheel, and to commercialise technology in non-infringing ways, the economy benefits and social goods are multiplied.

Analysis involved in the study

In this report we provide user analysis of a number of representative public and commercial IP information providers.  A set of queries was devised to allow direct comparison of the search engines, described below.   Observations were made on a variety of parameters, services and features of special interest to each of the two types of users mentioned above.  We also noted convenience metrics such as speed and whether patent documents can be downloaded in entirety as PDF files.

While analysis of all available providers would be well beyond the scope of this report, it was possible to choose the major providers, in that consolidation has been a key trend within the commercial sector, with multi-nationals such as the Thomson Corporation controlling a number of previously independent providers.  A number of databases, such as the Derwent World Patent Index (DWPI), have become industry standards and are used by a number of otherwise competing providers.  For this study we also looked at a number of additional providers, aiming to select primarily those that use somewhat different search approaches than the standard, and a number of national patent offices.

Despite the concentration of private search service ownership and the sharing of some core resources, the range and complexity of searching options available is such that conducting an effective search using existing tools is in no way straightforward for Australian innovators. Even these databases have gaps in data, sometimes caused by delays with access to raw data.2  For Australian patent literature, we were unable to locate providers that would allow a comprehensive search of full specification texts.

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2http://scientific.thomson.com/support/patents/coverage/latestupdates/closinggaps/

Search strategy and queries

A number of test cases were designed for assessing the different databases.  Eight US or EP utility patents or PCT patent applications in different art areas (chemistry / biotechnology; mechanical; electrical) and a design patent were chosen to represent technologies on which extensive searches were conducted, while up to five additional cases were used for more in-depth study of sites that claim to use divergent search technology. For non-US patents, each of the documents had an associated search report that could be utilised as one measure of whether the use of a particular database found the same prior art that a European examiner would have noted.

It is useful to remember that the claims in the original patent application may not bear resemblance to the claims in the issued patent.  Rather than focus on claim structure, the approach of an examiner is to determine the inventive concept and base a search on that. 

In general, a patent examiner will approach finding prior art by a combination of IPC designation(s) (US classifications for examiners at the USPTO) or ECLA (EPO) classifications, keywords, and the inventor names.. The latter are important because invalidating prior art is most often found in public disclosures by the inventors. 

The public technology searcher is more likely to bypass the use of classifications, but may add the use of assignee/applicant names and may be able to use keywords in a way that reflects more in-depth field-specific knowledge.

Classification codes are assigned precisely on the basis of the technology field of the invention; this is where related art will be most likely found.  Thus, for each of these patent documents, the initial search for examiners used the primary IPC.  As expected, too many results were returned.  Further refinement of the search used keywords.  Given the amount of time examiners are generally allowed for a search, USPTO examiners tend to target obtaining 50-100 results.3 Titles, abstracts, and, at times, drawings are scanned to target the relevant documents. 

Though searches on classification codes typically returned more documents than were relevant, in some fields of art they failed to find the most relevant documents.  For example, inventions that are part of “nanotechnology” may contain elements of different art areas.  To improve the ability to search and examine nanotechnology-related patents, a new cross-reference digest (to be eventually replaced by a classification schedule) has been established by the USPTO and other patent offices may follow suit, but no patent or application has yet been assigned to the new classification.   Nano-scale objects themselves are not new, and for our main example case, US6689338 (“Bioconjugates of nanoparticles as radiopharmaceuticals”), searches using “nano*” in combination with the classification of the main inventive subject matter do find patent documents that appeared to be highly relevant in many of the databases.

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3Personal communication

Features for Comparison

Searches involve multiple steps: the formulation of queries, input of the queries via an interface, translation of the queries into actions by the search engine(s), the interaction of the search engines with data, collation of results, presentation of the results in some ranked order, often followed by refinement of the query for the start of a new cycle.  Thus, there are many points at which qualities of the various sites and services can differ, and many points at which faults in transmission, collectively known as "bugs", can occur.  At the same time, there are many points of intervention to make searches perform as the user intends. Features that are of interest to the needs of a patent examiner were chosen in four main categories:  input, data, and output, and other user attributes:
Input criteria

Data sources

Output criteria

Other criteria

To represent not only the search needs of the examiner but also the “public” user viewpoint, we assessed the following additional criteria, with the assumption that the user would want to carry out a series of increasingly refined or increasingly broad searches related to technology investigation and freedom to operate (FTO), and then to find out considerably more information relating to the capability to use technology in particular documents.
Input criteria

Data sources relating to particular identified patent documents

Output criteria

Results and Observations

National patent offices (we examined EPO, WIPO, JPO, SIPO, KIPO, USPTO, and IP Australia) generally provide only their own patent data, but with quite varied interfaces. 

By the other public sites and the commercial sites, the data coverage is generally within a minimal set:  US, EP, PCT, sometimes JP and INPADOC.  Other occasionally included countries are typically European countries - notably the United Kingdom, Germany, and France.  Questel-Orbit appeared to have the largest set of countries covered, although coverage from some of these countries was admittedly inconsistent.  The commonality of datasets is not surprising given that there are a limited number of organizations that produce the data; the providers here most likely procure their data from these few producers. 

Factors that set apart these surveyed providers comprise input format, the results format and the ease of using the site.  Although less important, convenience factors such as the speed of results being returned and navigation played a role. 

As discussed below, most of the providers have an input interface that is at least usable by an examiner.  Most of the sites use “fill-in the blanks” forms, in which the form contains a set of fields (e.g. assignee, title, abstract, inventor).  As an alternative, there may be a blank box that accepts Boolean queries for which the user specifies the field(s) associated with each search term.  Refining queries depended on the style of input.  Depending on the provider, the user has to return to the form or can directly modify the query that is written out in standard Boolean format.  As noted below, some sites retained a search history, making the refinement of previous searches more convenient.  With regard to inputs, there was no apparent difference which technology area was being queried, with the following exceptions:  design patents often required a different interface, and a user attempting to search chemical structures or biological sequences would be extremely limited in the ability to find prior art read on by the claims. 

The biggest difference between providers, and usually the biggest deficiency area, is the output i.e. the results list.  Capabilities to reformat and re-sort the list and to choose fields for display can greatly enhance finding the closest prior art where there are many search results.  Unfortunately, the lack of transparency and inflexibility of Google is being mirrored by many intellectual property data providers, flexibility being sacrificed for seeming simplicity.  The best providers in this area are Delphion and WIPS, and CAMBIA’s Patent Lens. 

A few of the commercial data providers also have available non-patent databases, some of which are also available to the public. Among the fee-based and subscription-based sites, DialogPro and STNeasy have a limited number of databases (about 100) and Dialog and Lexis have many hundreds each. 
Whether these databases are sufficient for the examiner searching non-patent literature depends upon the technology area.  For applications with claims to specific biological sequences, the searcher needs GenBank at minimum, which can be searched by the public cost-free through NCBI (to which CAMBIA provides a link) and optimally Derwent’s gene sequence bank that also has sequences published in patents.  For biotechnology (other than sequences), PubMed4 and BIOSIS are important non-patent databases. Several of the commercial providers charge fees for searching these databases, and the searches are usually separate from the patent data. 
For chemical patent applications, a database where chemical structures are searchable is often necessary; STN, in connection with CAS, does have such a database (but not in STNeasy).  CAMBIA will investigate the possibility of obtaining this data for public good use.
The mechanical arts field typically relies mainly on patents for prior art.  For computer and software technology, there is ongoing debate about where and how to do prior art searches of non-patent literature.

Most of the comments related to utility patent document searching also apply to design patents.  Only one of the databases (PatentCafe) allowed the user to choose only design patents for the search.  As design classifications are the primary search terms, its unclear that this sub-division is much help because utility patents that may have a design element will be excluded from the results list, and vice versa.  This feature may even be detrimental, as design patents can be valid prior art against utility patents and utility patents can be cited against design patents.  Searching for design patent prior art in the non-patent literature is also gravely limited by reliance on classification for most design application examination.

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4CAMBIA provides a link to PubMed and will investigate the development of APIs to this and other NCBI databases to make the searches more seamless.

Strengths and Weaknesses of Search Sites

The following is an analysis of different IP search sites currently available.

Selected National Patent Offices

No- Charge Providers

Commercial Providers

Non-Patent Search Sites (for prior art)

IP Australia

The site is difficult to navigate because it is in multiple sections with patents from different groupings available either in the web interface or via a downloaded software client:

IP Australia

Patsearch

Patsearch  (running on the Patent Administration and Management System – PAMS database): This database is accessible online, containing bibliographic and legal status information on innovation patent applications filed from 24/05/2001 and complete and provisional patent applications filed from 05/07/2002. Search fields for Patsearch include:

IP Australia

Patent Administration System

PatAdmin, part of the Patents Mainframe Databases.

This database is accessible via a software client that must be downloaded and installed on a local machine from a different page on the IP Australia website.  PatAdmin provides bibliographic and legal status information of patent documents (applications and granted patents) filed between 01/1979 to 04/07/2002. Search fields for PatAdmin (via the software client) include:

IP Australia

Patent Indexing System

PatIndex, part of the Patents Mainframe Databases

This database is also accessible via a software client downloadable from the IP Australia website, and the title and number of patent documents (applications and granted patents) filed between 01/1979 to 04/07/2002, and seems to cater particularly for searchers to find prior art in these patent documents by using the IPC code. Patent titles and corresponding document numbers are searched by one or maximally two codes, connected by AND, OR or NOT.  The resulting list can be narrowed down further by either conducting more IPC code searches, restricting the application year, excluding the lapsed/ceased patent documents, and using keywords in the bibliographic information (e.g. word in title or applicant).

The ‘Advanced’ search provides searching for terms, dates, and numbers stated in the bibliographic information.  Two terms/dates/numbers are available per search.

IP Australia

Patent Specifications Main Page

This database is accessible online, containing full text images of AU-A and AU-B patent documents from 17/12/1998 (these documents have navigation to the abstract, description, drawings and claims in the documents) and AU documents that did not enter via the two international routes (Paris and PCT) from 1975 (these do not have navigations to the separate sections in a patent document). Search for patent documents can be done by:

Application/serial number concordance main page

This search finds corresponding numbers of patent documents that have been renumbered from the Patent Mainframe database system when they were moved to the PAMS database, using the application number (old or new system) or the patent serial number.

IP Australia

Conclusion

None of the patent search/retrieval engines offer a term search within particular fields of document text, i.e. claims, description, full text. Searching for information on the Patents mainframe can be very difficult for a public, non-examiner user because of the requirement for knowledge of the commands used on the telnet interface.   Full understanding of the coverage of each database (Patents mainframe and PAMS) is needed for the searcher to be able to retrieve information on particular documents.

IP Australia's website acknowledges that there are issues with data completeness and quality and a need to consult several distinct databases to conduct basic searches.   It is further necessary to go to INPADOC for much of the status information, and we found many issues with accuracy and ongoing updates in the INPADOC data.

However, the mere fact that data are distributed over several systems during periods of redevelopment need not in itself impact negatively on public use of that information. For example, the Australian Trade Mark Online Search System (ATMOSS) has enhanced public access, while making use of data input and is maintained on a legacy mainframe system as well as a more recent web-based on-file filing system.
From the perspective of Australian innovators, it would be desirable to see:

European Patent Office (EPO)

The EPO site provides wide data coverage with legal status and family data (INPADOC) of patent documents for over 40 jurisdictions. INPADOC patent family documents are summarised by patent number and not presented separately by publication (e.g. EP123456-A1 and EP123456-A2 are summarised as one patent document with A1 and A2 information contained in a single file).

A major drawback of the EPO public search site is that it doesn't support full text searching. Searches can only be done for one database at a time and no term searches can be done in claims or full text.  For non-English patent documents, searching for terms in the title or abstract cannot be done and no manual Boolean search options are available.  Furthermore, ‘description’ and ‘claims’ fields in the individual document information page are sometimes replaced by a corresponding WO or EP document if the information from the actual jurisdiction is not available. This can be misleading if you want to conduct claims analysis on a granted patent for a particular jurisdiction.

The EPO site does allow bibliographic searching of patent documents from a number of jurisdictions as well as to patent family and legal status data through INPADOC. However, EPO states that the INPADOC legal status is incomplete or not up to date, and therefore the information provided on the document information page may not be accurate. This same limitation applies to all providers that use the INPADOC data purchased from the EPO.

The epoline® Online Public File Inspection service  gives access to prosecution history and status.  
In addition, the EPO has been active in the development of software, such as EPOQUE Net, for the internal use of national offices as a revenue generation mechanism set up in co-operation with the private sector.5

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5http://www.empolis.com/en/20D6DCCC63D14F7F80C2163B990DBFA5.php

United States Patent and Trade Mark Office (USPTO)

The USPTO was one of the first offices to improve their public search functionality through initiatives such as web based full text searching.  The USPTO also allows subscriber based FTP access to a comprehensive range of timely, high quality machine readable IP data, enabling third parties to offer innovative services that add functionality beyond that offered by the USPTO public search site.   For example, this is the mechanism by which CAMBIA obtains full US patent and US application data. 

The USPTO site is best for quick viewing or capture of text, although only US data is available here.  The search interface is simplistic, with sophisticated searches being difficult, if not impossible.  To view images requires a specialised viewer of TIFF images.  The output is a long list of patent numbers and titles, with the corresponding links leading to full text.

The USPTO provides online access to status information though the Patent Application Information Retrieval (PAIR) system, and there is a database of assignees that is updated regularly.

Japanese Patent Office (JPO)

The JPO has an effective public search interface for users of Japanese language, but provides only limited English language access support .  As an example, for design patents, the English interface only provides designs search by registration number or application number of rejected designs, whereas the Japanese interface provides additional search options, including the text search option that was introduced with the incorporation of the electronic publication of registered designs from January 2000.

The JPO has been very active in the area of machine translation (MT) with a view to facilitating access in Japanese to patent documents published in European languages.  There is less accessibility in the other direction. Electronic documents (1993 onwards) have machine translations of Japanese patent documents into English, which are of incomplete quality and still under development but sufficient for a person skilled in the art to be able to understand the content. 

The JPO provides term searches within claims.  Search terms cannot be easily refined. For example returning to the search page by the ‘back’ button on the browser and modifying the search term does not allow one to do another search on that page.  Instead, the page must be refreshed and all terms and fields redefined and/or re-entered.

Patent documents before 1993 only exist as scanned images, so the claims cannot be accessed without obtaining the entire document. Searching for terms in full text is not available (possibly because the pre-1993 documents have not been converted into electronic format). Manual Boolean expression search (to create a personalised Boolean expression) is not available.

We found that inventor names were missing from certain PCT applications (possibly all PCT applications published before 1993) that entered national phase in Japan, making it difficult to search for patents using inventor names (PDF files of PCT applications published after 1993 also do not seem to have the inventor name stated in the national phase application).

Brief legal status is provided for Patent Abstracts of Japan (PAJ) documents where available.

State Intellectual Property Office (SIPO) China

Use of this site is free for downloading patent documents, with images available as TIFF files, and legal status can be obtained, as at the CNIPR site (see below), but users may need to download a software navigator to view Chinese patent specifications and the site is slow in retrieving data.  SIPO also offers China Intellectual Property Net (CNIPR), which offers a Boolean search option with capabilities to refine the search.  It is also possible to search legal status by application number or publication date .

CNIPR provides information about whether or not a patent is granted or lapsed, and information on whether or when a patent application has been requested for examination, is abandoned, or deemed as withdrawal, etc.  A synonym search for possible words with same or similar meaning is also available.

However, the site is not free – a patent search at CNIPR site requires registration and the purchase of reading cards, despite the fact that searching (without downloading) for Chinese and international patents is free for cardholders.  Reading cards can be purchased at three levels - cards valued at 500, 1000 and 3000 Chinese Yuan (approximately $80, $165, $485 Australian dollars respectively). These cards allow users to download 500, 1250 and 6000 pages of Chinese patent specifications respectively, or 0, 5000 and 20,000 international patent documents respectively.

The searchable parts of a patent at both sites are limited to the bibliography page including:

Korean Intellectual Property Office (KIPO)

A search facility in English is offered via that Korean Intellectual Property Institute. At this site, only the interface for "Patent & Utility Model Search" is translated into English, while more is available for users of the Korean language to perform keyword searches. It is possible to retrieve documents by using English search terms only if the title or abstract contains English words. 

There is also a Korean Patent Abstract (KPA) search with the interface in English, but only for Korean patents published with English abstracts, from 1979 for examined patent publications and 2000 for unexamined patent publications.   The latter does, however, provide legal status information in English.

World Intellectual Property Office (WIPO

WIPO’s data coverage is small, with PCT documents available only from 1997, severely limiting its usefulness.  One advantage though, is the links to other documents such as the examination report and priority application(s). However, international reports can only be accessed as the PDF files, less readily searchable.

WIPO recognises the limitations of its data as a resource for finding prior art and improving the quality of patents internationally, and is working to improve this. WIPO has added full text search functionality for recent PCT applications to its on-line site and further improvements are promised. For the subset of applications that have this search functionality, terms can be searched within full text and claims. Terms can also be searched in French.

WIPO employees have been cooperating with CAMBIA and recognise consonance with the goals of CAMBIA’s BiOS Initiative.6  On the WIPO site, as on CAMBIA’s Patent Lens, it is possible to manually create a Boolean expression and it has the Boolean operator ‘NEAR’. The period range can be specified (by weekly increments only). Electronic descriptions are available and the claims can be readily accessed.

For status information, each individual document has a link to a chart describing the national phase entry deadline for PCT member States.

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6http://www.bios.net/daisy/bios/48

Espacenet

While this site has improved considerably over the years, the extent of coverage has not increased significantly and substantial disadvantages limit its usefulness.  Notably, the results list is disorganised; no obvious parameters dictate the order of display, nor is there any ability to impose some order on it.  Thus, unless the search is limited to just the EP data, it is a formidable task to wade through the results.  In addition, full PDFs are not yet available for download. 

Surf IP

This site, which has both a free-of-charge and a “premium” fee-based component, is maintained by the Singapore government and advertises a large data set with access to at least nine national patent office databases and other technical, business and search engine sources. A few datasets are not found elsewhere (Singapore; Taipei and Thailand). It was also of particular interest for access to the Korean and Japan patent office databases, but no documents from those databases could be retrieved during our trials (repeated error messages on the results page). The information retrieval speed of this site is extremely slow (over a minute per search), and in some sessions every search attempted resulted in either a time-out or no results.

Although with every query we found that irrelevant patent documents were retrieved, our analysis of the sources of these problems may be instructive for IP Australia if consideration is being giving to Boolean interface design.  We found that many such errors were due to a failing of the Boolean operator bracket function, which resulted in difficulties specifying combinations of search terms.  Also, as in Google’s default search, structured search terms do not seem to be connected by Boolean AND, but rather OR, which pulls out documents that do not have one or the other term, particularly in documents from the EPO and UK Patent Office.  There was, unfortunately, also no wildcard option available.

CAMBIA Patent Lens

For the purposes of this report we sub-contracted an expert US patent attorney to review the CAMBIA Patent Lens. The consultant’s opinion was that compared to other no-cost providers, this site is easier to use and better organised, consisting of a well laid out input page, with search capabilities of multiple fields, and a clean results page that can be sorted on a number of parameters.

The consultant remarked that the coverage of countries is good and the ability to search full text documents is excellent - although clearly it would be desirable to extend the coverage of countries.  Notably, Australian data was only available for a short period, a shame because the site is one of very few that can provide full text searching of Australian data. 

Currently the site is also limited (by IPC classification) to life science documents, but OCR is underway to provide patent documents in all fields within the next six months. 

CAMBIA’s Patent Lens uses a fast and powerful query language developed in house for the specific purpose of full text patent searching.  The same query language is used in the modification that was made earlier this year to incorporate INPADOC data.  Due to proprietary restrictions around many other search engines, we are able to give a high level of detail only about this Canberra-developed language, Dekko, in Chapter 2 of this report. 

A significant advantage of the Patent Lens is the ability to view the full patent document, which can be seen at the user’s option as either text with highlighted search terms or PDF image.  Giving the user options is part of the site ethos, and the developers are contactable by users if bugs or suggestions are to be communicated.  Relevance ranking is in development and this also will be user-configurable. 

Thomson-Derwent Providers

The Thomson Corporation, a Canada-based electronic publishing conglomerate, has consolidated its position as a key provider of patent information through the acquisition of its competitors. In 1984, it purchased all remaining shares in Derwent, a key provider of patent databases.  In 2000, it purchased Dialog , in 2002 it purchased Delphion, and in 2004 it acquired Micropatent, one of its main competitors. There have also been numerous smaller acquisitions along the way.  As well as consolidating its Intellectual Property services, Thomson has continued to expand into the sciences, health and legal publishing and online databases.

Although Thomson-Derwent has acquired several of these larger data providers in recent years, thus far they have not unified many of the sites. Each of the individual sites has a different format, different set of data, different interface and different pricing.  We chose the major sites mentioned above for our analysis.

Delphion

Delphion’s speed has dramatically improved but the search interface is still clunky, and searching for a document by its number is a lesson in all the ways one can make “mistakes” formatting.  It is possible to limit a search by date range, use wildcards, and search terms near each other.  The results list can be highly modified in fields that are shown and there is standardization of assignee (applicant) names.  A limitation is that the results are truncated at 500 results.  When a document is viewed, post-grant status is available.  Some analytical tools of varying utility are available, though some at extra cost, for e.g. graphical citation tools.

Delphion does carry the human-edited Derwent titles and abstracts database, and features forward and backward citation linking. It also clusters results by subject, but it is not clear on what criteria this clustering is based.

DialogPro and DialogWeb

The “Web” version is actually more sophisticated; for example, complex Boolean search strategy can only be implemented on the web version.  DialogWeb also has many more non-patent databases that can be accessed for a price.  Data coverage in the Web version includes China (bibliographic data and abstracts in English), as well as post-grant status and litigation information.  Several useful options for sorting the output are found in the Web version.  Some may find its command driven interface challenging.

Micropatent

Only the Patent Web portion was assessed, because each area requires a separate subscription.  The search interface allows for some rather sophisticated search strategies, such as using ECLA codes, complex Boolean structure, limiting searches by publication date range and using a wildcard for truncation.  A command-driven interface that would allow increased flexibility is available at a higher subscription fee.  Results are returned quickly and refining searches is easily done from the search history interface.  The site annoyingly opens new windows for everything, making navigation difficult. 

Get-the-patent

This site was set up mainly to access document images for a low price with input of a patent number, but it offers some searching capabilities as well.  The interface allows complex Boolean structure but limits a search to a single year and the search engine query language seemed in many of our searches to come up with bugs.   Searching can be done by IPC codes, but not in all databases.  The datasets are fairly extensive, but only the US is full text.  Its strength still remains bulk downloads of patent documents.  The bugs take this site out of the race when it comes to serious searching, though it could still be useful for downloading full images, which are in a proprietary format 1/6th the size of PDFs.  However, these images are provided in a proprietary format (not PDF) that requires its own viewer.

Lexis

This service has an exemplary interface for inputting Boolean searches.  Search terms can be applied to just about every field of a patent document, though it is challenging even for an expert patent searcher to find the help for formatting of some fields like IPC.

Unfortunately the output of results was not exemplary, with no formatting of the results list possible, and access is expensive. 

Minesoft PatBase

This engine was originally developed for a specific client and is now available to others on a fee basis. It is a powerful search site, though unfortunately navigation of the site is quite challenging and there are some glitches and slowness. 

While it allows wildcards, complex search structure, etc., it has a very useful browse function on names of inventors and assignees.  Using this function, it is possible to capture documents by a group or individual regardless of bad spelling and typos and inconsistencies of the name (e.g. IBM = International Business Machine; Du Pont = DuPont).7

Like the step searches of WIPS, initially the results come back as the number of results.  A quick view of titles reveals if the search is on the mark or not.  The output is thorough, with displayed fields highly controllable.

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7This would be quite valuable for a public user interested in freedom to operate considerations and CAMBIA is looking into a similar function for the Patent Lens.

PatentCafe

The site uses latent semantic indexing searches as an alternative to Boolean searches. In the latent semantic search, a query consists of a sentence or a paragraph, from which the concept of the sentence or paragraph is extracted to search for relevant patent documents. When our patent searching experts used text from claims to search, we found that every search tended to return a very large number of documents, the relevance of which was sometimes dubious.  It also missed some of the known relevant patents where these used a somewhat different claims vocabulary.

However, the public user can benefit by a feature of the latent semantic indexing search that the patent results list page provides a set of ‘related terms’ (synonyms) generated from the context around the initial query words for each patent document that has been retrieved. This can be useful to further exclude/include patent documents on the list.  Unfortunately, it doesn’t also return the original query for editing, so refining search queries is less straightforward than for typical Boolean expressions.

Another useful feature is that the individual document information provides ‘patent references cited’ and ‘cited by’ (this seems only available for US patent documents and does not guide properly to WO documents, probably because of the metadata marking).8

The website has some glitches, for example optional fields that proved to be mandatory.  It doesn’t work well with all browsers and all operating systems, and there is no provision of INPADOC family or status information, or prosecution history.

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8As such marking is not greatly different from other features the Patent Lens already incorporates, this is a feature that CAMBIA is exploring.

Questel-Orbit

The search input on this French company’s site is quite good; searches by IPC, ECLA and date ranges are easily set up, as well as complex Boolean structure searches.  Search terms are readily limited to be near each other or ordered.  A search history allows combining prior done searches using Boolean connectors. This site also has more extensive data coverage (countries) than the others, legal status data, and value-added patent family data.

The weakness of this site is the results output; it is fixed order by patent number, although the results can be downloaded in a variety of formats.

One very nice feature in the output comprises links that allow the searcher to move through the database forward or backward in time following patent citations, a feature that CAMBIA is considering for incorporation into the Patent Lens.

Software for Intellectual Property (SIP)

This is a German site that has progressed over time from specializing in patent family data to a search engine with several features (e.g. ability to search using IPC codes, “near” searches, and even “fuzzy” searches for similar sounding words).

The user interface offers Boolean and structured query facilities that simply do not work, so we weren’t able to perform our test queries.

The output format is not malleable, but it integrates well the family and legal data with the patents.

PatentWarehouse

Univentio is a company with long history in the IP information industry. For example, Univentio produced the "WIPO/PCT patents fulltext database" used by Thomson Dialog.  Univentio has recently come under the control of LexisNexis, which has not yet been able to provide new subscriptions to the Univentio patent search site, the PatentWarehouse, although this is probably a transitory problem which will soon be addressed under the new ownership arrangements.  Accordingly, the following information was obtained from documentation rather than actual use.

The PatentWarehouse database contains intellectual property information, including full text of patent applications and granted patents, bibliographic information of patents, utility models and designs.  Full text of patent documents are covered for US, EP, GB, JP, FR, DE, AU, AT, BE, CA, DK, LU, MC, NL, NO, PT, ES, SE and CH, and bibliographic information is covered for 70 jurisdictions.  Five search options are available, including searches by complex Boolean expressions.  The results page provide a list of retrieved patent documents with an indication of legal status using ‘Trafficlight’, a unique feature provided by PatentWarehouse.  Patents that are in force (red), withdrawn/lapsed (green), or possibly in force (yellow) can be identified for each patent document with the three different colour codings.  The claimed coverage of full text Australian patents is noteworthy.

WIPS

This newcomer is run by a Korean company and uses an interface and output reminiscent of Delphion but with improvements. The search input is flexible and allows wildcards, near searching, date ranges, and assignee name standardization.  The output features a “step search”, which outputs only the number of results; when a desired number is returned, the list of results is easily viewed.  Data coverage is standard, with only US and EP documents provided as full text.  Ability to modify the results lists is complemented by ability to download in txt, xls, or mdb file types.  Clustering results by IPC, applicant, application date, patent date and keyword are helpful.

One downside to this site is that to view images, proprietary software is required, which works only with certain browsers, and some graphical presentations require a Java Virtual Machine to be installed in the browser.  We also found a number of bugs in the search. For example, full text search for words within a claim appears not to have worked.

Non-Patent Searches

For any type of prior art search, whether it be an FTO search for a particular technology or a patentability search for an invention, databases that contain non-patent or scientific literature are important.  This is because a vast amount of technology development is published in scientific journals  and in many art areas there is a substantial amount of publication that predates patent literature.

The examiners we spoke to indicated considerable use of general search engines such as Google for this purpose, which can certainly deliver large amounts of information, but is not relevance ranked for patent searcher needs, and extremely relevant documents can be missed. Citation databases contain literature that has been selected for publication by relevant bodies, the selection having been performed at least ostensibly by “persons skilled in the art”. 

To represent the many available free and paid databases, we chose one of each.  Here PubMed and Current Contents Connect are briefly explained and compared.  However, we note that many other databases are indeed available, and our comparison in this report concentrates on typical features.

Before entering into this comparison, we also mention WIPO’s efforts to create a common dataset of journals that can be used as sources of prior art in specialised fields, the Journal of Patent Associated Literature, JOPAL.  Currently this supplies only bibliographic data such as titles, authors and dates, but is the closest non-paying alternative to Current Contents Connect and is set up specifically for patent searchers.

PubMed

PubMed is a free search engine maintained by the National Library of Medicine (NLM) at the National Institute of Health (NLH), and is accessible through the National Center for Biotechnology Information (NCBI) website. The databases that are covered by PubMed are:

A basic search for retrieving citations is conducted with a single search box.  Words in the following fields can be searched, often without the need of defining the field:

Searches can be restricted in the ‘Limits’ option by using criteria such as language, publication type, publication date, and MeSH terms.  Other options that are available include:

Search results are displayed with the author name(s), article title, journal name, issue and page, and the PubMed ID.  The author name(s) is linked to the full bibliographic information including the abstract for those available (1975 onwards).  Each hit has a link to either the abstract, free full text from the journal or free full text in PubMed Central (PMC), ‘Related Articles’ link to retrieve articles relevant to the area of the article (listed in the order of relevance), and ‘Links’ to other various resources or NCBI databases.  The ‘Link out’ button in the ‘Links’ section provides links outside of NCBI that are related to the article.

Isiknowledge

General
Search Options
Results Page

General
This paid citation search engine is part of ISI Web of Knowledge, provided by Thomson Scientific (a Thomson Corporation group).  The database contains bibliographic information on articles from approximately 7600 journals and 2000 books published since 1998.  Areas of research that are covered are agriculture, biology and environmental sciences, social and behavioural sciences, clinical medicine, life sciences, physical, chemical and earth sciences, engineering, computing and technology, arts and humanities, business collection, and electronics and telecommunications collection.  The search interfaces are user-friendly with available tag keys provided for all search pages, a table of available field tags and Boolean operators on the Advanced search page.  The results are compiled in a list with the number of hits for each search, and the information from the retrieved articles (titles, author, abstract, and full text where available) is also easily obtained.

ISI Web of Knowledge contains the following main search engines:

In Current Contents Connect, information on publications from the following areas of research are available10 (upon subscription to each area) for searching from 1998 to present:
Agriculture, biology and environmental sciences:

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Search options

There are four search options:

  1. Classic search Search by terms or phrases.  Boolean operators AND, OR, NOT, can be used to combine terms within a particular field (selected from a range of bibliographic information, or topic subject).  Search results that are compiled as a list with the number of hits can be combined with AND or OR to further narrow/broaden the search.
  2. General search
  3. Search by terms or phrases in the following fields (an index is provided for each field for browsing): Terms can be connected with Boolean operators AND, OR, NOT, SAME, and language and document type can be restricted. This search option is the only one that the search history cannot be accessed and edited, although a search conducted with this option will be included in the history.
  4. Advanced search Search by creating a Boolean expression.  Operators AND, OR, NOT, SAME can be used to connect terms, and field tags can be added to each term to define the field (list of tags provided on the search page).  Terms can be bracketed to indicate priority searching.
  5. Browse Search for articles by browsing by journal titles (linked in alphabetical order) or by research area.

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Results page

The results of searches is listed in ‘history’, from which retrieved articles of a particular search can be viewed by clicking on the number of hits on the search results list.  Retrieved articles are presented with the author name/s, title, abbreviated journal name, issue, page and publication year.  Each article title is linked to detailed bibliographic information of the article, including the abstract.  Access to full text is indicated under each article.  Bibliographic information of selected articles can be retrieved and transported to personal citation management softwares such as EndNote and Reference Manager (both by Thomson).

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10
http://ccc02.isiknowledge.com:80/help/h_database.html#abes

Traditional Knowledge

Although there has been heated discussion in the intellectual property community of the importance of averting IP protection awards that cover genetic material and processes that have long been known to traditional communities, at this point there is little access to traditional knowledge databases that may contain substantial prior art.  Efforts to overcome this deficiency are being made at SIPO, the USPTO and WIPO.

WIPO has recently reviewed a wide range of traditional knowledge-related periodicals11 and agreed that thirteen of these should be added to the list of published items of non-patent literature forming part of the PCT minimum documentation under Rule 34. The Meeting also recognised the importance of identifying further traditional knowledge-related databases suitable for use in international searches and agreed that the issues involved should be considered as part of a comprehensive review .  WIPO is developing a Search Guidance Intellectual Property Digital Library (SGIPDL) which when available could be of assistance to (it is currently being reviewed by a task force of representatives from the International Searching Authorities).

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11http://www.wipo.org/edocs/mdocs/pct/en/pct_ctc_21/pct_ctc_21_3.pdf

“Value-added” Information Summary

Various patent information providers claim to add value to patent information in the following ways:

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12One approach to do this, being explored by CAMBIA, would be to mark and link literature citations from within patent documents, which would be easiest for USPTO-sourced patent documents due to the standard field for such citations. Forward and backward navigation via citations can be very useful for freedom to operate identification of dominating patents, though not identified as crucial for examiners.

13For example, CAMBIA uses tables identifying the priority documents cited.

Discussion of Emerging Trends in Information Retrieval

This chapter analyses emerging trends in searching and accessing IP information, together with likely future directions in this field.   The chapter begins with how some of the general information retrieval and ranking algorithms are applied to patent data.  While many of the search engines that perform these algorithms are proprietary, CAMBIA is in a unique position to provide detailed information on the full text patent search engine developed by its staff in Canberra, Dekko, and aspects of its design that affect performance with respect to the major patent data sets.

We then turn to needs for searching and accessing IP information of special relevance to Australian stakeholders:

One of the key factors driving the development of IR technologies has been the explosion in the quantity and diversity of machine readable information published on-line.  Another factor has been the increase in the power and storage capacity of computing hardware compared to its cost.  For example, Google allows subsecond searching across a claimed eight billion web pages. This reliability and scalability has been achieved by harnessing the power of thousands of cheap Linux PCs rather than high-end servers or mainframes.
Intellectual property searching covers a wide range of activities. A scientist interested in examples of how to use latest innovations in the field will have needs very different to an examiner charged with determining patentability. A trade mark examiner searching for evidence of use will face very different challenges from an examiner searching for deceptively similar marks. An IP officer from a biotech start-up doing a FTO search needs to have access to data from the jurisdictions of their key markets as well as jurisdictions in which their research and production takes place.

The way in which IP information is accessed by IP professions and the public has changed greatly over the years. Card indexes, microfiche, mainframe based systems and midrange systems with dedicated line or dial up access have largely been superseded by web based search interfaces. “Web services” such as the European Patent Office (EPO) Open Patent Service (OPS) , are increasingly allowing organizations and even individuals to design their own interfaces to remote databases.

Information Retrieval

Information Retrieval (IR) is the art and science of searching for information in documents or for documents themselves. IR draws upon cognitive psychology, linguistics, semiotics, information science, computer science and librarianship.

While user interface design and functionality are important to the usability of systems, the underlying IR technology utilised is also important. Technologies that may be excellent for small data sets with a few concurrent users may be inflexible and unable to scale. With the rapid increase in the capacity, speed and affordability of random access memory (RAM) over recent years, techniques that allow full text indexes to be held in memory have become practical. A form of index, known as an inverted index, in which any word in the corpus to be searched can be used as key to find the documents in which it occurs, has proved to be extremely scalable.

Various IR techniques make use of:
•    the content of the documents being searched;
•    meta-data describing the documents and relationships between them, e.g. citations;
•    information external to the corpus being searched, such as dictionaries, thesauri and other bodies of relevant information.

Search Engines

A search engine is software that performs IR using one or more IR models.  For text searching, the most prominent of these are the Boolean and the Vector Space models and their variants.

It should be noted that for this study, visual image searching was also investigated, for use in design patent searching, normal trade marks, and shape marks, The software available has significant technical limitations, and the greatest technical progress has tended to focus on security-related images such as faces and fingerprints rather than IP industry uses. 

It would be useful to check this area of software development periodically, however, because although IP Australia trade mark and design patent examiners indicated it would be of limited use for searching IP data (because most searching is done using classifications), searching of the non-IP literature could eventually be facilitated by such tools. 

The two main statistics used to describe the quality of retrieval are

Thus, a search engine that retrieves all documents relevant to a query is said to have high recall, whereas a search that returns only relevant documents is said to have high precision.

Although the ideal technology would have both high recall and precision, in practice high recall can sometimes come at the cost of irrelevant hits (low precision) and high precision can come at the cost of the omission of some relevant hits (low recall). 

These parameters are important to understand and control in the choice of an algorithm for intellectual property searching, because an examiner doing a prior art search may tolerate high recall with some loss of precision.  However, precision may be more important to a researcher doing a technology search. 

Ideally, the expert searcher should be able to modulate the precision and recall directly, as well as through the choice of search terms and ranges such as date ranges within search fields.  An interface that does not allow such control, e.g. the Google default interface, may not be ideally suited for intellectual property searching in general, although particular versions of such an interface may be suitable for particular types of searches.

The quantitative evaluation of recall and precision statistics requires relevance to be determined by some means other than the system being evaluated, e.g. human experts may be used to rate relevance with respect to an information need expressed in natural language. This is the approach taken by the Text REtrieval Conference (TREC), which since 1992 provides a controlled environment for the evaluation of different IR techniques for specific tasks. The evaluation of the IR system includes the process of the human user translating the information need from natural language to the search engine's query language. Typically much information is lost in this translation, limiting both the maximum achievable precision and recall.

Recent advances in IR attempt to address this problem in various ways:

Inverted Index

An Inverted Index data structure is used to support most IR techniques. Each word in the corpus has an index entry, which specifies the documents that include that word.14  A search for documents that contain a word then becomes a simple lookup in the index.15  The list of words may be reduced by using a ‘stop word list’16 or stemming. Index entries may be augmented with additional information such of the number of times the word appears in the document or the position of each occurrence of the word.

The inverted index is largely responsible for the impressive speed and scalability of current search engines. However, for large collections of documents the compilation of an inverted index can be a time consuming task, and the fast searching of an inverted index may require large amounts of computer memory. A large amount of research has been conducted on the problem of compressing inverted indexes to reduce these memory requirements.

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14 http://en.wikipedia.org/wiki/Full_inverted_index

15 Paul E. Black, "inverted index", from Dictionary of Algorithms and Data Structures, Paul E. Black, ed., NIST.  http://www.nist.gov/dads/HTML/invertedIndex.html

16 Stop words are those words which are so common that they are useless to index or use in searches. In English some obvious stop words would be "a," "of," "the," "I,", "it", "you," and "and". Hans Peter Luhn, one of the pioneers in information retrieval, is credited with coining the phrase and using the concept in his design and implementation of KWIC indexing programs (http://en.wikipedia.org/wiki/Stop_words)

Stemming

In most cases, morphological variants of words have similar semantic interpretations and can be considered as equivalent for the purpose of IR applications.17

The key terms of a query or document may be represented by stems rather than by the original words. For IR purposes, it doesn't usually matter whether the stems generated are genuine words or not – thus, "computation" might be stemmed to "comput" – provided that different words with the same 'base meaning' are reduced to the same form and words with distinct meanings are kept separate. Stemming provides several advantages:

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17http://en.wikipedia.org/wiki/Stemming

Boolean Search

Most IR systems allow the use of Boolean expressions, explicitly or implicitly, to construct a query. The query may include Boolean operators such as AND, OR, and NOT and possibly a proximity operator such as NEAR. A list of documents that match the Boolean query will be returned by the IR system. If no Boolean operators occur in the query, the usual default is to interpolate an AND between terms: a query such as "intellectual property" will be interpreted as "intellectual AND property".

A skilled user of a Boolean search IR system will be able to refine searches by specifying Boolean expressions of arbitrary complexity.

However most users prefer their searches "pre-refined" by the application of one or more of the other models following.

Term Frequency - Inverse Document Frequency (TF-IDF)

TF-IDF is the classical IR technique for automatic determination of document relevance. The term frequency in the given document gives measure of the importance of the term within the particular document.18  The inverse document frequency is a measure of the general importance of the term. A high weight in TF-IDF is reached by a high term frequency within in the given document and a low frequency of the term in the whole collection of documents; the weights hence tend to filter out common terms.

There are many variations in the calculation of TF-IDF. Mostly the formulae used are ad hoc (determined by trial and error), but some recent variations are based on sound statistical methods based on natural language modelling. TF-IDF has proven to be efficient to implement and useful in a wide range of IR applications. It is the benchmark against which other techniques are compared.

The formulae used tend to be proprietary, but are known for open source software.  For example, Apache Lucene uses the following formulae:19
TF = sqrt(freq)
IDF = log(numDocs/(docFreq+1)) + 1
CAMBIA's Dekko uses the following formulae to compute a normalised (ie in the range 0..1) TF-IDF score:
TF = freqij / max_occuri
IDF= log (N/ni) / log(N)
wij = TF * IDF
where
wij = TF-IDF score of term i in document j
freqij = frequency of term i in document j
max_occuri = the maximum number of occurrences of term i in any document
N = number of documents in the collection
ni = number of documents in which term i occurs at least once
The purpose of normalising the TF * IDF product is to allow relevance scores to be meaningfully compared across collections, allowing relevance results to be gathered from a "farm" of Dekko servers.

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18 http://en.wikipedia.org/wiki/Tf-idf
19 http://lucene.apache.org/java/docs/

Proximity

When a query contains two or more terms, a natural measure of document relevance is apparent: within the document, what is the distance between each pair of terms? Intuitively, it seems clear that if a pair of words are adjacent (e.g. part of a phrase), the relation should be more significant than if they are separated by many other words. Elaborations of this scheme abound, some of them touching on aspects of so-called "natural language processing" - for example, applying different weightings depending on whether pairs of words appear in the same sentence or paragraph.

CAMBIA's Dekko uses a triangular matrix of minimum distances between word pairs, summed and (as for TF-IDF) normalised to give a relevance score in the range 0-1.

Vector Space Models

Vector Space Models use a vector in a high dimensional space to represent each document.19 There are many variations, including Latent Sematic Analysis and Cluster Analysis (below), but generally the number of words in the corpus is reduced by using a stop word list, stemming and perhaps by replacing synonyms with the same word or even phrases with concepts.20  Each remaining word in the corpus becomes a dimension in the vector space. A document is represented by a coefficient for each dimension, i.e. a vector in this space. TF-IDF is commonly used for the coefficients. Queries are mapped into the vector space in the same way as documents. The cosine of the angle between two vectors is most commonly used as a measure of similarity between documents or relevance of a document for a specific query.

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19http://en.wikipedia.org/wiki/Vector_Space_Model

20http://isp.imm.dtu.dk/thor/projects/multimedia/textmining/node5.html

Latent Semantic Analysis (LSA)

LSA is meant to solve two fundamental problems in natural language processing: synonymy and polysemy.  In synonymy, different writers use different words to describe the same idea. Thus, a person issuing a query in a search engine may use a different word than appears in a document, and may not retrieve the document.  In polysemy, the same word can have multiple meanings, so a searcher may retrieve unwanted documents with the alternate meanings.21

LSA uses a Vector Space Model in which the number of dimensions is reduced by Principal Component Analysis, a well-known technique of linear algebra. LSA relies on vectors that are nearby in the low-rank space representing semantically similar concepts.22  The relation-significance of such nearness is often, but not always valid, so such criteria can lead to results which can be justified on the mathematical level, but have no interpretable meaning in natural language. The right number of dimensions appears to be important; the best values yield up to four times as accurate simulation of human judgments as ordinary co-occurrence measures.

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21http://en.wikipedia.org/wiki/Latent_semantic_analysis
22http://isp.imm.dtu.dk/thor/projects/multimedia/textmining/node10.html

Cluster Analysis

Cluster analysis is a multivariate statistical technique that allows the identification of groups, or clusters, of similar objects in space.23 It is a technique that has a long history and wide application in many fields of science, resulting in a huge body of literature on the subject. The application of cluster analysis to IR has hence been studied since the early days of computing with the aim of improving the effectiveness of retrieval:

"The Cluster Hypothesis is fundamental to the issue of improved effectiveness; it states that relevant documents tend to be more similar to each other than to non-relevant documents, and therefore tend to appear in the same clusters".
Jardine, N. and van Rijsbergen, C. J. 1971. The use of hierarchical clustering in information retrieval. Information Storage and Retreival, 7:217440.24

As with LSA, the results of clustering methods can be seen to rely too heavily on purely mathematical techniques and empirical parameters but may be effective in conjunction with the other IR models mentioned here. Recent studies on so-called "post-retrieval clustering" hint at a way forward for Cluster Analysis techniques.

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23 http://isp.imm.dtu.dk/thor/projects/multimedia/textmining/node11.html
24  Jardine, N. and van Rijsbergen, C. J. 1971. The use of hierarchical clustering in information retrieval. Information Storage and Retreival, 7:217440.

Inference Models

Information Retrieval can be regarded an inference or evidential reasoning process in which we estimate the probability that a user's information need, expressed as a query, is met by a document as "evidence".25  The techniques required to support these kinds of inference are similar to those used in expert systems that must reason with uncertain information. Some of the inference models developed for expert systems can be adapted to the document retrieval task. The Bayesian inference network has been used to:

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25Turtle H and Croft W B, Evaluation of an inference network-based retrieval model, ACM Transactions on Information Systems. Volume 9 , Issue 3 (July 1991) Special issue on research and development in information retrieval Pages: 187 – 222 ISSN:1046-8188

Dekko

The Dekko search engine is the back end of the BiOS Patent Lens. Key features of Dekko are:

The Dekko system has three main components:

The dek indexer
The first stage in most Information Retrieval systems is the creation of an "Inverted Text Index". This is just a list of all the words found in all the documents in a collection. For each word, a list is kept of all the files in which it occurs, and the positions at which it occurs in each of those files.
Key questions here include:

The dekbin compiler
An ASCII inverted index can be a very bulky item - typically of the same order of size as the original document collection. Searching such an index could be a slow process. The dekbin compiler takes a number of steps to make this problem manageable:

The dekko server
This takes a binary index and perfect hash function as produced by dekbin and

Formatted queries are then sent to the port, and if the query makes sense a list of matching documents is returned. In theory, a user could telnet directly to the port and type in a query. In practice, only the most trivial of queries can be done this way - the query format is complex and tricky to type at the keyboard! Usually a client program, for example by generating a form, will initiate the connection, send a correctly formatted query, and collect the results.27

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26 Provided by Bob Jenkins at http://burtleburtle.net/bob/hash/perfect.html
27 Currently at CAMBIA we use a client written in Perl, but such a service can be provided with any other scripting language (Python, Ruby), Java, or C or C++. The fundamental requirement is the ability to connect to and communicate with a socket.

Features of Dekko

As described above, the three major components of Dekko, the dek text indexer, the dekbin compiler, and the dekko server, together provide a solution to the task of indexing a collection of text documents (in this case, patent documents) and then searching the index for documents relevant to a query.

There are a number of unique features of patent data as sourced from the various Patent Offices (WIPO, EPO, USPTO, IP Australia).28  For historical reasons, patent data comprise an interesting mixture of formats and encodings.  We see data in 80-column card format, SGML/XML format, and text extracted from TIFF images using OCR, and variations in between. Much of the SGML/XML data is poorly formed and resists parsing by commonly available parsers. Embedded in the text we see what are now called “entities” in SGML and XML terminology. In older data, the formats of these entities do not conform to SGML standards, and entities are used to both encode data and to provide formatting and layout descriptions.

Similarly, we see various character encodings: 7-bit Asciii, ISO-8559-1 Latin1, 7 bit Ascii with some 8-bit characters derived from EBCDIC (mainframe) code pages.

The dek indexer is designed to be able to cope with all these variations of data format. It incorporates a purpose-built SGML/XML parser that is tolerant of badly formed documents and  copes with unusual character sets. Dek is highly configurable – new formats and styles can be accommodated by simply editing a configuration file.

The presence of OCR data (WIPO PCT documents, EPO pre-2000 documents) causes other potential problems (see below). The OCR process is never perfect, due to limitations in both the quality of the original images from which the text is extracted and the imperfect nature of OCR algorithms. This can cause the text contain large numbers of essentially random words. The Dekko system incorporates several filtering and compression techniques to reduce the size of the indexes. Without these filters, the PCT index would contain more than 40 million words.

Similar filters remove DNA and protein sequences from the searchable index. These sequences are no more than random strings of letters, in the case of DNA containing combinations of the letters A,C,G and T.

Having filtered the text, dek compiles an inverted index. This is stored on disk in ASCII format, and even with rigorous word filters the size of an ASCII index can be of the same order as the text from which it was derived. The dekbin component of the dekko system processes and analyses the ASCII index – it compresses the ASCII index by a factor of 3; it counts the frequency of words in documents (and sections of documents, eg abstract, title, claims). The word counts provide the basis for relevance ranking in the dekko server.

It is also in dekbin that a technique called minimal perfect hashing is used. For each word in the index, a single number is computed. Every word in the index gets a unique number; the numbers range from 1 to the total number of words in the index. 

The eponymous dekko server is the program that searches a dekbin compiled dek index. The dekko user sends the server a query comprising a number of words; for each word the minimal perfect hash number can be computed rapidly (just a few machine instructions) and the details of the word – which documents it occurs in, where it occurs in each document, how often it occurs in the whole collection – can be retrieved from a known place in the index.

The minimal perfect hashing technique results in extremely fast word retrieval; this, combined with ability to store the bulk of the compressed index in memory makes dekko into a very fast Information Retrieval (IR) system.

It should be kept in mind that the essence of providing a good search capability for patent data is not necessarily the search algorithm itself – it is the ability of the engine to work together with all the data formats and structures that are present in collections of patent documents. That knowledge has been designed and configured into Dekko.29

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28Dekko has been purpose-designed at CAMBIA, specifically with the task of indexing these patent data.

29The Dekko system has been successfully used in the CAMBIA BiOS Patent Lens for several years. It is currently used to index WIPO (PCT), EPO, and US patent data. For a time, Australian patent data was also being added, and although this service has lapsed for want of funding, Dekko can do it, has done it, and is in fact ideally suited to doing it.

Optical character recognition (OCR)

Over recent years the accuracy and speed of Optical Character Recognition (OCR) technology has greatly improved and it is now practical to perform OCR on very large collections of digital images cost effectively. CAMBIA has extensive experience in this area, having carried out OCR on millions of pages covering PCT, EPB and Australian patents (USPTO data is brought in electronically without the need for an OCR step).

Many patent filings in Australia enter national phase via the PCT.  PCT applications should be considered prior art for Australian filings as soon as published, so another factor complicating searching of Australian patents and applications is that PCT applications may first appear in a language other than English, such as Japanese.  There is discussion of adding Chinese as a language in which PCT applications are accepted.  Optical character recognition of Chinese and Japanese characters may require special software. 

We have recently conducted extensive trials of the latest OCR technology with a focus on the recognition of Chinese and Japanese as well as European languages.  We found two OCR engines that with our applications achieved accuracy levels of over 99% on PCT patents published in Japanese and patent documents provided in Chinese.

Some National patent offices30 indicate that there may be some current data provision issues that could limit the usefulness of even a well designed search interface for full text or field based searching of bibliographic data, claims and specifications sections of patents. To facilitate the future searching of specific sections of text, such as claims, it will be important to ensure that OCR data quality issues are anticipated so that they do not affect the facility with which data markup can be accomplished.

One way to address at least some of the data integrity issues is through the adoption of applicable international standards.  For example, for the dissemination of Australian patents after OCR, the revised "wo-published-application" dtd format, outlined in the WIPO document C PCT 1037-7631 may have some relevance.  OCR quality of photocopied PCT applications being transmitted to Australia for national phase could be improved by instead obtaining the OCR that had been done for the PCT applications directly, and then the national phase information that is often stamped on hard copies could be added electronically.  The recent decision by IP Australia to accept, from 18 July 2005, limited filing of international applications directly in electronic format in its capacity as PCT receiving office also offers an opportunity for a focus on data quality based on international standards.

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30see for example http://www.ipaustralia.gov.au/pdfs/patents/fields.pdf
31
http://www.wipo.org/pct/edi/en/wo_publication_information/documents/pdf/circular_wo_changes_en.pdf,
C. PCT 1037 - 76 of 8 July 8 2005

Natural Language Processing (NLP)

Applied to searching Chinese, Japanese, and Korean (CJK) language patents.

An emerging trend in IR relates to use of machine translation (MT) to allow searching across information in many languages.  A number of popular search engines offer “on the fly” MT of web pages in number of languages into English, but there is a severe “lost in translation” problem that would greatly complicate reliance on this for technology searching. Nonetheless, cross language searching remains an area of intensive research and it is already proving valuable in some applications.

Patent data show a more formalised structure than natural language, however.  This may reduce the challenge somewhat of using character-based text search algorithms.  Our scoping of the Chinese patent data predicts that it is an accomplishable process to adapt in and invent search capabilities to integrate with the existing searchable patent data structures the handling of non-ASCII characters that are much more complex.  However, research needs to continue into the semantic models  and utilities for differentiated thesauri.

Languages with large number of characters compared to the Latin alphabet or with an absence of white space between words pose particular IR challenges.  Issues such as character encoding, word break analysis and specific processing for transliterated foreign words, abbreviations, and personal, organization and company names must be addressed for the effective searching of CJK language patents.  

Fortunately, a large part of the informatics groundwork necessary for integration of Chinese information into databases can be extended into other language databases based on non-ASCII characters and other semantic structures.  Thus further extension into patent information in the languages of other important trading partner jurisdictions such as India, the Middle East, Indonesia, Korea and Japan should be accomplishable as the program continues.

Chinese Language

Foreign proper nouns are usually transliterated into Chinese by using characters for their phonetic rather than semantic value.  Each Chinese-speaking region may transliterate the same name differently: For instance, 'Novartis' could be translated into 诺瓦提斯 or 挪伐帝司, depending on the attorney who prepares the documents. In this example, the characters used for the translation are completely different. In Mainland China, the foreign names of individuals, companies and institutions that appear the bibliographic page of patents are normally transliterated into Chinese, which makes searching difficult. Fortunately, each region uses a relatively small and consistent set of characters when transliterating.

A further complication is the use of simplified characters in mainland China and traditional characters in Hong Kong and Taiwan. Although traditional Chinese and simplified Chinese share more than 70% of the characters, some characters (words) can be very different. For example, 'international' is '國際' in traditional Chinese and '国际‘ in simplified Chinese. Since the majority of Chinese language patent documents filed with WIPO or EPO are from Mainland China, simplified Chinese is more dominant. However, if the original documents were prepared in traditional Chinese, the search terms must also be entered in traditional Chinese to find the relevant documents.

Phrase and names can be abbreviated by taking a character from each part of the word or phrase. There is no clear rule as to whether these should be the first or subsequent characters. For example Beijing University, 北京大学, is usually abbreviated as abbreviated 北大. Abbreviations are irregular and their use widespread, so constructing a comprehensive lexicon is a challenge.

Japanese language

The Japanese language uses a combination of four scripts with an extremely complex morphology and orthography. Natural Language Processing (NLP) techniques are essential for successful full text searching of Japanese text. The CJK Dictionary Institute (CJKI)32 specialises in CJK computational lexicography and has developed a lexical database with over two million Japanese and one million Chinese entries.

A major source of complexity in processing Japanese texts is the presence of an extremely large number of homophones. Many homophones are synonyms in some senses but not others and as a result it is hard to predict which an author will choose to use in a particular context. For example, the verb ‘noboru’ can be written using three different Chinese characters: 上る can be used to mean "to move upwards", 登る can be used to meaning to "transport oneself to a high point" and 昇る can be used to depict the rise of an astronomical body. The point is that given that these words are all pronounced in the same way and that they have very similar meanings, there is ample scope for one to be used in place of another through error or expediency on the part of an author.

On the other hand, personal names (in most cases written in Chinese characters) have a variety of ways in which a single combination of characters can be pronounced (e.g. the first name 'Shoko' when written in Chinese '尚子' can also be read as 'Naoko' (most common) and 'Hisako'). This can create a problem when searching for an inventor's name if it has been transliterated into English, as all variations must be considered when searching.

One of the most diverse areas of the Japanese language in terms of orthography is words derived from English. The orthography of these "katakana" words is extremely variable and even native Japanese speakers wishing to search Japanese text may benefit from NLP techniques that allow English keywords to be entered to retrieve all katakana and Latin alphabet variants. These katakana characters are also frequently used for Japanese words on certain occasions, or for non-Japanese languages other than English. The former type of katakana characters is often seen in the cases of organisms that are used in scientific literature; e.g. rice is '稲 (ine)', which is written in katakana as 'イネ' for rice that is used as scientific material (not for agriculture). This creates a problem when using the word 'rice' as a search term, as (again) both katakana and Chinese writing must be considered.

Finally, the Japanese have several ways of writing numerals, similar to those explained in the section on Chinese above. In patent documents, the bibliographic information sheet uses Arabic numerals to identifying the different types of information (e.g. '(51) International patent classification', '(21) application number'), dates, references, and names of things like vectors, proteins, etc in the specification. All other numbers are mostly in unicode e.g. "200", Chinese characters are rarely used (except for old patent documents).

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32http://www.cjk.org/cjk/index.htm

Cross language Information Retrieval

The Cross-Language Information Retrieval (CLIR) activities initiated within the Text Retrieval Conference (TREC) have stimulated much interest in Europe and Asia. The European Cross-Language Evaluation Forum (CLEF)33 supports TREC like workshops for CLIR using European languages, whilst the Japanese NTCIR workshops34 support CLIR in Chinese, Japanese, Korean and English (with a particular interest in patents). A task at the most recent NTCIR workshop involved a patent examiner invalidating a claim in English by using English queries to identify sections within Japanese patents that would invalidate the claim.

Current CLIR techniques make use of parallel bodies of text available in both the query language and the corpus language (the language of the text being searched). For patents, professionally produced English abstracts may be used. This data is used in Machine Translation (MT) of either the query into the corpus language or documents into the query language. Both strategies provide good results, and combining both provides close to mono-lingual search quality.

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33http://clef.iei.pi.cnr.it
34http://research.nii.ac.jp/ntcir/outline/prop-en.html

Patent Claims

Because the body of a patent specification often contains considerable matter that is not claimed because it describes the prior art which may in the public domain, but which is used to understand the definitions that form the bounds of what is claimed for exclusionary rights, analysis of claims should focus on the parsing of the technical language in the claims but carried out in light of the specification is necessary for more sophisticated analysis of freedom to operate.

As outlined below, the formal technical style of claims language allows certain computational linguistic techniques to be employed that are not applicable to patent documents as a whole.

Types of claims

Claims can be viewed as falling into two broad types, independent claims and dependent claims. Claims can be further divided into categories based on what is claimed, a method claim or device claim, etc.  Differing national patent laws mean that techniques and strategies needed to determine the metes and bounds of claims may differ. In much of Europe, claims tend to be interpreted according to a central claiming system, in which claims identify the "centre" of the invention. In the United States and England a peripheral claims system, which identifies the limits and bounds of what is claimed, applies.35

There are a number of special types of claims, which can be identified by reference to their structure and content. "Jepson claims” typically may include the phrase "wherein the improvement comprises”. Markush claims, often used in chemistry but occasionally seen in all other fields of art, may include the phrase "consisting of" or “comprising” followed by a variable list of possible substituents. Product-by-process claims typically use phrases like "Product obtained by the process of claim...”. Beauregard type claims often include the phrase a "computer-readable medium".
Computational linguistic techniques have been applied to patents claims with an number of aims in mind, including computer-aided drafting of claims and the machine translation of claims from one language to another, the conversion of claims into more readable forms through the reformatting of claims into a more linguistically natural structures, and the alignment of sections of the description with the relevant sections of the claims.36

Patent claims have a peculiar structure that challenges natural language processing (NLP) techniques. Claims are an extreme example of very long sentences with an abundance of telescopically embedded clauses. There are, however, aspects of claims grammar such as use of predicates37 and aspects of the linguistic specificity of claims drafting style that allow the use of NLP techniques such as Rhetorical Structure Analysis (RSA) using cue phrases,38 and combination of methods exploiting grammatical formalisms with predicate lexicons.39  Although many of these techniques have advanced in recent years, these technologies are yet to be widely adopted.

As the volume of patent applications increases and the need for the translation of patents and non patent literature grows, as a result of trade and patent co-operation treaties, computational linguistics will play an increasingly important role. In the areas of patentability, freedom to operate (FTO), invalidation and infringement searching across multiple languages, NLP techniques have the potential to give significant competitive advantage to those organizations that successfully deploy the technology.

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35http://www.european-patent-office.org/tws/tsr_97/chapter3.htm
36http://research.nii.ac.jp/ntcir-ws4/NTCIR4-WN/OPEN/OPENSUB_Akihiro_Shinmori.pdf
37http://en.wikipedia.org/wiki/Predicate_%28grammar%29
38http://research.nii.ac.jp/ntcir/workshop/OnlineProceedings3/NTCIR3-PATENT-ShinmoriA.pdf
39http://acl.ldc.upenn.edu/W/W03/W03-2008.pdf

Quality of data for claims analysis

While some patent offices, such as the USPTO and EPO, publish patents in a format that makes claims easy to programmatically identify and search, this is not universally true. In the case of Australia, where claims are published as part of an image facsimile of the whole patent document, optical character recognition (OCR) and text parsing techniques are required just to identify the claims section. If claims have been amended when a PCT application enters national phase, programmatic identification of claims is dependent on the conventions and procedures adopted by publishing authority of that nation. If all that is provided is a cover sheet with hand written amendments or sections of claims ruled out, programmatic access to and analysis of claims becomes problematic.

Publication of the claims sections of patents in machine readable form (e.g. Standard ST.36 Recommendation for the Processing of Patent Information using XML) can be seen a first step in facilitating innovative software to add functionality such as linking terms used in the claims to definitions in the specification, file wrapper, or external references.

WIPO has announced that as of January 2006 it will produce "Weekly Published International Applications" on DVD (formerly known as Rule 87 DVDs) in a new format that includes search quality OCR data with the claims clearly marked.40 The "wo-published-application.dtd" could be seen as setting a minimum benchmark for the publication of patent documents.41

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40http://www.wipo.int/pct/edi/en/wo_publication_information/
41http://www.wipo.int/pct/edi/en/wo_publication_information/samples/wo-published-application-v1-4.html

Specialised Data Searching

Two areas of specialised data searching are presented here, chemical and sequence searching, because the art areas in which they occur are of special significance to Australian industry, and because they present particular challenges for claim construction. 

Chemical Searching

Searching the patent literature for chemical substances poses a unique set of challenges.

Chemical names can have many equivalent synonyms, but in the literature chemical substances are often represented by chemical structures, which can also be depicted by a number of equivalent nomenclatures.

Claims over chemical structures are frequently presented in Markush42 form, in which a particular claim can prophetically cover a large variety of substances in which a named structure is represented. The metes and bounds of a given claim are often provided by various transitional phrases such as “consisting of” or “comprising”. A Markush structure is a claim with multiple "functionally equivalent" chemical entities allowed in one or more parts of the compound.

For an indication of the challenge, on the figure page that follows, the Markush structure shown covers more than 150,000 individual compounds, so even though relatively few actual words for substituents are used, a claim on this structure would read on 150,000 possible variations of the core molecule that would theoretically need to be checked in the prior art.

Searching for specific substances requires a database containing an index of chemical fragment codes. Searching Markush structures requires a specialised “Markush” database. Both types of searches require dedicated chemical structure tools (computer programs) that allow standard chemical structures to be converted to and from chemical fragment codes and/or Markush structures.

The following are the chemical structure databases available currently, both full fee-paying services with non-trivial costs.:

Both these databases have richer data indices for more recent patents than for earlier patents.

An encouraging trend in the area of chemical searching is the use of Bayesian search algorithms, exemplified by Reel Two,43 which can use thesauri defined by the user to translate chemical names (CAS, IUPAC, common, SMILES) to structure.  The structures selected by the user can then be utilised as a starting point for iterative searches in which additional synonyms and related terms found in the searched database are brought forward to the user as options.  However, good knowledge of chemical terminology by the searcher is clearly required.  Additionally, this is currently set up primarily for in-house dedicated and proprietary databases and is not available as a web service.

Figure 1:  An example of wording in a Markush claim over chemical structures referred to in a diagram.
ipfig2

Figure 2:  An example of a BLAST alignment
ipfig1

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42 named after Dr. Eugene Markush, whose 1923 patent became a test case for the inclusion of multiple, independently varying functional groups in the description of a chemical invention (this is the source of the figure shown).

43 http://www.reeltwo.com

Searching Patent Data for Biological Sequences

Biological sequences can be broadly categorised into two types: sequences of nucleic acids (DNA and RNA) identified by the coding letters A, U or T, C, and G, which identify nucleotides with particular base-pairing relationships;  and polypeptide, peptide or protein sequences (linear polymers of amino acids either identified by a single letter alphabetic code or a three letter code, e.g. "S" or "Ser" for the amino acid serine)...

The challenge in claim construction is that biological function is usually not dependent on the exact sequence, and similar or homologous functions can be “encoded” by many variations that might be only weakly similar to the particular sequences in the specification. Thus, claims are seldom over a single exact sequence, and tend to be worded such that they read on many sequences that may be found in the literature. 

For example, a typical claim wording is "An isolated polynucleotide having a sequence (to some named percentage of the sequence such as 65%, with higher homology being "preferred", and higher homology up to 95-99% "most preferred", "particularly preferred", or "especially preferred") homologous to SEQ ID No. 1, or a portion / fragment (of specified length) thereof” or  "An isolated polynucleotide which hybridizes (usually under some specified conditions) to SEQ ID No.1, or a portion / fragment thereof”44.

The language used in sequence claims is also very often similar to that used in chemical claims using the "Markush" notation. The metes and bounds of a given claim are provided by various transitional phrases such as “consisting of” or “comprising” multiple sequences. 

There is no general rule for the required percentage agreement or the stringency conditions for chemical hybridization, because biological function of an enzyme and particularly the portion of the sequence encoding the active site may be very highly conserved, whereas function of a structural protein may be seen in variants that are less similar. 

A further complication in prior art searching is that the literature may or may not indicate the biological function related to a particular sequence accurately, so for a particular sequence claim it may be challenging to find the many sequences in the prior art that could be related by sequence similarity, by potential hybridisation or by function.

Furthermore, amino acid sequences are encoded by “translated” DNA sequences, which occurs by a biological mechanism that reads sequences or “frames” of three nucleotides each, so a deletion or insertion error in the nucleotide sequence can result in a different “translation”.   Thus, for comparisons involving a relation to a predicted protein sequence, DNA sequences must be checked in three “frames” on each of the two base-pairing strands of each DNA molecule.   For example, shown on the figure page above is a sample output in which a DNA sequence being searched has matched a sequence in a patent document, although there are short gaps that suggest the protein sequence would not match.

Biological sequences are usually given as separate listings as well as shown in figures or tables within the specification or claims section of a patent. Short sequences (less than 20 residues) may be quoted within the text of a sentence, and not all sequences in the specification or sequence listing will be covered by the claims; for example, sequences claimed by others or in the public domain may have been used in the examples of a patent specification to find or compare the sequences that are claimed. 

The two most commonly used sequence search algorithms are variations of FASTA and Basic Local Alignment Search Tool (BLAST) as developed by the US National Center for Biotechnology Information (NCBI), or the similar, “local alignment” algorithm FASTA, both of which use heuristics to search DNA and protein sequences.  For a comparison of sequence search algorithms for protein sequences, see Shpaer et al. (1996).45  Most of the patent search service vendors provide these algorithms for searching patent data for sequences, though with varying flexibility of use.  In general it is desirable, depending on the claims, to do:

These algorithms have a tendency to trade off completeness for search speed, so many users do not realise how important user specification of parameters is to determine the precision of the output.   The sequences being compared are aligned within a moving “search window”, and controls for adjusting input parameters include:

Because different patents can claim different degrees of relatedness for sequences (e.g. from exact matches to as low as 40% identity), searches by examiners and searches for freedom to operate should be performed initially with small word lengths, low gap penalties and low cut-off thresholds with the intention of finding all related sequences, including distantly related ones. Then depending on the claims language of the patent documents of interest, each patent document found to contain a sequence that a claim may read on, can be checked to determine whether it should be discarded or included.

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44Examples are taken from the Examination Guidelines for Patent Applications relating to Biotechnological Inventions in the UK Patent Office.

45Shpaer E et al (1996) "Sensitivity and Selectivity in Protein Similarity Searches: A Comparison of Smith – Waterman in Hardware to BLAST and FASTA. Perkin – Elmer, Genomics 38, 179 - 191

Patent Sequence Databases

Four of the major national patent offices provide public-accessible sequence databases:

There are two commercial and one non-commercial online search services that allow combined searches against some or all the above sequence databases. These are:

Thomson/Derwent "GENESEQ"

Thomson/Derwent provide the largest single database of sequences extracted from patents, GENESEQ, and  an “early availability” database called “GENESEQ FASTAlert” that provides timely access to newly published patent sequences, before those sequences are fully annotated and added to the full GENESEQ database. For data from 1981 onward, GENESEQ includes all nucleic acids (10 or more bases in length), amino acids (4 or more residues in length) and all PCR primers and probes contained within patents derived from the claims, examples and general disclosure.  This covers basic patents from 41 issuing-authorities including US government and PCT patent applications.

GENESEQ is available on the web, via STNweb and in flat file (EMBL) format (enabling integration into in-house bioinformatics systems).  Many IP offices prefer the latter for confidential searching of pre-publication sequences. 

Chemical Abstract Service "STN"

STN provides access to the Thomson/Derwent GENESEQ database (called DGENE in STN) as well as access to the PCTGENE database.  Polypeptide and nucleic acid sequences in DGENE and PCTGEN are searchable using three search tools:

Input sequences can be manually entered (up to 200 residues), read from a file uploaded to the server, or may be recalled from a previously saved search.

Patent Informatics "PatGen"

PatentInformatics46 provides an online service for searching sequences extracted from patents, but also advertises an in-house database solution that can be installed for a particular user’s database with weekly data updates. The sequence data is extracted from the publicly available databases listed above (NCBI, EBI, DDBJ, PCTGEN).

PatentInformatics maintains the following online services:

PatentInformatics, like Thomson/Derwent GENESEQ, also provides an in-house search that can be installed for confidential searches of pre-publication sequences, for example by an examiner of an Australian patent that did not enter via the PCT.  Unlike GENESEQ, PatLAMP uses a “LAMP” based (Linux, Apache, MySQL, PHP/Perl) server, which includes:

While this service is very imperfect (for example, the search output is limited to ten results, no matter how broad the claim around the sequence being searched), PatGen’s presence in the market suggests that provision of such a search tool is something that a national office such as IP Australia could also envision for public good, and the tools are available for an open source solution.

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46http://patentinformatics.fdns.net/

General features of trade mark searching

Although there are other aims of trade mark searching, a common cause for both examiners and other stakeholders (e.g. businesses making applications, anti-infringement and counterfeit enforcement agents) is to uncover aspects that may be deceptively similar to existing marks covering similar products and services (often narrowed by Nice classifications). 

Distinguishing characteristics and similarities may be of both figurative and verbal types.  Verbal similarities may include visual, phonological, and synonymic aspects, all of which comprise important language-specific factors.  Thus, one section below relates to pattern recognition, with a focus on searching visual images, and another relates to particularities of foreign characters as marks.  For example, distinguishing characters of similar appearance or that have phonetical equivalence when the alphabet used is non-Roman.

Pattern recognition

Pattern recognition is a field within the area of machine learning with the aim to classify data (patterns) based either on a priori knowledge or on statistical information extracted from the patterns. More specifically, a pattern recognition system consists of:  

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46http://en.wikipedia.org/wiki/Pattern_recognition

Specific applications of pattern recognition

Specific applications of pattern recognition include speech recognition, Optical Character Recognition (OCR) of machine printed or handwritten text, text pattern classification (e.g. E-mail spam filters, or a search engine finding “similar” documents based on frequent co-occurrence of words), and image analysis, which ranges from bar-code reading to identification of human faces, fingerprints or iris patterns and identifying similar patterns in images (e.g. trade marks of various sorts including shape marks).

In Chapter Two of this report, there was discussion of Optical Character Recognition.  This was in the context of full-text and other text-based searching of patent documents, but the comments made in that context about the accuracy of OCR algorithms in general, and OCR of Chinese, Japanese, and Korean (CJK) characters in particular, are certainly relevant to searching trade marks.47 
Accuracy is affected by certain stylistic elements in the calligraphy such as brushy or indistinct edges, colours, and incorporated pictorial features, but based on the training set chosen, OCR engines using mechanisms such as associative memory neural networks can be “trained” to handle such elements.

Image analysis is the subtopic of pattern recognition concerned specifically with processing digital images.  In Chapter One of this report, design patent searching was addressed in connection with a survey of patent information search sites, and it was noted that visual image searching would be useful but is not used much in design patent searching because most searching is done using classifications. Image searching may however be similarly or more useful for normal trade marks, and shape marks.  It was, however, noted that although this has been a field of informatics research since the 1950s, the software available still has significant technical limitations, and although there has been some valuable research work related to and tested on trade mark recognition,48 it is still essentially at a prototype level.  The greatest technical progress has tended to focus on security-related images such as faces and fingerprints rather than IP industry uses.49

Similarly, algorithms very much like those used in speech recognition can be used for processing sound marks, but again most of the emphasis has been on development of training sets for the human vocal range, and less into other types of sounds.  In general, except for patterns with simple characteristics such as bar codes, the human eye and ear are still much more sophisticated pattern recognition tools than any software. 

However, with the expansion of computing power at reasonable cost, this is an area of endeavour that merits periodic re-examination.

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47Outside the scope of this contract report, CAMBIA’s informatics team had recently conducted extensive trials of the latest OCR technology with a focus on the recognition of Chinese and Japanese as well as European languages (evaluations of accuracy were done by native speakers currently employed by CAMBIA as IP research analysts), and was able to identify OCR engines that with our applications achieved accuracy levels of over 99% on patent documents provided in Chinese and Japanese.

48For example, Jain AK, Vailaya A (1998) Shape-based Retrieval: A Case Study with Trade mark Image Databases. Pattern Recognition 31:1369-90.; Eakins, JP, Boardman JM and Graham ME (1998) Similarity Retrieval of Trade mark Images. Multimedia 5:55-63, which also uses shape similarity, and Zhao T, Tang HL, Ip HHS, Qi F (2002) Content-based trade mark recognition and retrieval based on discrete synergetic neural network. Distributed Multimedia Databases: Techniques and Applications, pp. 58 – 72. A useful survey of the trade mark visual matching literature may be found in Leung WH and T. Chen (2002) Trade mark retrieval using contour-skeleton stroke classification, IEEE International Conference on Multimedia and Expo. Part of a thesis submitted to Carnegie Mellon University in 2003, it also describes a method to retrieve trade marks using query by sketches. Trade mark images are filtered to remove noise, then segmented based on pixel connectivity. Either thinning or edge extraction is applied to each region to produce a stroke sketch.

49Fall CJ, Giraud-Carrier C (2005) Searching trade mark databases for verbal similaritiesWorld Patent Information 27: 135-143

Developments in image recognition technologies

The European eMAGE project is a significant development on the horizon for image recognition technologies specifically for trade mark and design searching, which will use an associative memory neural network for pattern characterisation.50

This project, first reported in 1998, has already undergone delivery delays and has yet to materialise.51 However, there is a commitment by the French INPI as lead agency to use it and market it.  Development in the current phase has been at a cost of about 2 million Euros52, approximately half funded by the European Commission under the eContent programme53, largely in a contract to the French company LTU Technologies54.  This company, already reputed for image processing software for law enforcement and intelligence, was acquired in March of this year by JASTEC International Inc., a US subsidiary of JASTEC Co., Ltd., a Japanese software development and systems integration company55.  The business model of the eMAGE consortium is to out-license this software to other national IP offices, and to package and market to IP divisions in private companies,  and anti-counterfeiting authorities such as those associated with ports and border controls.56

The searches will be against European registered logos and industrial designs databases, and in development has used sample data provided by the French and Portuguese INPI offices and the Œsterreichisches Patentamt. Search capacities are also being set up for French, Portuguese, German and English.  The project is not currently envisioned to encompass other languages such as languages rendered in non-Roman characters.57

Often better results may arise from combining several methods rather than using a single method such as statistical analysis of Fourier descriptors, invariant moments or Zernike moments.58 Ad hoc weighting functions may be used in the combination,59 and image analysis methods may even be used in combination with full-text searching methods, which if used as an initial filter for the images may decrease computational intensivity.60

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50http://www.eu-projects.com/emage/Details.htm
51http://www.eu-projects.com/emage/results.htm
52http://www.eu-projects.com/emage/Details.htm
53http://www.cordis.lu/econtent/
54http://www.ltutech.com/en/
55http://www.ltutech.com/en/news.press-release-2005-04-18-00.html
56http://www.eu-projects.com/emage/objectives.htm
57http://www.eu-projects.com/emage/Details.htm

58Fall CJ, Giraud-Carrier C (2005), ibid.
59Chan DYM, King KCI (1999) Genetic algorithm for weights assignment in dissimilarity function for trade mark retrieval. Third International Conference on Visual Information and Information Systems, Lecture Notes in Computer Science 1614: 557—565, uses an algorithm to determine weightings consistent with human judgements in order to classify 1360 monochromatic trade marks.
60Ravela S, Manmatha R (1999) Multi-modal retrieval of trade mark images using global similarity. U. Massachusetts Computer Science Technical Report TR99-32, describes initially narrowing the set of possibly similar trade mark images by using full text search on the text associated with trade marks. The images are then filtered with Gaussian derivatives used to calculate geometric curvature and phase, and the similarity in the distribution of these statistics is then used as a measure of the similarity of the images.

Special features related to foreign word marks, particularly CJK characters

In English and many other languages in which it is possible to find similarities based on letter order, or similar length with a number of letters in common, “fuzzy search” algorithms have been designed to focus on starting and ending letters with letters added, transposed, or deleted, similar to applications in molecular biology for aligning similar DNA sequences61 as discussed in Chapter Two.  However, with regard to the visual similarities of words, the common algorithms used to determine the similarity of words written in Roman letters are not applicable to languages written in ideographic scripts, such as Japanese or Chinese.
In many languages a given character can be written in different ways.  For example Chinese characters can be written in a handwritten style with simplified characters now being used as a standard in mainland China, and more traditional complex characters are used in Hong Kong and overseas Chinese communities.  In addition, calligraphy is often a form of artistic expression with diverse styles. Consequently, two characters that look quite different may be recognised as synonymous by a native speaker.  While staff having specialised cultural and linguistic skills is one solution to this challenge for examiners, access to native speakers of many different languages and dialects would be required to address it fully.

To at least partially address this complexity for searching visual similarities using informatics applicants should be required to submit non-Roman letter-based word marks, in addition to the actual planned logo, using a standard character encoding system such as Unicode62.  

If it is not preferable to address this with a regulatory change, it could still be facilitated through the use of Optical Character Recognition (OCR) techniques and or skilled staff to extract text from the images submitted according to current requirements. The use of a standard character encoding would allow machine translation and other computational linguistic techniques to be applied to more common languages such as Chinese and Japanese.

Skilled trade mark searchers often use a variety of techniques such as part word searches to identify phonetically similar word marks. These rely on understanding of the peculiarities of spelling and pronunciation to predict the likely pronunciation of “made up” words such as “h@ppy” or “STOCKX” or “OZZEE”.

Numerous algorithms have been developed to aid in the automatic identification of similar words, using phonetic and or letter sequence-based approaches. This approach is obviously also language dependent, but considerable advances have been made particularly in countries with multilingual cultures, such as Switzerland.  Some of the better known approaches are edit distance (also known as the Levenshtein algorithm), N-grams, and Soundex.63 There are open source software packages such as ht://Dig incorporating these algorithms, that provide rules for handling accented characters and capabilities for fuzzy searching once words are reduced to phonetic codes. However, these approaches are still based on a requirement that the pronunciation of words in the mark is known for comparison via these methods to the pronunciations of possibly similar words in a reference database.63

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61Fischer I Zell A (2000) String averages and self-organizing maps for strings.  Proceedings of the Second ICSC symposium on Neural Computation, pp. 208-15.

62http://www.unicode.org/

63For more details see Fall CJ, Giraud-Carrier C (2005), ibid.

Current practices for foreign word mark searches

In practice what happens with Trade Mark Offices, for example in Australia,  the representation of a trade mark in an application for registration of the trade mark includes words of a language other than English, the applicant must file in support of the application a translation of the words into English.  Further, if the representation of a trade mark in an application for registration of the trade mark includes characters constituting words in characters that are not Roman letters, the applicant must file both the translation and a transliteration of the characters into Roman letters, using the recognised system of Romanisation of the characters.
Unfortunately, transliteration of non-Roman characters, even if performed to a high standard using recognised systems such as Pinyin, is problematic as a guide to pronunciation, particularly if characters are pronounced differently in different regions and dialects.   Furthermore, speakers from different Chinese-speaking regions may legitimately transliterate or Romanise the same Chinese name differently, particularly because of the variety of ways in which a single combination of characters can be pronounced. This can create difficulties in searching all variations.  Fortunately, as mentioned in Chapter Two, each region uses a relatively small and consistent set of characters when transliterating. 

Thus, it may be useful to consider making the requirement for transliteration to include the common transliterative variants, as well as a phonetic rendering of the words with any common variants. This would be important to detect an element that appears prominently in a trade mark but which is pronounced similarly to a generic term or previously trade marked name (for example, 可口可乐, which can legitimately be transliterated “kekoukele", refers to "Coca Cola"64).

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64See http://www.daochinasite.com/eng/study/brand.shtml for some examples of Chinese versions of well known brand names.

General features of plant variety rights information searching

While within a particular country plant variety rights are often readily searchable by examiners and the public, it may be of benefit to breeders and producers to be able to search the rights issued by other countries.
Thus, for example, it would be of value to have the data internationally and searchably available, e.g. on a website such as the Patent Lens, for various national sui generis systems and for the International Union for the Protection of New Varieties of Plants (UPOV),65 which was established by the International Convention for the Protection of New Varieties of Plants adopted in Paris in 1961 and revised in 1972, 1978 and 1991.

The main reasons this enlargement of the data available would be desirable are similar to those outlined for patent information in earlier chapters of this paper.  Plant-derived products from one country that are subject to plant variety protection in other countries may be subject to impoundment when imported into these countries.  With the standardization afforded by TRIPS, many multinationals are becoming increasingly active about protecting their PVR rights by this mechanism.66

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65http://www.upov.int/
66van Wijk AJP, Louwaars NP and Eaton DJF (2004)  Framework for the Introduction of Plant Variety Protection in Developing Countries. Centre for Genetic Resources, Wageningen.

Plant patents and other sui generis systems

A complexity or advantage for searching plant variety rights in different countries is that they may be found in several different systems.  TRIPS allows the development of sui generis systems, for example, which are in active development in some important markets, and in countries from which considerable new crops, particularly ornamentals and medicinal plants but also new variants of traditional crops, arise, e.g. Indonesia67  and India.68 

In the USA, the use of plant varieties may obtain government-approved monopoly rights under one of three different systems:  plant variety protection certificates (PVP) under the U.S. Plant Variety Protection Act (1970) cover plants that are sexually reproduced,69 with the intent to conform in UPOV 1978 and 1991; plant patents according to the U.S. Plant Patent Act (1930) cover plants that are asexually reproduced (e.g. by tissue culture, cuttings etc.) except tubers;  and plants and plant parts may be covered by utility patents, for example in product-by-process claims. 

Australia’s system has also incorporated various protection schemes simultaneously.  AT IP Australia’s website a limited comparison is provided between Plant Variety Rights under the PVR Act of 1987 and Plant Breeding Rights under the PBR Act of 1994 and the interface between plant patents and plant breeding or variety rights. Some varieties may have double protection in Australia.71

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67Dr. Ir Sugiono Moeljopawiro, Department of Agriculture, Center for Plant Variety Protection, Jakarta, Indonesia, personal communication. 
68Prof. Dharam Pal Deswal, Dept. of Seed Science and Technology, CCS Haryana Agricultural Faculty, HISAR, India, personal communication.
69This Act was amended in 1996 to include potatoes and Jerusalem artichokes.
70For example, CAMBIA’s Patent Lens currently contains not only the all the US utility patents but also the plant patents, on which we’ve recently contributed to statistical studies with the International Science and Technology Practice and Policy Center (INSTEPP).
71The 1978 UPOV Convention did not accept double protection but the 1991 Act lifted the ban. In the USA, 1994 legislation clarified double protection, and in Europe there has also been clarification of rights in the event of a conflict of interest between PBR holder and a patent holder arisen on the same variety.

Test records

Another reason for facilitating searches of the plant protection information of other jurisdictions is that it can provide other information of value to breeders and primary producers.  For example, many European countries carry out VCU (Value for Cultivation and Use) indexing for disease resistance and other performance characteristics concurrently with the DUS (Distinctiveness, Uniformity, Stability) testing required for determination of novelty, at least for certain food crops (particularly vegetables and cereals).72  Some countries, notably the Netherlands, are also experimenting with provision of visual documentation of the distinctive characteristics, for example in ornamental species by a requirement for standardized digital photographs of particular views at set distances from buds and flowers at various developmental stages.73

It may be of value for individual countries to provide more information searchable on a website about the Technical Guidelines that are used for DUS testing, particularly as these are actively evolving in international collaboration in the Technical Working Parties of UPOV.  For example, the definition of agreed standards on Eucalyptus is being led by Brazil in the Technical Working Party for Ornamental Plants and Forest Trees.74

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72Dr AJP van Wijk, Centre for Genetic Resources, Wageningen, the Netherlands, personal communication.
73Dr Ir Liesbeth Hof, Centre for Genetic Resources, Wageningen, the Netherlands, personal communication.
74Dr Daniela de Moraes, National Plant Varieties Protection Service, Brasilia, personal communication.

Biological Diversity and Access and Benefit Sharing

The area of what information should be provided on plant variety rights and how it should be used in intellectual property protection is quite dynamic. In connection with worldwide consideration of the requirements of the Convention on Biological Diversity75 and the Bonn Guidelines,76 the International Treaty on Plant Genetic Resources,77 and the potential WIPO development agenda, some calls are being made for plant accession information to be made available in connection with patent applications that claim plants or plant-derived material, or even in applications that use plant genetic resources in examples.

Each country may consider what information requirements it may make of applicants that would be added to its searchable databases, in advance of any international requirements to provide this information. 

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75Concluded at the 1992 UN Conference on Environment and Development in Rio de Janeiro and in force since 1993, it requires signatories, which comprise over 180 countries including Australia, to facilitate access to genetic resources in ways that promote their sustainable use.
76For implementation of the Convention on Biological Diversity, requiring national competent authorities to provide national focal points for information.
77Entered into force 29.7.04, setting up a multilateral system with requirements for Access and Benefits Sharing.

Other recommendations for governments

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78e.g. Grain Pool of WA vs. The Commonwealth of Australia & Anor (P34/98) is provided at http://www.upov.int/en/about/legal_resources/case_laws/pdf/au_gazette_89_12-2000.pdf

The information contained in this page was believed to be correct at the time it was collated. New patents and patent applications, altered status of patents, and case law may have resulted in changes in the landscape. CAMBIA makes no warranty that it is correct or up to date at this time and accepts no liability for any use that might be made of it. Corrections or updates to the information are welcome, please send an email to info@bios.net.