Foreign Patent Documents

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unpublished patents (e.g., abstracts) which have been disseminated to the public are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

oreign 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:

A.

Applicant

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.

B.

Application

The word “application” is commonly used in the U.S. to refer to

the entire set of papers filed when seeking a patent

nymous 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.

B.

Application

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

cation 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.

D.

Administrative Systems

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

untries, 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.

E.

Opposition

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)

.

F.

The Patent

Practices and terminology vary worldwide regarding patents

plication 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)

.

F.

The Patent

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

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

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

plication 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

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

ll 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 Cooperation 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

participating IP Offices. This includes

all international applications filed under the Patent Cooperation 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

g 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

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

EP

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

FR

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

Date published

FR

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

FR

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

DE

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.

DE

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.

DE

Germany

Gebrauchsmuster (utility

model or petty patent)

Eintragungstag (date laid

open after registration as a patent)

Copy is supplied only on

request

aft-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.

DE

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 printe

ion)

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)

GB

United Kingdom

Amended or Corrected Patent

Specification (amended granted patent)

(date of printing)

WO

World Intellectual

Property Organization

International application

(PCT patent application)

(date of printing the

application)