901.05(c) Obtaining Copies [R-08.2017]
Until October 1, 1995, the U.S. Patent and Trademark Office (Office) received copies of the published specifications of patents and patent applications from nearly all the countries which issue them in printed form. The Office now receives most foreign patents in the form of CD-ROM and other electronic media. The foreign patents so obtained are available to examiners from the USPTO’s automated search tools such as the Examiner’s Automated Search Tool (EAST), the Web-based Examiner’s Search Tool (WEST), the Foreign Patent Access System (FPAS), and from the Foreign Patents Service Center in STIC.
Until October 1995, it was the practice in the Office to classify and place only a single patent family member for each invention in the examiner search files. In addition, all non-English language patent documents placed in the examiner files were accompanied, to the extent possible, by an English language abstract. For countries where the specification is printed twice, once during the application stage and again after the patent has been granted, only the first printing was, in general, placed in the search files, since the second printing ordinarily does not vary from the first as to disclosure. The Derwent World Patents index is available on the EAST and WEST systems and provides patent family information and Derwent titles and abstracts in English of foreign patent documents.
Copies of various specifications not included in the search files, whether non-English-language patent documents or documents not printed or available for exchange, may come to the examiner’s attention. For example, they may be cited in a motion to dissolve an interference, be cited by applicants, or turn up in an online search. Upon request, STIC will obtain a copy from its extensive collection, or if necessary, from the patent office of the particular country. In the case of unprinted patent documents, STIC will request that the date of granting and the date the specification was made available to the public be indicated on the copies provided by the country of origin. If the examiner wishes to obtain a copy of a specification from an international application filed under the Patent Cooperation Treaty (PCT) or a patent application from a WIPO-CASE participating Office, the Global Dossier Public Access is a tool which provides online access to the file histories of related applications. See MPEP § 901.08 for additional information.
Examiners can request copies of any foreign patent documents by submitting an online request using the Foreign Patent Request Form available through STIC’s NPL website on the USPTO intranet. Examiners may also request copies directly from the Foreign Patents Service Center of STIC. If examiners so choose, they can make copies themselves. The most current patent documents are accessible through the USPTO’s automated search systems, which allow public and USPTO users to look up, view, and print foreign documents. Older documents can be found on microfilm or print copies in the Main Service Center of the STIC. See MPEP § 903.03. The STIC Foreign Patents Service Center and the Electronic Information Centers (EICs) will assist examiners with accessing patent data from foreign countries. If examiners prefer self-service, EAST, WEST and other foreign patent websites are available for foreign patent retrieval. Additionally, STIC translation staff is able to retrieve foreign patent information for examiners.