901.05 Foreign Patent Documents [R-08.2017]
All foreign patents, published applications, and any other published derivative material containing portions or summaries of the contents of published or unpublished patents (e.g., abstracts) which have been disseminated to the public are available to U.S. examiners. See MPEP §§ 901.06(a), paragraphs I.C. and IV.C and 901.08. In general, a foreign patent, the contents of its application, or segments of its content should not be cited as a reference until its date of patenting or its public availability date (e.g., publication date) can be confirmed by an examiner’s review of a copy of the document. Examiners should remember that in some countries, there is a delay between the date of the patent grant and the date of publication.
Information pertaining to those countries from which the most patent publications are received is given in the following sections and in MPEP § 901.05(a). Additional information can be obtained from the Scientific and Technical Information Center (STIC).
See MPEP § 707.05(e) for data used in citing foreign references.
I. OVERVIEW OF FOREIGN PATENT LAWS
This section includes some general information on foreign patent laws and summarizes particular features and their terminology. Some additional details on the most commonly cited foreign patent publications may be found under the individual country in paragraph V., below. Examiners should recall that, in contrast to the practice in many other countries, under U.S. patent law a number of different events all occur on the issue date of a U.S. patent. These events include the following:
- (A) a patent document, the “letters patent” which grants and thereby creates the legal rights conferred by a patent, is executed and sent to the applicant;
- (B) the patent rights come into existence;
- (C) the patent rights can be exercised;
- (D) the specification of the patent becomes available to the public;
- (E) the patented file becomes available to the public;
- (F) the specification is published in printed form; and
- (G) an issue of an official journal, the Official Gazette, containing an announcement of the patent and a claim, is published.
In most foreign countries, various ones of these events occur on different days and some of them may never occur at all.
The following list catalogs some of the most significant foreign variations from U.S. practices:
In most countries, the owner of the prospective rights, derived from the inventor, may also apply for a patent in the owner’s name as applicant; in a few, other persons may apply as well or be joined as coapplicants. Hence, applicant is not synonymous with inventor, and the applicant may be a company. Some countries require the inventors’ names to be given and regularly print them on the published copies. Other countries may sometimes print the inventors’ names only when available or when requested to do so.
The word “application” is commonly used in the U.S. to refer to the entire set of papers filed when seeking a patent. However, in many countries and in PCT cases, the word application refers only to the paper, usually a printed form, which is to be “accompanied by” or have “attached” to it certain other papers, namely a specification, drawings when necessary, claims, and perhaps other papers. Unless it is otherwise noted in the following portions of this section, the term “application” refers to the entire set of papers filed.
C.Publication of Contents of Pending Applications
In general, pending applications are confidential until a certain stage in the proceedings (e.g., upon patent grant), or until a certain date (e.g., 18 months after filing), as may be specified in a particular law.
Many countries have adopted the practice of publishing the specification, drawing, or claims of pending applications. In these countries, the publication of the contents of the application occurs at a certain time, usually 18 months after filing. The applicant is given certain provisional rights upon publication even though examination has not been completed or in some cases has not even begun at the time of publication.
This publication may take either of two forms. In the first form, some countries publish a notice giving certain particulars in their official journal, and thereafter, any one may see the papers at the patent office or order copies. This procedure is referred to as “laying open for public inspection.” There is no printed publication of the specification, although an abstract may be published in printed form. If anyone can inspect or obtain copies of the laid open application, then it is sufficiently accessible to the public to constitute a “publication” within the meaning of pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1). The full application is thus available as prior art as of either the date of publication of its notice or its laying open to public inspection if this is a later date. See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981). See MPEP § 2127, paragraph III.
In the second form, several other countries publish the specifications of pending applications in printed form at a specified time, usually 18 months after filing. These documents, of course, constitute references as printed publications.
Patent law administration varies from country to country. In some countries, all that is undertaken is an inspection of the papers to determine if they are in proper form. Other countries perform an examination of the merits on the basis of an extensive search of the prior art, as is done in the U.S. The former are referred to as nonexamining or registration countries, although some systems allow for a rejection on matters apparent on the face of the papers, such as matters of form or statutory subject matter.
Of the examining countries, the extent of the material searched prior to issue varies greatly. Only a few countries include both their own patents and a substantial amount of foreign patent material and nonpatent publications in their search files. Some countries specifically limit the search by rule, or lack of facilities, to their own patents with very little or no additional material. An increasing number of countries are requiring applicants to give information concerning references cited in corresponding applications filed in other countries.
Some examining countries consider participation by the public an inherent feature of their examining system. When an application is found to be allowable by the examiner, it is “published” for opposition. Then there is a period, usually 3 or 4 months, within which members of the public can oppose the grant of the patent. In some countries, the opposing party can be any person or company. In other countries, only those parties who are affected by the outcome can participate in the opposition. The opposition is an inter partes proceeding and the opposing party can ordinarily raise any ground on the basis of which a patent would be refused or held invalid, including any applicable references.
The publication for opposition may take the form of a laying open of the application by the publication of a notice in the official journal with the application being then open to public inspection and the obtaining of copies. Otherwise, publication occurs by the issue of the applications in printed form. Either way, these published documents constitute printed publications which are available as references under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1).
Practices and terminology vary worldwide regarding patents. In some countries, there is no “letters patent” document which creates and grants the rights. In other countries, the examiner grants the patent by signing the required paper. In a few countries, the patent is granted by operation of law after certain events have occurred. The term “granting the patent” is used here for convenience, but it should be noted that 35 U.S.C. 102(a) and 102(b) or 35 U.S.C. 102(a)(1) do not use this terminology.
A list of granted patents is ordinarily published in each country’s official journal and some of these countries also print an abstract or claims at or after the granting date. Not all countries publish the granted patent. Where the specifications of granted patents are issued in printed form, publication seldom occurs simultaneously with the day of grant; instead, publication occurs a short time thereafter. There also are a few countries in which publication does not take place until several years after the grant.
The length of time for which the patent is enforceable (the patent term) varies from country to country. The term of the patent may start as of the grant of the patent, or as of the filing date of the application.
Most countries require the payment of periodic fees to maintain a patent in force. These fees often start a few years after filing and increase progressively during the term of the patent. If these fees are not paid within the time allowed, the patent lapses and is no longer in force. This lapsing does not affect the use of the patent as a reference.
G.Patents of Addition
Some countries issue patents of addition, which should be identified as such, and when separately numbered as in France, the number of the addition patent should be cited. “Patents of addition” generally cover improvements of a patented parent invention and can be obtained by the owner of the parent invention. Inventiveness in relation to the parent invention need not be demonstrated and the term is governed by the term of the parent patent.
II. CORRESPONDING SPECIFICATIONS IN A FAMILY OF PATENTS
Since a separate patent must be obtained in each country in which patent rights are desired (except for EP, the European Patent Convention, AP, the African Regional Industrial Property Organization, OA, African Intellectual Property Organization, GC, Patent Office of the Cooperation Council for the Arab States of the Gulf, and EA, Eurasian Patent Office, whose members issue a common patent), there may be a large number of patents issued in different countries for the same invention. This group of patents is referred to as a family of patents.
All of the countries listed in paragraph V. below are parties to the Paris Convention for the Protection of Industrial Property and provide for the right of priority. If an application is filed in one of these countries, an application for the same invention thereafter filed in another country, within 1 year of the filing of the first application, will be entitled to the benefit of the filing date of the first application on fulfilling various conditions. See MPEP § 213. The patents or published specifications of the countries of later filing are required to specify that priority has been claimed and to give the country, date, and number of the priority application. This data serves the purpose, among others, of enabling any patent based on the priority application to be easily located.
In general, the specification of the second application is identical in substance to the specification of the first. In many instances, the second, if in another language, is simply a translation of the first with perhaps some variation in purely formal parts. But in a minority of cases, the two may not be identical. For instance, sometimes two applications filed in one country are combined into one second application which is filed in another country. Alternatively, a second application could be filed for only part of the disclosure of the priority application. The second application may have the relationship to the first which we refer to as a continuation-in-part (e.g., the second application includes additional subject matter discovered after the first was filed). In some instances, the second application could have its disclosure diminished or increased, to meet the requirements or practices of the second country.
Duplicate or substantially duplicate versions of a foreign language specification, in English or some other language known to the examiner, can sometimes be found. It is possible to cite a foreign language specification as a reference, while at the same time citing an English language version of the specification with a later date as a convenient translation if the latter is in fact a translation. Questions as to content in such cases must be settled based on the specification which was used as the reference.
If a U.S. patent or U.S. published application being considered as a reference in an application subject to pre-AIA 35 U.S.C. 102 claims the priority of a previously filed foreign application, it may be desirable to determine if the foreign application has issued or has been published, to see if there is an earlier date. For example, it has occurred that an examiner rejected claims on the basis of a U.S. patent and the applicant filed affidavits to overcome the filing date of the reference; the affidavits were controversial and the case went to appeal, with an extensive brief and an examiner’s answer having been filed. After all this work, somebody noticed that the U.S. patent reference claimed the priority of a foreign application filed in a country in which patents were issued fairly soon, checked the foreign application, and discovered that the foreign patent had not only been issued, but also published in printed form, more than 1 year prior to the filing date of the application on appeal. If a U.S. patent or U.S. published application is being considered as a reference in an application subject to 35 U.S.C. 102, whether the filing date of the foreign priority application claimed in the reference can be used as the “effectively filed date” under 35 U.S.C. 102(a)(2) is determined by 35 U.S.C. 102(d). See MPEP § 2154.01(b).
If a foreign patent or specification claims the priority of a U.S. application, it can be determined whether the latter is abandoned, still pending, or patented. Even if the U.S. case is or becomes patented, however, the foreign documents may still be useful as supplying an earlier printed publication date.
If a foreign patent or specification claims the priority of an application in another foreign country, it may sometimes be desirable to check the latter to determine if the subject matter was patented or published at an earlier date. As an example, if a British specification being considered as a reference claims the priority of an application filed in Belgium, it is known at once that a considerably earlier effective date can be established, if needed, because Belgian patents issue soon after filing. In addition, if the application referred to was filed in one of the countries which publish applications in printed form 18 months after filing, the subject matter of the application will be available as a printed publication as of the 18 month publishing date.
The determination of whether a foreign patent has been issued or the application published is a comparatively simple matter for some countries, but for some it is quite laborious and time-consuming. Sources for this data which are not maintained by the Office do exist and can be utilized for locating corresponding patents. Two possible sources are the Derwent World Patents Index (DWPI) produced by Thomson Reuters, and the International Patent Documentation Center (INPADOC), which is produced by the European Patent Office. Additionally, Chemical Abstracts Service (CAS) publishes abstracts of patents in the chemical arts from a large number of countries. Only one patent or published specification from a family is abstracted in full and any related family members issued or published are cross-referenced. Chemical Abstracts are available online via commercial databases or via Microfilm/CD-ROM in the Main Scientific and Technical Information Center (STIC). To get access to Chemical Abstracts online, examiners should contact their SPE for approval and email the STIC-ERC mailbox. The microfilm collection is available from 1907-1987; and the CD-ROM collection is available from 1987-2011. The coverage is for approximately 83 journals, with the oldest content dating from 1859. Examiners may also utilize the Global Dossier Public Access which provides online access to the file histories of related applications from participating IP Offices. This includes all international applications filed under the Patent Corporation Treaty (PCT) as well as patent applications from World Intellectual Property Organization-Centralized Access to Search and Examination (WIPO-CASE) participating offices. See MPEP § 901.08 for additional information. See also www.wipo.int/case/en/ for additional information regarding WIPO-CASE.
When an application is filed outside the Paris Convention year from an earlier application, the later application may not refer to the first application. It is hence possible that there will be duplicate specifications published without any indication revealing the fact. These may be detected when the two copies come together in the same subclass. Because the later application is filed outside the convention year, the earlier application may be prior art to the latter if it has been published or issued.
III. VALIDITY OF DATES DISPLAYED ON FACE OF FOREIGN PATENT DOCUMENTS
The examiner is not required to prove either the date or the occurrence of events specified on specifications of patents or applications, or in official journals, of foreign patent offices which the Office has in its possession. In a court action, certified copies of the Office copies of these documents constitute prima facie evidence in view of 28 U.S.C. 1745. An applicant is entitled to show the contrary by competent evidence, but this question seldom arises.
The date of receipt of copies by the Office, as shown by Office records or stamped on the copies, need only to be stated by the examiner, when necessary.
IV. NOTES ON INDIVIDUAL COUNTRIES
The following table gives some data concerning the published patent material of a number of countries to assist in their use and citation as references. This table reflects only the most current patent office practice for each foreign country specified and is not applicable for many older foreign patent documents. The STIC staff can help examiners obtain data related to any documents not covered by this table. The citation dates listed in the following table are not necessarily the oldest possible dates. Sometimes an earlier effective date, which is not readily apparent from the face of the document, is available. If an earlier date is important to a rejection, the examiner should consult STIC staff, who will attempt to obtain further information regarding the earliest possible effective date.
How To Use Table
Each horizontal row of boxes contains information on one or more distinct patent documents from a specified country available as a reference under pre-AIA 35 U.S.C. 102(a) and 102(b) or 35 U.S.C. 102(a)(1). If several distinct patent documents are included within a common box of a row, these documents are related to each other and are merely separate documents published at different stages of the same invention’s patenting process. Usually, this related group of documents includes a published application which ripens into an issued patent. Within each box of the second column of each row, the top listed document of a related group is the one that is “published” first (e.g., made available for public inspection by laying open application, or application printed and disseminated to the public). Once an examiner determines the country or organization publishing the documents, the name of the document can be located in the second column of the table and the examiner can determine if a document from the related group containing the same or similar disclosure having an earlier date is available as a reference. Usually, the documents within a related group have identical disclosures; sometimes, however, there are differences in the claims or minor differences in the specification. Therefore, examiners should always verify that the earlier related document also includes the subject matter necessary for the rejection. Some countries issue more than one type of patent and for clarity, in these situations, separate rows are provided for each type.
|ISSUING/ PUBLISHING COUNTRY OR ORGANIZATION||DOCUMENT NAME IN LANGUAGE OF ISSUING COUNTRY (TYPE OF DOCUMENT)||FOREIGN LANGUAGE NAME DESIGNATING THE DATE USED FOR CITATION PURPOSES (TYPE OF DATE)||GENERAL COMMENTS|
|European Patent Office||European patent application||Date application made available to public||Printing of application occurs 18 months after priority date.|
|European patent specification||Date published||EP dates are in day/month/year order.|
|New European patent specification (above specification amended)||Date published|
|France||Demande de brevet d’invention (patent application)||Disposition du public de la demande (date of laying open application)/date published||Date of laying open the application is the earliest possible date. This usually occurs 18 months after the filing or priority date but can occur earlier at applicant’s request. The application is printed a short time after being laid open.|
|Brevet d’invention (patent)||Disposition du public du brevet d’invention (date of publication of the notice of patent grant)|
|FR dates are in day/month/year order|
|France||Demande de certificat d’utilite (utility certificate application 1st level publication)||Disposition du public de la demande (date published)|
|Certificat d’utilite (utility certificate, 2nd publication)||Disposition du public du certificat d’utilite (date published)|
|DE Germany||Offenlegungschrift (unexamined patent application)||Offenlegungstag (date application printed)||Patentschrift are printed (up to four different times) after examination and at various stages of opposition.|
|Patentschrift (examined patent)||Veræfentlichungstag der patenterteilung (date printed)||DE dates are in day/month/year order|
|Germany||Patentschrift (Ausschließungspatent) (exclusive type patent based on former East German application and published in accordance with E. German laws)||First printing coded “DD” (date of first publication before examination as to novelty)||Several more printings (up to four) occur as examination proceeds and patent is granted. Separate DD numbering series is used.|
|Germany||Patentschrift (Wirtschaft-patent) (economic type patent published in accordance with East German laws)||First printing coded “DD” (date of first printing before examination as to novelty)||Another printing occurs after examination. Separate DD numbering series is used.|
|Germany||Gebrauchsmuster (utility model or petty patent)||Eintragungstag (date laid open after registration as a patent)||Copy is supplied only on request.|
|Bekanntmachung im patentblatt (date published for public)||Published from No. DE-GM 1 186 500J.|
|JP Japan||Kôkai Tokkyo kôhô (unexamined patent application) Kôhyo Tokkyo kôhô (unexamined patent application based on international application)||Upper right corner beneath number (date laid open and printed)||INID codes (41)-(47) include first date listed in terms of the year of the Emperor. To convert yrs. prior 1989, add 1925. To convert yrs. after 1988, add 1988.|
|Tokkyo kôhô (examined patent application)||Upper right corner beneath number (date laid open and printed; 1st publication when Kôkai Tokkyo kôhô or Kôhyo Tokkyo kôhô not published)||Newer documents also include second date following the first given in OUR Gregorian Calendar in year/month/day sequence in Arabic numerals intermixed with their equivalent JP characters.|
|JP Japan||Tokkyo shinpan seikyû kôkoku (corrected patent specification)||Upper right corner beneath number (date laid open and printed)|
|JP Japan||Kôkai jitsuyô shin-an kôhô (unexamined utility model application) or Kôhyo jitsuyô shin-an kôhô (unexamined utility model application based on international)||Upper right corner beneath number (date laid open and printed)|
|Jitsuyô shin-an kôhô (examined utility model application)||Upper right corner beneath number (date laid open and printed; 1st publication when Kôkai or Kôhyo not published)|
|JP Japan||Tôroku jitsuyô shin-an shinpan seikyû kôkoku (corrected registered utility model)|
|JP Japan||Isyô kôhô (registered design application)|
|RU Russian Federation||Zayavka Na Izobretenie (unexamined application for invention) Patent Na Izobreteniye (Patent)||Date application printed (1st publication) Date printed (normally 2nd publication, but 1st publication when application not published)|
|RU Russian Federation||Svidetelstvo Na Poleznuyu Model (utility model)||Supplied upon request only|
|RU Russian Federation||Patent Na Promishlenniy Obrazec (design patent)||Supplied upon request only|
|GB United Kingdom||Published patent application (searched, but unexamined) Patent Specification (granted examined patent)||(date of printing the application) (date of printing)|
|United Kingdom||Amended or Corrected Patent Specification (amended granted patent)||(date of printing)|
|World Intellectual Property Organization||International application (PCT patent application)||(date of printing the application)|