The Patent Cooperation Treaty (PCT) of 1970, amended in 1979 and modified in 1984, established a union of contracting states ( as of April 1,1997, 91) within the context of the Paris Convention for streamlining international patent application filing, searching, and examination procedures.⁽¹⁾

The PCT procedure consists of two phases. The "international phase" and the "national phase."⁽²⁾

The international phase consists of four main steps. First , is the filing of the international application by the applicant with the receiving office, which is the USPTO for United States applicants. Next, the receiving office then forwards the application to the International Bureau of the World Intellectual Property Organization in Geneva where the application is reviewed to determine unity of invention. Next, one of the designated International Searching Authorities (Austria, Australia, China, European Patent Office, Japan, Russian, Spain, Sweden, or the United States) prepares an International Search Report within three months of receiving the application. Finally, the publication of the international application together with the international search report takes place usually shortly after the expiration of the 18-month period from the application's priority date.⁽³⁾

The applicant may at his/her option request the establishment of an international preliminary examination report by one of the "International Preliminary Examining Authorities.

The national phase, the second of the two main phases of the PCT procedure and usually follows the international phase consists of processing the international application before each office and for a designated contracting state in the international application. If the applicant does not file a demand for an international preliminary examination, the time limit for entering the national phase is normally twenty months from the application's priority date. If the applicant files a demand for an international preliminary examination prior to the expiration of nineteen months from the priority date, the time limit for entering the national phase is normally thirty months from the priority date.⁽⁴⁾

It is important to keep in mind that PCT represents a patent filing system, each designated contracting State must still individually grant a patent.

Some of the many advantages resulting from utilizing the PCT route include the following: a single international application has the effect of filing many separate applications in those designated contracting States; the application is filed in one of several recognized languages; the application is filed usually at the national Patent Office of the applicant's country or at a regional Patent Office; the prescribed international application is accepted by all designated Offices for purposes of the national phase; the international fees for the international application may be paid at one time, at one Office; the applicant has more time before paying the national or regional fees; the applicant has more time to decide, based on the results of the international search report and/or the international preliminary examination report, the value and economic interest of patent protection and his/her chances of obtaining protection.⁽⁵⁾

Before an invention qualifies for patent protection, it must be "in a statutory subject matter category, useful, novel in relation to the prior art, and not obvious from the prior art to a person of ordinary skill in the art at the time the invention was made."⁽⁶⁾

Relative to novelty in the U.S., an invention is patentable as long as it is new under patent law or according to 35 U.S.C. 102, an invention cannot be patented if:

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than 1 year prior to the application for patent in the United States.⁽⁷⁾

Thus, if the invention has been described in a printed publication, patents included, anywhere in the world or has been in public use or on sale in the United States before the date of the invention, no patent can be issued. Furthermore, if the invention has been described in a printed publication anywhere in the world or has been in public use or on sale in the United States more than one year before the date of the patent application in the United States, no patent can be issued.

In defining novelty , one looks to the prior art for comparison. The United States and the Philippines are classified as first-to-invent patent systems or jurisdictions and "prior" refers to the time period preceding the date the invention was made.⁽⁸⁾

On the other hand, in "first-to-file" systems used by all other industrialized countries worldwide, "prior" in the term "prior art" refers to the time period before the effective filing date of the application.⁽⁹⁾

The European Patent System utilizes an absolute novelty standard where novelty is defeated by any type of disclosure not protected by confidentiality anywhere in the world prior to the effective date of the application.

The novelty search that an applicant would ideally want to perform before submitting a PCT application would be a search comparable to the international search that the International Searching Authority would carry out in preparing the International Search Report.

The relevant prior art searched for the International Search Report is quite extensive including patent documents and other technical literature in those languages most patent applications are filed in (English, French, German, Chinese, Japanese, Russian, Spanish) and is carried out by experienced Patent Offices designated as International Searching Authorities.

More specifically Rule 33.1 of the Regulations Under the Patent Cooperation Treaty as in force on January 1, 1996 defines the relevant prior art of the International Search as follows:

(a) Shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step( i.e. that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.

(b) When any written disclosure refers to an oral disclosure , useEnglish , exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such making available to the public occurred on a date prior to the international filing date, the international search report shall separately mention that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is the same as, or later than, the international filing date.

(c) Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15(2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.⁽¹⁰⁾

Fields covered by the International Search can be found in Rule 33.2 as follows:

(a) The international search shall cover all those technical fields, and shall be carried out on the basis of all those search files which may contain material pertinent to the invention.

(b) Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.

(c) The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function of the invention and not only the specific functions expressly indicated in the international application.

(d) The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.⁽¹¹⁾

Documents to be searched for the International Search Report can be found in Rule 34.1 and include the following:

ii) the published international (PCT) applications, the published regional applications for patents and inventors' certificates, and the published regional patents and inventors' certificates,

iii) such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed.

(c) "national patent documents" shall be the following:

(i) the patents issued in and after 1920 by France, the former Reichspatentanmt of Germany, Japan, the Soviet Union, Switzerland (in French and German languages only), the United Kingdom, and the United States of America,

(ii) the patents issued by the Federal Republic of Germany,

(iii) the patents applications, if any, published in and after 1920 in the countries referred to in items (i) and (ii),

(iv) the inventors' certificates issued by the Soviet Union,

(v) the utility certificates issued by, and published applications for utility certificates of, France,

(vi) such patents issued by, and such patent applications published in, any other country after 1920 as are in the English, French, German or Spanish language and in which no priority is claimed, provided that the national Office of the interested country sorts out these documents and places them at the disposal of each International Searching Authority.⁽¹²⁾

The international search does have some limitations . The International Searching Authority is not required to perform an international search on claims relating to the following subject matter:

(i) scientific and mathematical theories

(ii) plant or animal varieties or essentially processes for the production of plants and animals, other than microbiological processes and the products of such processes,

(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,

(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,

(v) mere presentation of information,

(vi) computer programs to the extent the Authority is not equipped to search prior art concerning such programs.⁽¹³⁾

The lack of an international report does not influence the validity of an international application once the application is communicated to the designated offices in preparation of the "national phase."

The results of the international search are contained within the "International Search Report" made available to the applicant by the fourth or fifth month after the international patent application is filed. Although the report contains no comments on the value of applicant's invention, it does list citations of prior art relevant to applicant's claims and does give some indication of the relevance of the citations to novelty and non-obviousness. Thus, enabling the applicant to evaluate his/her chances of obtaining patents at the "national phase" in those States designated.⁽¹⁴⁾

A favorable search report, where citations of prior art would appear not to prevent the grant of a patent, is a valuable resource for an applicant who wishes to prosecute his/her patent at the "national phase" in those designated countries where protection is sought.⁽¹⁵⁾

In addition, the quality of the international search assures the applicant that once a patent is granted, there is less likely a chance that the patent will be challenged.⁽¹⁶⁾

In the event that the International Search Report is unfavorable, the applicant does have an opportunity to amend the claims or withdraw the application before it is published.⁽¹⁷⁾

Since 1980, governments of the major patent granting countries , also designated as International Searching Authorities, have recognized the difficulties in searching patent information. The United States Patent and Trademark Office (USPTO) , the European Patent Office (EPO), and the Japanese Patent Office (JPO) have initiated automation programs to increase searching efficiencies and reduce reliance on paper search files.⁽¹⁸⁾

For example, in 1990 there were 2.6 million pending applications in the JPO of which 700,000 had filed examination requests. The offices needed to efficiently incorporate documents issued by other offices into their search files.⁽¹⁹⁾

A series of Trilateral Conferences in the late 1980s and in the early 1990s among the major world patent offices produced agreements of mutual assistance and cooperation. For the USPTO this would make possible the incorporation of more than 70 million pages of foreign patent literature dating from 1920 into their Automated Patent System (APS) data base. Without such an agreement, the USPTO would have spent an estimated 30-50 million dollars to acquire such foreign source documents.⁽²⁰⁾

Other agreements included the JPO providing the USPTO and EPO with an electronic file of English language translations of Japanese abstracts along with drawings, translations of JPO's "F-- term" search indices, and International Patent Classification Codes.⁽²¹⁾

The EPO's automation plan included the following: First, application processing or the Electronic Processing of Applications System (ELPRA), an Electronic File Wrapper System (ELFOS), and an Electronic Processing of Application Contents (ELPAC) which deals with the production of applications and of granted patents.⁽²²⁾

Two searching subsystems (CAESAR and CASEX) were developed as part of the ELPRA system to assist EPO examiners in drafting searching reports and office actions.

The EPO's EPOQUE system allows full-text retrieval and image data base searching on internal and external databases (e.g. Dialog, Maxwell On-line, STN, using search language based on Questrel-Plus).

In addition, the EPO created an abstract data base, indexing based on the International Patent Classification (IPC) system. This electronic classification system in 1990 included some 100,000 entries while the IPC included 60,000.⁽²³⁾

The EPO also adopted a dissemination policy making EPO abstracts translated to English available to the public. A database containing the legal status of each application and of granted patents by EPO countries was also made available (FIRST and ESPACE on CD-ROM). The EPO also began negotiations with INPADOC to both incorporate and improve INPADOC databases.⁽²⁴⁾

The JPO's automation plan included some of the following features:

A comprehensive database with images for 21 million (as of 1990) Japanese patents, USPTO data (back to 1946) and EPO data (back to 1978).⁽²⁵⁾

An "F-term" data base containing approximately 3,000 searchable standard "themes" or subject matter sections with each theme covering 5,000 documents.⁽²⁶⁾

The "F-terms" were developed by JPO examiners. The "F-term" data base allows examiners to enter an International Patent Code or an F-term to retrieve documents from a comprehensive database.

An electronic application system done on line using special terminals or a floppy disk. The JPO continues to accept paper filings which are converted to the electronic form.⁽²⁷⁾

Publication in electronic from is accomplished by another branch of the Japanese Government, JAPIO, making databases available on CD-ROM to private purchasers.⁽²⁸⁾

The United States Patent and Trademark automation plan began in the 1950s with the introduction of the APS (Automated Patent System) enabling each examiner to conduct searches at workstations.⁽²⁹⁾

Some of the features included text searching of all U.S. patents issued since 1970, searching Japanese abstracts translated to English, searching commercially available data bases using a single command language, links to decisions of the Board of Patent Appeals and Interferences, Official Gazette Notices, links to the MPEP, U.S. and IPC classification information, and searching images of U.S. patent documents as well as those issued by other major patent issuing authorities of the world.⁽³⁰⁾

As part of ongoing Trilateral agreements to exchange information between the USPTO, the EPO, and the JPO, on April 9, 1996 the USPTO announced the installation of workstations allowing examiners to conduct electronic patent searches of European Patent Office and Japanese Patent Office databases.⁽³¹⁾

In addition, the EPO installed 31 EPOQUE II workstations in 1995 and USPTO examiners were trained by EPO staff on searching EPO databases including the patents of EPO member countries.⁽³²⁾

In March, 1996 two JPO "F-term" workstations were installed at the USPTO.

Currently, the Automated Patent System-Classified Search and Image Retrieval (APS-CSIR) and the Automated Patent System Text Search (APS-Text Search) is available to the public at the USPTO's Patent Search and Image Retrieval Facility for specified fees. (APS-Text Search $40.00/hour and APS-CSIR $50.00/hour)⁽³³⁾

On-Line Databases

APILIT(American Petroleum Institute Literature)

Producer: -American Petroleum Institute - Central Abstracting and Information Services

Coverage: 1964 to date

File Size: 523,000 + records

Updates: Monthly

File Type: Bibliographic

Content: Petroleum industry literature

Language: English

Access Points: Dialog- 354,954

Orbit- ALIT

Questel-

STN- APILIT

Description: The American Petroleum Institute Literature database contains citations of non-patent literature covering the petroleum refining and petrochemical industries, including information on alternative energy sources and environmental effects of energy. Coverage includes both scientific and technical developments and engineering and process level work from selected journals, reports, and conference proceedings. Bibliographic information, indexing terms, abstracts, and CAS Registry Numbers are all searchable.
 

APIPAT(American Petroleum Institute Patent )

Producer: -American Petroleum Institute Central Abstracting and Information Services

Coverage: 1964 to date

File Size: 250,000 + records

Updates: Monthly

File Type: Bibliographic

Content: Petroleum industry patents

Language: English

Access Points: Dialog- 353, 953

Orbit-

Questel-

STN- APIPAT

Description: The American Petroleum Institute Patent database covers worldwide patents relating to the petrochemical industries, including those on alternative energy sources and environmental effects of energy. Sources fro APIPAT include Derwent Chemical Patents Index, General & Mechanical Patents Index, Electrical Patents Index, Chemical Abstracts. Bibliographic information, indexing terms, abstracts, and CAS Registry numbers are searchable in APIPAT.
 

CA (Chemical Abstracts)

Producer: - CAS (Chemical Abstracts Service, American Chemical Society

Coverage: 1967 to date

File Size: 11.6 million + records

Updates: Bi-weekly

File Type: Bibliographic

Content: Biochemistry, chemistry, and chemical engineering

Language: English

Access Points: Dialog- 399,308,309,310,311,312,313

Orbit- CASM, CASA, CASB

Questel- CAS

STN- CA

Description: The Chemical Abstracts database provides worldwide coverage of the chemical sciences literature from over 9,000 journals, patents from 26 countries and two international property organizations, new books, technical reports, conference proceedings, government research reports, and dissertations. Coverage corresponds to the printed Chemical Abstracts indices, including 80 main subject sections, such as biochemistry, organic chemistry, chemical engineering, macromolecular chemistry, applied chemistry, and physical, inorganic and analytical chemistry. Bibliographic terms, indexing terms, and CAS Registry Numbers are searchable. Over 87% of the records also contain CA abstracts, the text of which is searchable.
 

CHINAPATS

Producer: Patent Documentation Service Center of the People's Republic of China

Coverage: April 1985 to date

File Size: 61,136 records as of January 1993

Updates: Bi-weekly

File Type: Bibliographic

Content: Chinese Patents

Language: English

Access Points: Dialog- 344

Orbit- CPAT

Questel-

STN-

Description: Covers all patent applications published under the patent law of the People's Republic of China. English language abstracts, produced by the Patent Documentation Service Center of the Patent Office of the People's Republic of China, are included for all applications filed by Chinese applicants. Information about equivalent non-Chinese patent publications provided by the EPO is included.
 

CLAIMS/Citation Database

Producer: IFI/Plenum Data Corp. and Search Check, Inc.

Coverage: 1947 to date

File Size: 4 million + records

Updates: Quarterly

File Type: Bibliographic

Content: Utility patents granted by the U.S. Patent Office since 1947

Language: English

Access Points: Dialog- 220,221,222

Orbit-

Questel-

STN-

Description: The CLAIMS/Citation database is designed to answer the question of which later patents cite to the earlier patents they cite. This database references to over 5 million patent numbers cited in U.S. patents since 1947. Each record includes a U.S. patent number, plus patent numbers (both U.S. and non-U.S.) cited by the examiner. Each quarterly addition to the file also updates the content of the earlier patents. Covers all utility patents granted by the U.S. Patent Office since 1947. Reissues, defensive publications, non-U.S. patents, and non-patent literature are included only when cited against a U.S. patent in the file.
 

CLAIMS/ Reassignment and Reexamination Database

Producer: IFI/Plenum Data Corp.

Coverage: 1980 to date

File Size: 280,000 + records

Updates: Bimonthly

File Type: Bibliographic

Content: U.S. patents

Language: English

Access Points: Dialog- 123

Orbit- CLAIMS/RRX

Questel-

STN- IFIRXA

Description: The Reassignment and Reexamination Database contains information on more than 228,000 U.S. patents that have been reassigned since 1980, or re-examined since 1981. Reassignment occurs when ownership of a patent is transferred from the original owner to another individual or company. Re-examined patents are those which have been reviewed by the U.S. Patent and Trademark Office at the request of a second party who has raised substantial new questions regarding the patentability of the claims. Also contains information about patents that have expired since 1985 because of non-payment of required maintenance fees and patents that have been granted extension beyond their normal life since 1986. The source for this database is the USPTO. Patent numbers, former and new assignments, reexamination data, and dates of actions are all searchable.
 

Claims/U.S. Patent

Producer: IFI/Plenum Data Corporation

Coverage: 1950 to date

File Size: 2.6 million + records

Updates: Weekly

File Type: Bibliographic

Content: U.S. Patents

Language: English

Access Points: Dialog- 340,125

Orbit- Claims

Questel- IFIPAT

STN- IFIPAT

Description: Contains records for all granted U.S. utility patents, reissue patents, and defensive publications related to chemistry from 1950 to the present; mechanical and electrical patents from 1963 to the present; and design patents from 1980 to the present. Source is the USPTO Official Gazette. Records in database include patent number, title, inventor, assignee names, USPTO and IPC classification codes, and all claims.
 

DERWENT PATENTS CITATION INDEX

Producer: Derwent Information Ltd.

Coverage: 1978 to date

File Size: 150,000 patent family records added per year including 3 million citations per year

Updates: Bi-weekly

File Type: Bibliographic

Content: Chinese Patents

Language: English

Access Points: Dialog- 342

Orbit-

Questel-

STN- DPCI

Description: The Derwent Patents Citation Index contains citations appearing in patents from 16 patent-issuing authorities from April 1994 to the present. Also included are citations from U.S. patents back to 1984 and European Patent Office and PCT patents back to 1978. Records include all bibliographic information, a Derwent-written enhanced title, all patent and literature references cited by the examiner and author, and all future patent documents that cite documents in the family.
 

DRUGPAT/ IMSworld Drug Patents International

Producer: - IMSworld Publications

Coverage: 1987 to date

File Size: 30,000 + records

Updates: Monthly

File Type: Patent

Content: International patent family analysis

Language:

Access Points: Dialog-

Orbit- DPIN

Questel-

STN- DRUGPAT

Description: Provides evaluated international patent family analysis for more than 1,500 pharmaceutical compounds, either on the market or under active development. Each pharmaceutical has a separate record on the patent status of the drug in any of 56 countries where the patent is issued or the application is published. Records contain the drug name, the CAS Registry Number, the drug structure, RNs for its derivatives, therapeutic classification codes, and its applications. The usual patent information, patent assignees, patent number, application number, and priority application number are included.
 

EDOC

Producer: - European Patent Office

Coverage: 1968 to date

File Size: 23 million + records

Updates: Monthly

Content: Search documentation of the EPO

Language: French

Access Points: Dialog-

Orbit-

Questel- EDOC

STN-

Description: Patent documents. Published applications and issued patents, forming the search documentation of the EPO. Documents published in 18 major industrialized countries as well as European patents, international applications (PCT), and OAPI. Classification of theses documents is by the EPO using the ECLA system. Patent documents can be grouped by priority links.
 

EPAT(European Patents)

Producer: - European Patent Office

Coverage: 1978 to date

File Size: 807,000 records

Updates: Weekly

File Type: Bibliographic/ Complete-Text Records

Content: European patent applications, granted European patents since EPO opened in 1978, and bibliographic records fro PCT applications

Language: English, French, German

Access Points: Dialog- 348

Orbit-

Questel- EPAT/PCTPAT

STN-

Description: All European patents, published applications and EURO-PCT applications. All technologies patentable under European patent law are covered. Also includes bibliographic, legal status data, complete specifications and claims of unexamined applications from 1986 to date and complete specifications and claims of examined applications from 1991 to date.
 

INPADOC (International Patent Documentation)

Producer: - European Patent Office

Coverage: 1968 to date

File Size: 20.5 million + patent records / 27.4 million legal status data

Updates: Weekly

File Type: Bibliographic

Content: International patents

Language: English

Access Points: Dialog- 354

Orbit- INPD, INPN

Questel-

STN- INPADOC

Description: The International Patent Documentation file contains bibliographic and family data for patent documents and utility models of 56 patent-issuing organizations, including the European Office and the World Intellectual Property Organization (WIPO). The database also includes the legal status, data of 12 patent -issuing organizations. Bibliographic information, patent family information, and classification codes are all searchable.
 

JAPIO(Japan Patent Information Organization)

Producer: - Japanese Patent Information Organization

Coverage: 1968 to date

File Size: 4.9 million records

Updates: Monthly

File Type: Bibliographic

Content: Japanese patent information

Language: English

Access Points: Dialog- 347

Orbit- JPAT

Questel- JAPIO

STN- JAPIO

Description: The Japan Patent Information Organization database represents the most comprehensive English-language access to Japanese unexamined patent applications (Kokai Tokyo Koho) in all areas of science and technology. Abstracts are available for all applications originating in Japan. Assignee data, IPC codes, JAPIO classification codes, controlled terms, titles, and abstracts are searchable.
 

LITALERT

Producer: Derwent Information Ltd.

Coverage: 1970 to date

File Size: 34,000 + records

Updates: Weekly

File Type: Complete-text records

Content: Litigation pertaining to U.S. patents and U.S. trademarks

Language: English

Access Points: Dialog- 670

Orbit-

Questel-

STN-

Description: The LitAlert database contains records for patent and trademark infringement lawsuits filed in ninety-four U.S. District Courts, and reported to the Commissioner of the United States Patent and Trademark Office. Also included are records for thousands of lawsuits filed since the early 1970s that have never been in the Official Gazette. Each record in the database contains identifying elements such as the patent number or trademark registration number and the date of issue; patent title or trademark name; name(s) of inventors, owners, and assignees; and classification title and class number. Descriptive information about the specific litigation includes the court in which the action is taking place, the docket number of the case, plaintiffs and defendants, the filing date of the lawsuits, and the judgment and date, if applicable. Copies of filings if provided by the court may be obtained by Derwent Information.
 

PATFULL

Producer: - U.S. Patent and Trademark Office (USPTO) / Derwent, Inc.

Coverage: 1971 to date

File Size: 1.4 million + records

Updates: Weekly

File Type: Full text

Content: Complete text records of U.S. patents

Language: English

Access Points: Dialog- 652,653,654

Orbit- USPS, USPB, USPM

Questel-

STN-

Description: Includes the complete text of U.S. patents issued from January, 1974 to date plus partial coverage of selected technologies from 1971 to 1973. Included in the text is the "full disclosure" portion of the patent . Contains all granted U.S. utility patents, defensive publications, and design and plant patents. Drawings are not included.
 

PATOSWO (Patent On-line System World)

Producer: - Wila Verlag Bertelsmann Informations Service

Coverage: 1983 to date

File Size: 137,000 + records

Updates: Bi-weekly

File Type: Bibliographic

Content: International patents

Language: English

Access Points: Dialog-

Orbit-

Questel-

STN- PATOSWO

Description: The Patent On-line System World database contains bibliographic information and abstracts of international applications (PCT) published by the World Intellectual Property Organization. Includes international patent classification, title, names and addresses of assignee and legal representative, designated countries , international priority date and country, and filing and publication dates. Note: the international phase of a PCT application ends with the publication of the WIPO publication. After this, the regional and/or national phase follows. Additional publications of the individual patent offices may appear during the grant of national patents, but these are not included in PATOSWO.
 

WPI (Derwent World Patent Index)

Producer: - Derwent Information Ltd

Coverage: 1963 to date

File Size: 8 million + records

Updates: Weekly

File Type: Bibliographic

Content: Data from 3 million inventions represented in more than 8 million patent documents from 40 patent issuing authorities around the world

Language: English

Access Points: Dialog- 351, 352

Orbit- WPI, WPAT, WPIL

Questel- WPI

STN- WPI

Description: Comprehensive and authoritative file of data relating to patent specifications, PCT published applications, patent images. Equivalent patents are grouped together by patent family in the basic patent record. Patent family and patent subject searching is available.
 
 

Patent Information on CD-ROM
 

ESPACE CD-ROM Collections

Producer: European Patent Office and the World Intellectual Property Organization

Coverage: 1978 to date

File Size: 3-many hundreds of discs

Updates: Monthly

File Type: Varies by collection

Content: Complete publications of European, international (PCT) and national patent applications.

Language: English, German, French

Access Points: Dialog-

Orbit-

Questel-

STN-

Description: The ESPACE collections include patent documents with complete text and images of patent documents issued by the EPO and National Offices from around the world, bibliographic and abstract data, bibliographic and procedural data, and legal documents. ESPACE ACCESS-EP A for example provides bibliographic data and English language abstracts for all European and PCT patent applications since 1978. ESPACE ACCESS-EP B provides bibliographic data, first claim and citations for granted European patents. ESPACE WORLD contains the full text and the drawings of about 500 published international applications (PCT) in facsimile form as well as the corresponding bibliographic data in coded, searchable form . In addition all international applications published since 1978 are available in CD-ROM format on a total of 593 CD-ROM discs.

A brief description of some of the On-line Vendors mentioned in the directory follows:
 

Knight-Ridder Information, Inc.

An acknowledged leader in electronic information and access and delivery. The company offers the DIALOG and DataStar services which provide access to more than 6000 on-line databases. The KR OnDisc is a collection of files available on CD-ROM. Knight-Ridder Information is headquartered in Mountain View, California, USA with 51 regional offices and affiliate companies in 37 countries. Knight-Ridder Information is a subsidiary of Knight-Ridder Inc. of Miami, Florida. For more information or to set up an account call 1-800-334-2565.
 

Questel-ORBiT Services

Questel-Orbit is an international on-line information company specializing in patent, trademark, scientific, chemical, business, and news information. Questel-Orbit services over 350,000 searchers from it's offices in Washington, Paris, London, Frankfurt, Sydney, and Montreal. For more information or to set up an account call 1-800-456-7248.
 

STN International Inc.

STN International offers information on a broad range of scientific fields, including (but not limited to) engineering, materials science, physics, biotechnology, regulatory compliance, pharmacology, chemistry, and more. STN is operated jointly by CAS in North America, by the Japan Science and Technology Corporation in Asia, and by FIZ-Karlsruhe in Germany for users in Europe. For more information or to set up an account call 1-800-848-6538

1. Margaret A. Boulware, Jeffrey A. Pyle, and Frank C. Turner, An Overview of Intellectual Property Rights Abroad, 16 HOUS. J. INT'L L. 441, 475 (1994).
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2. PCT Applicant's Guide, Volume I, International Phase, Annex D, World Intellectual Property Organization, (1996).
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3. Boulware, at 477.
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4. PCT Applicant's Guide , Volume II.
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5. Id. Volume I
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6. Donald S. Chisum, and Michael A. Jacobs, Understanding Intellectual Property Law, 2C, (Matthew Bender & Co., Inc. 1992).
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7. 35 U.S.C. 102 (1996).
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8. Kate H. Murashige, The Harmonization of International Patent Law: The Hilmer Doctrine, Self-Collision, Novelty and The Definition Of Prior Art, 26 J. Marshall L. Rev. 549,551-52. (1993).
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9. Id.
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10. Regulations Under the Patent Cooperation Treaty (as in force from January 1, 1996), World Intellectual Property Organization, Rule 33.1, Geneva, 1996.
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11. Id. at Rule 33.2
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12. Id. at Rule 34.1
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13. Regulations Under the Patent Cooperation Treaty, Rule 39.1
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14. WIPO Publication No. 433(E) Basic Facts About The Patent Cooperation Treaty, April 1997.
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15. WIPO No. 433(E), April 1997.
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16. Id.
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17. Id.
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18. Stephen L. Noe and Alvin J. Riddles, A "Searching Examination of USPTO, JPO, EPO and Commercial Data Bases, Practising Law Institute, 213-214, (1990).
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19. Id. at 214.
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20. Id. at 215.
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21. Id.
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22. Id at 216.
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23. Id at 217.
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24. Id.
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25. Id at 221.
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26. Id.
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27. Id at 222.
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28. Id.
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29. Id at 224.
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30. Id at 225-230.
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31. Douglas P. Dreyer, Patent Profiles, Computer Law Strategist, Leader Publications, June 1996
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32. Id.
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33. Id.
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