Simmons, Edlyn S.
 Database
 June 16, 1995
      THREE SCENARIOS INVOLVING PATENTS
      The sales staff returns from an international trade show brimming over
 with excitement. Swiss Widgets S.A. was showing a remarkable new widget
 with a folded handle. Customers swarmed all over their stand, waiting in
 line to order cases of the new widgets. The salesman brought back a sample,
 and it looks like an easy job to retool the factory to make them. Nobody in
 the United States is selling anything like it, and if your company works
 fast, you can be the first to market one in the U.S. Or can you? On the
 under side of the widget is a serial number: CH 691,445. That could be a
 patent number: the ISO country code for Switzerland is CH. But that's a
 Swiss national patent number, and Swiss patents aren't valid in the United
 States. The company spends a few hundred thousand dollars modifying the
 production lines and hires a third shift to fill the ensuing demand. Then
 the company gets a letter from Swiss Widget's New York law firm warning
 that the new widgets infringe a valid U.S. patent. Hundreds of thousands of
 dollars' worth of legal fees later, Swiss Widgets is awarded lost profits,
 tripled damages and legal fees in the patent infringement trial. Your
 company has to retool the assembly line again, dump five million unsalable
 widgets and lay off 30 percent of the employees.
     Your client has been studying a new process technology and, in order
 to have all available information, brings you a list of references she has
 collected from the literature so that you can order copies and have foreign
 language documents translated. There are three patents on the list,
 published by the United States, Germany and Japan. You order translations
 of the German and Japanese patents and, when they arrive the following
 month, you deliver them with an invoice for $1300 in translation fees. The
 phone rings. 'You can't seriously expect me to pay this invoice,' shouts
 the client, 'all of these patents say the same thing!'
     Beachfront Biotechnology Co. is available for acquisition. Your
 company inquires about Beachfront's products under development, research
 staff and assets. Beachfront replies that it has a cure for Alzheimer's
 disease in Phase II, that two of its scientists are Nobel prize winners,
 and that it holds 25 patents. Your company sends the merger and
 acquisitions team out with a blank check. After the check is cashed, you
 discover that six of the 25 'patents' are pending applications that haven't
 yet been published, seven are published PCT applications that haven't
 matured into granted patents anywhere, five were assigned to the National
 Institutes of Health, three lapsed because maintenance fees hadn't been
 paid, and the rest are U.S. patents without counterparts in other
 countries. Plans for a world-wide market for Beachfront's revolutionary
 therapies have to be curtailed severely.
     patent information can have an impact on profits in more ways than
 most people think You could have prevented these corporate setbacks before
 your company invested so heavily in them by SEARCHING a patent family
 database.
      What Is A patent Family And What Can A patent Family Database Do For
 An Information Specialist Who Is Not A patent Specialist?
     Information specialists working in technical areas are well aware of
 patents as scientific documents that contain unique and valuable technical
 information, and they are accustomed to retrieving patent citations from
 subject-oriented databases, even when they elect not to search specialized
 patent databases. Business searchers know that patent databases hold the
 answers to all kinds of questions  1 . But nonspecialists often view
 patents as necessary evils--arcane documents different from the rest of the
 literature, complex, redundant and difficult to comprehend. They may not be
 aware that patent family databases can solve many of the problems in
 handling patent information.
     Patents unquestionably pose problems for searchers, although many of
 the same problems arise when a search of the conventional kind retrieves
 meeting abstracts, theses or foreign literature. Frequently, a search of
 two or more databases retrieves different patent citations that seem to
 describe the same invention. A search often retrieves a citation to a
 patent in a language that neither the end-user nor the information
 specialist can read, or a patent that must be ordered from a distant and
 expensive source. And a search for the patent covering a product or process
 in a particular country often retrieves patents from the wrong countries.
     patent family databases can ease all of these headaches: they can
 eliminate redundancy from search reports and can often locate an
 inexpensive translation (almost) instantaneously. No such help is available
 for foreign journal citations! Most important, patent family databases
 extend the patent coverage of other databases (not to mention product
 labels) to all of the industrialized countries in the world, and provide
 information about the international scope of the patent coverage of
 inventions belonging to competitors and potential business partners.
     WHAT IS A PATENT FAMILY?
     How can patent family databases do all of those things? The answer is
 found in the nature of the patent system itself. patents are issued to
 inventors by national governments and international agencies, granting them
 the right to exclude others from making, using or selling their inventions
 in the granting country for a limited time. In exchange, the inventor
 discloses the details of the invention to the public. patent disclosures
 can be published at the time the patent is granted, before it is examined
 for patentability, or both, depending upon the laws in effect in the
 country in question.
     So that inventors may easily patent the same invention in more than
 one country, international treaties have been established that grant
 reciprocal patent rights to applicants for patents in the signatory
 countries. The most important of these treaties is the Paris Convention for
 the Protection of Industrial Property, which has been signed by most
 industrially advanced countries. The Paris Convention provides an
 international standard for determining which of several applicants for a
 patent on the same invention will be granted a patent (the first applicant
 in most countries or, under certain circumstances, the first inventor in
 the United States) and which publications represent legal bars to the grant
 of a patent because they were published prior to the filing of the patent
 application.
     Under the Convention, an applicant for a patent may file a patent
 application on the same invention in any other member country within one
 year and make a formal claim for priority on the basis of the original
 filing. This claim for priority establishes the filing date of the original
 application as the effective date of the newly filed application for the
 purposes of deciding which publications are bars to patentability and
 deciding priority of invention. The result is a series of patent
 applications and, ultimately, a series of patent documents covering the
 same invention and belonging to the same inventors or to the organization
 assigned the rights to the invention. The resulting patent documents are
 published by the various countries at different times and in different
 languages.
     Since the patent laws of the world's countries vary, there are
 differences among the resulting patents. Aspects of the invention may be
 unpatentable under the laws of some countries (methods of treating
 diseases, for example, are patentable in the United States but not in most
 other countries), and some countries may regard the invention claimed in
 the original patent as representing several distinct inventions and require
 that the claims be separated into two or more divisional patents. But the
 technical disclosure of the invention is essentially the same in all of the
 patents that are eventually published, and all of the patents define
 essentially the same invention. For many purposes, the members of a patent
 family may be substituted for each other.
     BASICS AND EQUIVALENTS
     Many databases index patents from a single country or patenting
 authority. Multinational databases originally indexed patents from a
 limited number of countries but the growth of international commerce has
 increased both the number of countries with patent systems and the demand
 for information about patents issued by additional countries.
     Because the disclosures of all members of a family of patents are
 likely to be the same, even databases that index patents from many
 countries need not reabstract or reindex each patent that issues. In most
 cases, only the first patent in a patent family to reach the database
 producer is abstracted or indexed in depth. Databases that keep track of
 multiple family members usually refer to the abstracted family member as
 the 'basic' patent. This may or may not be the patent on which priority is
 based, but all members of the patent family will have the country, serial
 number and filing date of the priority application on their cover pages,
 either as national application data or as a claim for priority. As new
 patents reach the database producer, the priority data (or the application
 data, if no foreign priority is claimed) are compared with those of the
 patents that are already recorded in the database. Patents that match
 earlier entries in the database are recorded as equivalents to the basic
 patent that has already been indexed.
     Sometimes two or more patent applications are combined for foreign
 filing, producing a family of patents that claim more than one priority.
 Conversely, some broadly defined inventions are separated into several
 narrow patent applications, resulting in several patents from the same
 country that claim the same priority. Each patent family database has its
 own guidelines for indexing in such situations. An applicant is not
 required to claim priority and applicants are unable to rely on foreign
 priorities when they file applications in countries where they are not
 subject to a reciprocal patent treaty (Taiwan, for example, is not a member
 of the Paris Convention). Not infrequently, mistakes are made by
 applicants, and foreign filing is delayed beyond the priority year or a
 patent office fails to record the priority data on the patent document. As
 a result, non-Convention equivalent patents are also published. These are
 responsible for many of the variations among the family members recorded by
 different databases.
     PARENTS AND CHILDREN
     Claiming priority from an application filed in another country is not
 the only way a patent application can obtain the benefit of an earlier
 filing date. Inventions are often modified after the filing of a patent
  application be
 filed, the later applications are usually examined as though filed on the
 same date as the original application, which becomes known as the parent
 application.
     The differences between the parent application and its children may be
 very slight or they may be substantial. In the United States, divisional
 applications have different claims from those of the parent application,
 but their disclosures are forbidden to include any 'new matter'
 (information not included in the parent application), so the only changes
 to the disclosures are deletions. A continuation application may be filed
 in the United States if difficulties arise in the prosecution of a patent
 application. In this case, the parent applications are usually abandoned
 without issuing as patents.
     When it is necessary to add new information to a pending U.S.
 application, the application must be refiled as a continuation-in-part
 (CIP) and is entitled to the filing date of the parent application only
 with respect to the information in the parent application. The new
 application data may or may not generate a new patent family in a database.
 In some countries, it is possible to add new matter to a pending patent
 application before it is granted without losing the benefit of the original
 filing date and without acquiring an additional application serial number
 or date. If the owner of a United States patent discovers that the wrong
 claim scope was specified in the patent or that additional factors should
 have been considered by the patent examiner, it is possible to file a
 reissue or reexamination application. This results in the publication of an
 additional document that, like the patent of addition available in some
 other countries, expires on the date scheduled for the expiration of the
 original patent.
     Each patent family database has its own guidelines for the indexing of
 these types of patent documents. The World Intellectual Property
 Organization (WIPO), which oversees standards for international patenting,
 has defined several types of patent families (see WIPO sidebar, page 32).
     DESIGNATED STATES
     Regional patents are issued by the European patent Organization (EPO)
 and two African regional patent offices. The Eurasian patent Organization,
 comprising most of the states of the former Soviet Union, was established
 in 1994. The World International Property Organization (WIPO) administers
 the patent Cooperation Treaty (PCT), through which a single patent
 application is filed for separate prosecution in each of the participating
 states designated at the time of filing. Each of the patent family database
 producers that cover EPO and PCT documents lists designated states. PCT
 applications are published with the country code 'WO' 18 months after the
 earliest priority application date.
     National patents are issued by countries designated in PCT
 applications after the published applications have been examined by the
 national patent offices. European patents are actually granted by the
 European patent Office and take effect in each designated country after the
 patentee has registered the European patent in the national patent office.
 Some EPO member countries assign national patent numbers to the granted
 European patents and some of these patent numbers turn up in patent family
 databases.
     PATENT FAMILY DATABASES
     Which databases provide patent family information? Although there are
 dozens of databases that index patents, only a few actually provide patent
 family data online. Those that do so vary considerably in country coverage
 and in the cost of obtaining a family of patent numbers.
     INPADOC
     The International patent Documentation Center (INPADOC), which
 produces the world's largest patent family database, is an agency of the
 European patent Office. Data in the INPADOC database are supplied directly
 by the patent offices of 60 countries and international patenting
 authorities and are not restricted in subject coverage. Although coverage
 of some countries begins as early as 1960, most of the major industrial
 countries are included from about 1968. patent status information from the
 United States, Hungary and most of the member countries of the European
 patent Organization is also indexed. The resulting file of patent records
 is available directly from the INPADOC computer in Vienna, as a COM
 subscription service, or from databases provided by ORBIT, DIALOG, STN and
 the Japanese language PATOLIS system. INPADOC also supplies the patent
 family data for the printed Chemical Abstracts patent Concordance. The
 INPADOC PFS PRS, supplied directly by INPADOC, is limited in its searching
 capabilities and is favored by SEARCHERS in European countries whose heavy
 use of patent family data justifies the cost of a subscription.
     The online versions of INPADOC are significantly different from each
 other. All of the databanks include the title of the patent document in the
 original language or in English translation, the names of the assignee or
 corporate applicant and, for many countries, the names of the inventors,
 the International Patent Classification and all of the application,
 priority and publication data. Cross-reference accession numbers for the
 Derwent World Patents Index, JAPIO and/or Chemical Abstracts record
 covering the same patent are available from INPADOC for some patents. On
 ORBIT, each patent document is represented by an individual record in the
 database, and a patent family search, using the FPAT, FSET or FPRI command,
 yields the entire bibliographic record of each member of the extended
 patent family. It is not possible to search directly for priority
application data. A patent family search costs $20 in addition to other
 search and display charges. Patent status information is stored in a
 separate Legal Status file or may be displayed for a family of patents
 using the PRINT FAMSTAT command. INPANEW is an update file for the ORBIT
 INPADOC file. It contains the records added to the database during the
 latest six weeks and may be searched directly for priority application
 numbers.
     On DIALOG's implementation of INPADOC, the patents in the database are
 preprocessed to produce a single record for each extended patent family.
 Priority data may be searched without restriction, and a full printout of a
 patent family record costs $20. For a lower cost, it is possible to display
 only patents from a specified country or the patent that INPADOC indexed
 first, which DIALOG (not INPADOC) designates as the 'basic patent.' It is
 unfortunate for searchers in the market for a bargain that INPADOC indexes
 not only published patent specifications but also announcements of patent
 filings from, for example, the U.K. and Israel, that are not actually
 published. When one of these phantom documents is announced, it becomes the
 DIALOG basic patent.
     STN's INPADOC database may also be searched by priority application
 data and also retrieves a combination family record. Unlike DIALOG, STN
 stores the data for each patent separately and generates a new patent
 family at the time a search is done. Full patent families may be displayed
 on STN for $12.50, and records for a single country may be obtained for a
 lower price by designating a number representing the country as the display
 format. STN has an update file called INPAMONITOR.
     EDOC
     The Institut National de la Propriete Industrielle (INPI), the French
 Patent Office, produces the EDOC database which is available through
 Questel. The database includes patents from 20 patent issuing authorities,
 with most countries represented from the late 1960s. Of all the patent
 family databases available outside Japan, only EDOC carries records for
 Japanese patents that have been granted after publication of the accepted
 specification and its opposition period. EDOC represents the EPO's search
 file, in which each family of patents is represented by a common patent
 classification under the European Patent Classification system, a more
 refined version of the International Patent Classification system. Aside
 from its patent classification data, EDOC is exclusively a patent family
 database; patents are indexed by patent number and priority data only, but
 without subject matter restriction. No titles or patentee names are
 available online. There is a $22 charge for special family searches using
 the ..FAM command. The ..FAM command retrieves the full extended family,
 but most family members can be retrieved by simply searching for priority
 application numbers.
     DERWENT
     The World Patents Index databases, produced by Derwent Information
 Ltd., include patent family information from 30-plus countries. Derwent
 began indexing pharmaceutical patents from 14 countries in 1963 and added
 agricultural patents in 1965, polymer patents in 1966, and other chemical
 patents in 1970. Nonchemical patents were added to the service in 1974, and
 country coverage has expanded as dictated by customer demand and the
 availability of documentation from the various patent offices. It is rather
 difficult to specify the exact number of countries in the Derwent database
 (or any other patent family database) because the availability of patent
 documents depends as much on politics as on indexing policy. Eastern
 European countries have disbanded and the new countries that replaced them
 may or may not have functioning patent offices; Derwent has announced that
 several additional countries will be phased into the database during 1995.
 The patents of most included countries are indexed in full, but exceptions
 have been made for basic patents from what Derwent designates as 'minor
 countries.' Japanese patents, because of the cost of obtaining and indexing
 them, were originally included for core technologies, in limited numbers,
 and have been indexed selectively, with full coverage scheduled for the end
 of 1995.
     Patents may be retrieved by patent numbers, priority application data,
 company and inventor names, international patent classification codes,
 words from the title and abstract, and controlled thesaurus terms.
 Exemplary drawings are online for recent patents. Subscribers to the
 Derwent Chemical Patents Index and Electrical Patents Index are also
 entitled to search by detailed codes designed by Derwent for deep indexing
 of patent information. Patent family information is updated weekly and is
 part of the normal WPI record displayable by nonsubscribers for $2.00 per
 family record and by subscribers for $0.85. The World Patents Index files
 are available on ORBIT, DIALOG, Questel and STN.
     APIPAT
     APIPAT is the patent database of the American Petroleum Institute and
 covers only patents relating to the petroleum industry, most of which are
 chemical patents. Patent family information from eight countries, later
 increased to nine, was included in the database from its inception in 1964
 until 1977. Although country coverage in APIPAT has been increased, patent
 family information is no longer indexed. Patent family information can be
  names and
 subject concepts, including deep indexing applied by API. The database
 is
 available on DIALOG and STN. On ORBIT, APIPAT records have been merged with
 the World patents Index under the WPIA file and include Derwent patent
 family information.
     CLAIMS
     The CLAIMS databases are produced by IFI/Plenum and are available on
 DIALOG, ORBIT, STN and Questel as three files: the Biblio/Abstracts file;
 the Uniterm file, which has enhanced indexing and is available to
 nonsubscribers at an increased hourly rate; and the Comprehensive DataBase
 file on ORBIT, DIALOG and STN, which has additional enhanced indexing and
 is restricted to subscribers. Although only U.S. patents are indexed in the
 CLAIMS databases, equivalent patents from five countries were added to the
 records of chemical patents from the beginning of the service in 1950
 through 1979. patent family information may be obtained by searching for
 the numbers of U.S. or foreign patents, U.S. application or priority data,
 assignee or inventor names, and subject terms.
     WHICH DATABASE SHOULD YOU SEARCH?
     Where you should search for patent family information depends upon how
 much information you need, how much information you already have, and what
 kind of technology you are searching for. Certainly, the cost of the
 information will be a consideration since a patent family search can cost
 as little as $0.85 a record or carry a surcharge of $22 per family
 searched. It pays to shop around for the information you need and to avoid
 paying for more information than you can use. If you are interested only in
 finding a translation or eliminating duplicate citations from a search
 report, World patents Index is probably the most comprehensive and
 economical place to search.
     There are patent family searches for which the choice of a patent
 family database is more complicated, especially those relating to
 nonchemical technologies, older patents and less industrially advanced
 countries. Chemical patent families are found in databases that begin as
 early as 1950, are searchable by a wide assortment of parameters and
 display patent family data at no extra charge. APIPAT or CLAIMS may be the
 only places to find equivalents for some patents indexed before Derwent
 began full chemical patent coverage in 1970. These three databases provide
 deep subject indexing of chemical patents as well as patent family
 information. Deep indexing of the patent text is not present in the other
 patent family databases.
     Options for nonchemical patents are much more limited. Nonchemical
 patents were not indexed by Derwent until 1974, APIPAT covers only
 petroleum industry patents, and CLAIMS has never indexed equivalents to
 nonchemical patents. Derwent and IFI/Plenum define chemical patents
 broadly, but nonchemical patent families are not represented in significant
 numbers in any database before the late 1960s. For equivalent European or
 North American nonchemical patents published during the late 1960s and
 early 1970s, you can search EDOC, but only when you know the identity of
 the patent of interest. patents from the less developed countries are
 indexed only by INPADOC. If you want to know about Maltese patents, it's
 the only place to search. Country coverage changes frequently, and INPADOC
 occasionally adds many years of backlog information from a country, such as
 Malta, which recently provided tapes of data. If comprehensive results are
 essential, it would be a good idea to search all of the available patent
 family databases.
     VARIATIONS IN PATENT FAMILIES
     Rules for building patent families differ from database to database.
 INPADOC builds patent families by matching any priority claimed in a patent
 with all remaining priorities in the database. patents that do not have a
 claim for priority but that appear to have been filed on the same invention
 by the same applicant at the same time as another patent, called
 intellectually identified equivalents, are added to the patent family
 whenever one happens to be brought to the attention of the producer.
     Derwent established a system for handling patents with multiple
 priorities based on the assumption that the newest information in a patent
 specification will have been added in the latest priority application. For
 many years, Derwent created patent families by grouping patents that shared
 the same latest priority. An INPADOC family could include several different
 Derwent families. In 1992, Derwent instituted a change in policy whereby
 each new priority generated a new basic patent, but patents were posted as
 equivalents to any patent family that shared any priority. The new system
 was incompatible with the old system, and we ended up with families that
 included a granted patent from a country without a published application
 and national patents based on PCT applications that weren't listed.
 Subscribers should have foreseen the problems changing policies in
 mid-database would have caused, but we didn't try to talk Derwent out of
 making the change before the peculiar records appeared. Eventually
 subscribers complained about the inconsistent records, and Derwent agreed
 to return to something resembling the old system with more
 cross-referencing. Some of the scrambled records have been repaired.
     No one actually indexes true national patent families, the kind that
 results from U.S. continuation practice, although PATDPA, the German patent
 Office's database, refers to the various levels of German patent
 publications as a patent family. You have to build your own national patent
 family by finding the national serial numbers and searching for other
 patents that were based on those serial numbers. This is easy enough to do
 in a single-country patent database like CLAIMS. There is enough
 information in each record to trace the history of the various filings
 because that information is recorded on the patents by the patent offices.
 There is no way to know if there are more divisions or
 continuations-in-part pending, however.
     If you want to create a national patent family or expand a Derwent
 patent family so that the entire extended patent family is accounted for,
 the host systems have software that make it possible. The DIALOG MAP
 command, Questel's MEM commands, ORBIT's Print Select and STN's SmartSelect
 can be used to extract priority application numbers from one record and
 search for other records with the same priority. By repeating the procedure
 until no additional records are retrieved, you can collect all of the
 patents that share a priority with any other member of the family. This is
 made even easier by STN's new FSEARCH command, which automates the process
 across multiple databases.
     PROZAC'S PATENT FAMILY
     To show the differences among patent families, I searched a single
 patent family in three family databases. It would be convenient if you
 could illustrate all of the quirks in patent family indexing with one
 family of patents, but that isn't likely. I settled on the patents covering
 Prozac, Eli Lilly's famous antidepressant. Its generic name is fluoxetine,
 and it's chemical name is
 N-methyl- gamma - 4-trifluoromethylphenoxy -3-phenylpropylamine. This
 family has enough quirks to show why a single article can't alert you to
 all of the problems you may encounter (Table 1).
     This summary of the families of the patent that claims fluoxetine as a
 new compound shows that patent families covering important inventions are
 likely to be complex. In addition to the family begun when the original
 basic patent was indexed, Derwent has three extra families for U.S.
 continuations-in-part. INPADOC and EDOC had only one family that included
 all six U.S. patents. Tables 2 and 3 illustrate some of the differences
 between the patent family records from WPI, EDOC and INPADOC.
     The three databases don't cover all the publication levels from all
 the countries even for countries covered by all three databases. The three
 databases don't format the patent numbers the same way either, which is a
 problem when you're using print sources too. The problem is much more
 serious when you try to search for a family belonging to a patent number
 found in the open literature and formatted by someone who has no patent
 expertise. The difference between the open literature and a patent database
 is that a given database will always index a patent or application number
 in a standard format. Unfortunately, the format used by the database may
 not be the same format shown on the patent document or used by another
 database.
     Derwent's standard formats were designed to be absolutely predictable,
 and although the formats distort some serial numbers, they give extremely
 reliable search results. You can use Derwent format to search INPADOC on
 ORBIT or STN, and DIALOG's standard format to search any of the databases
 on DIALOG. Questel gives the option of searching EDOC in Derwent format
 too, by using the /XPN and /XPR fields for patent numbers and priority
 application numbers. I can't promise that all the formats are converted
 properly though--computer algorithms have limitations. If you can't tell
 whether you're looking at the same patent in records from different
 databases or host systems, you can try zero-filling and rotating
 year-numbers to see whether you can convert the number you have into the
 one you've retrieved in the other database. INPADOC and Derwent list each
 level of publication from a given country in the family record. EDOC
 shortcuts the problem of multiple records by including a new field called
 PNFP that indicates that a following publication with a listed kind of
 document code has been published. If the patent kind codes don't match up
 or if you have a number without one, check the issue date.
     The worst patent formatting problem is with Japanese patents. The
 Japanese Patent Office numbers patent applications with the imperial year,
 counted from the beginning of the reign of the current Emperor. Emperor
 Hirohito died in 1989 in the 64th year of his reign. Emperor Akihito hasn't
 been Emperor long enough to create ambiguity with early 20th century
 Japanese patents that were already in databases, but serious problems will
 arise with the beginning of the 21st century. So many Japanese patent
 applications are published every year that an eighth numeric character is
 needed; Japanese patent numbers can't fit into Derwent's standard format.
 The first publication level, kind of patent code A2, is followed by
 examined patent applications, kind of patent code B4, and eventually by a
 granted patent. When Japanese patent law changed in the early 1970s,
 Derwent used the Cinderella's stepsister system to fit all Japanese patents
 into their fixed-patent nine-character field and began using the Gregorian
 year for type B4 patents because there was no kind of document patent field
 at that time. B4 documents are not really granted patents: they have to
 survive opposition after being published. Japan issues patent numbers after
 opposition, in a different series, without any clues to the earlier
 publication levels except for application data. And nobody but EDOC picks
 them up. The Prozac patent family contains an intellectually identified
 equivalent, a Japanese published application that somebody at Derwent
 recognized as covering Prozac. Since it doesn't have a foreign priority, it
 may really belong in the family of one of those U.S. CIPs. You'd have to
 read it to be sure what it really covers. Patent family information can
 help you avoid ordering and translating redundant documents, but if you
 really need to know the legal scope of a patent, you need to read the
 claims.
     REFERENCES
      1  Ojala, Marydee. 'A Patently Obvious Source for Competitor
 Intelligence: The Patent Literature.' DATABASE 12, No. 4 (Aug. 1989): pp.
 43-49.
      2  Simmons, Edlyn S. 'Patent Family Databases.' DATABASE 8, No. 1
 (Feb. 1985): pp. 49-55.
      3  Johns, Trisha M.; Andrus, William G.; De Voe, Stanley; Myers,
 John; Smith, Roger Grant; Uhlir, Otokar. 'An evaluation of the leading
 patent equivalents services.' J. Chem. Inf. Comp. Sci. 19, No. 4 (Nov.
 1979): pp. 241-246.
      4  World International Property Organization (WIPO). 'Glossary of
 terms concerning industrial property information and documentation.' World
 Patent Information 15, No. 1 (1993): pp. 21-39.
       TABLE 1
       Prozac Patent Family
     INPADOC:      63 Patents, 6 U.S.
                   28 Countries
     WPI:          35 Patents, 3 U.S.
                   20 Countries
                    3 Additional One-patent Families
     EDOC:         25 Patents, 6 U.S. + 3 Republication Indicators
                   13 Countries
       TABLE 2
       Differences In Family Coverage Among Databases
     PROZAC patent FAMILY MEMBERS FROM AUSTRIA AND FRANCE
     INPADOC FAMILY    DERWENT 75-49665W     EDOC ..FAMily
     AT 102/75-A       AT7500102-A
     AT 336000-B                             AT336000 B
     AT 2370/76-A      AT7602370-A
     AT 337161-B                             AT337161 A; PNFP -- B
     FR 2257288-A1     FR2257288-A           FR2257288 A
     FR 2257288-B1                           FR2257288 A; PNFP -- B
     * Patent number formats vary among databases: consider zero-filling
 and rotating year designations; compare dates to confirm identity
     * Databases cover different countries and levels of publication at
 different times
     * EDOC uses the 'Following Publication' field, PNFP, to substitute for
 additional records for patents republished after examination
     * 'Kind of Document' codes are not recorded consistently: where
 different kind codes are shown, compare publication dates
       TABLE 3
       Differences In Family Coverage Among Databases
     PROZAC patent FAMILY MEMBERS FROM JAPAN
     INPADOC FAMILY    DERWENT 75-49665W    EDOC ..FAMily
     JP 50101333-A2    J50101333            JP50101333 A
     JP 59039418-B4    J84039418-B          JP59039418 B
                                            JP1264510 C
     			        J52083811-A
     * Japanese imperial year designations in patent numbers are treated
 differently among databases
     * Derwent's country code is 'J' in pre-1992 records
     * Derwent distinguishes examined patent applications from published
 applications by substituting the 20th century year for the imperial year
     * Post-opposition patent grant numbers for Japanese patents are only
 in EDOC
     * Japanese A, B and C documents have unrelated numbers
     * Intellectually identified equivalents are likely to appear in only
 one database
     * J52083811-A does not have a foreign priority: it may not be fully
 equivalent.
     What A Difference A Decade Makes!
     Did you go to your ten-year high school reunion? Remember the
 homecoming queen who'd developed a matronly look, the quarterback who'd
 developed a paunch, the mousy bookworm who'd turned into a stunning blonde?
 How could your classmates have changed so much when you'd stayed the same?
 When I wrote 'Patent Family Databases' ten years ago  2 , it was to update
 the information in the classic article by Johns et al.  3  that had been
 published in 1979, when the Derwent World Patents Index provided patent
 family information only to subscribers and the Chemical Abstracts Patent
 Concordance was available online. By 1985, patent databases were well
 established online information resources, the entire Derwent file was
 available online to subscribers and nonsubscribers alike, and CAS had
 discontinued its online Concordance file. As the author, I was satisfied
 that I had covered the subject adequately; but since there have been many
 changes in online database availability in the last ten years, I decided to
 update the article. As I reread the article for the first time in years, it
 was high school reunion time again.
     The databases are the same: WPI, INPADOC, EDOC, APIPAT and CLAIMS are
 the only sources of patent family data online, and the CA Patent
 Concordance is available in print. EDOC is still exclusively on Questel,
 and it still has no title, patentee or inventor information. Almost
 everything else has changed.
     When the 1985 article was written, WPI was online exclusively on ORBIT
 and CLAIMS was online exclusively on DIALOG. Today both are available on
 ORBIT, DIALOG, Questel and STN. More countries are covered and not only
 abstracts, but graphic images are available online in the WPI file. In 1985
 INPADOC was available from Pergamon InfoLine (remember Pergamon InfoLine?)
 and from the INPADOC computer in Vienna. A family search on Pergamon
 InfoLine was much less expensive than a search on the INPADOC
 computer--only $45! Today, INPADOC is mounted on DIALOG, STN and ORBIT, the
 heir of Pergamon InfoLine. The search fee on ORBIT is still lower than on
 the INPADOC computer--only $20 (and the dollars are smaller, too). For
 DIALOG and STN there is no search fee, but the fee for displaying the
 family information is $20 (recently reduced to $12.50 on STN). Legal status
 information is now available for INPADOC families on all of the online
 systems, and there are more countries in the database.
     Whereas we had to choose a single database and a single databank for a
 patent family search in 1985, we can now search several different databases
 simultaneously. On ORBIT and STN we can group the results from the various
 databases and eliminate duplicate records, creating patent families even
 from databases that don't index full patent families.
     Patent document delivery has changed radically. In 1985 there were
 relatively few sources of patent documents, and most of them didn't
 advertise to the information community. Acquiring copies of patents has
 become easier and less expensive as established patent document providers,
 like Derwent (now merged with Rapid Patent) and the British Library, are
 advertising their services widely and other mainstream information
 providers, including DIALOG and the Chemical Abstracts Service, have begun
 advertising their ability to provide patent copies faster and cheaper. New
 fax-based suppliers of U.S. patents, including ReedFax, Faxpat and The
 Library Connection, provide copies of U.S. patents nearly instantaneously.
 For those who can live without patent drawings and chemical structure
 diagrams, full-text U.S. patent specifications are available online from
 DIALOG and STN, and the full text of European patents is promised on
 DIALOG. For high-volume users of patent information, images of patents from
 the U.S. can be purchased from MicroPatent or Derwent on CD-ROM, and the
 European Patent Office produces the ESPACE line of patent document
 documents on CD-ROM from the EPO, WIPO and many individual countries.
 CD-ROM provides better images than microfilm, which was the best storage
 medium for patent specifications ten years ago. Patent resources have
 matured as much as our old classmates.
     Patent Families According To WIPO
     Every database that indexes patent families has rules for identifying
 members of a patent family, although the rules may change over time. In
 nearly all modern databases, membership in a patent family is based on a
 shared priority application number. If a single patent application is filed
 in the patentee's home country and the identical application is filed in
 all other countries claiming that application for priority, it is easy to
 determine that each of the patents is a member of the same family. Although
 that is the most common procedure, applicants are not restricted to a
 single claim for priority. If two closely related patent applications have
 been filed within a year, the applicant can combine the applications for
 foreign filing and claim both of the original applications for priority
 when filing for patents in other countries. Because research and
 development usually continue after a patent application has been filed,
 patent applicants often modify their patent application and refile them
 under a different national application serial number, using the later
 application for priority when they file patent applications in other
 countries. In the United States, before GATT-enabling legislation goes into
 effect on June 8, 1995, applicants are entitled to file
 continuation-in-part applications over many years, accumulating different
 effective dates for parts of the claimed invention and creating complicated
 relationships among the resulting patents. To clarify the meaning of the
 term 'patent family,' it is helpful to have a vocabulary that can
 differentiate the types of relationships among the family members. The
 following types of patent families have been defined by WIPO:
     Simple Patent Family
 application is claimed by all family members. All family
 members disclose the same information.
     Complex Patent Family
     All patent documents have at least one common priority application.
 The subject matter of the claimed invention overlaps.
     Extended Patent Family
     All patent documents have at least one priority application in common
 with any other family member. The subject matter claimed in the family
 members usually overlaps.
     Artificial, Intellectual, Technical or Non-Convention Family
     One or more family members do not have a priority application in
 common with other family members, but all of the patents disclose the same
 information.
     National Patent Family
     Original, divisional, continuation, CIP and addition patents issued in
 a single country. The subject matter disclosed in all overlaps, but each
 patent has different claims.
     Communications to the author should be addressed to Edlyn S. Simmons,
  Department, P.O. Box 156300, Cincinnati, OH
 45215-6300; 513/948-7829; DIALMAIL.