Patent Information Services for Developing Countries

I. Background
II. Types of Services

I. Background

One of the principal mandates of the World Intellectual Property Organization (WIPO) is to offer technical assistance to developing countries. This also includes the access to and use of technological information contained in patent documents in order to accelerate the economic, social and cultural development in developing countries. In line with this part of its mandate, WIPO has assisted a number of developing countries and countries in transition in establishing their national industrial property information system by providing, for example, expert assistance, training, and collections of patent documents. Furthermore, in view of the growing information needs of national industries, R&D community and the business sector of developing countries, WIPO set-up and operates the unique WIPO Patent Information Services (WPIS) for handling individual requests for patent information.

The WIPO Patent Information Services for Developing Countries (WPIS) are offered free of charge on the basis of contributions made by in the main part by a number of industrial property offices world-wide (Australia, Austria, Brazil, Bulgaria, Cuba, Canada, Finland, France, Germany, Japan, Mexico, Norway, Portugal, Russian Federation, Spain, Sweden, Switzerland and United Kingdom), as well as the European Patent Office. The on-line searches undertaken by WIPO are made possible by the courtesy of Derwent Information. Furthermore, many industrial property offices also provide free of charge copies of their national patent documents (e.g. Belgium, Brazil, China, Czech Republic, Denmark, Mexico, Netherlands, New Zealand, Poland, Republic of Korea, South Africa, etc.)

These services have proved to be highly successful, which is reflected in the number of users who regularly ask for information, as well as the number and diversity of requests received. So far, 118 countries and intergovernmental organizations have benefited from WIPO's free-of-charge patent information services. Since the start of the program in 1975, until the end of August 2005, almost 15,000 search requests have been processed free of charge from over 90 developing countries and 14 intergovernmental organizations and countries in transition. In the year 2004, 1,154 search requests (including ICSEI) were received from 39 developing countries. These reports also covered special requests for novelty search and substantive examination as to the patentability of patent applications in developing countries as well as special requests for search and examination of patent applications submitted by ARIPO. WIPO has undertaken all possible steps to meet this increasing demand and to augment both the capacities allotted and the diversity of the services.

Statistics on the number of requests received from each developing country and intergovernmental organization are available as follows:

Statistics: Requests for state-of-the-art searches [ XLS]
Statistics: Online searches performed by WIPO [ XLS]

II. Types of Services

WIPO accepts requests only if they are made by institutions or individuals from developing countries. Requests made by private institutions or individuals require the endorsement of a government authority.

A. State-of-the-art search reports

Such reports identify the "state of the art", as reflected in patent documents and non-patent literature, in respect of a technical problem described in the request.

(a) Why search state-of-the-art?

Within the framework of the WIPO Patent Information Services, searches carried out may serve to:

determine the general state of the art in the field of a given technical problem as background information for R & D activities and in order to know what patent publications already exist in that field of the research activity;
identify alternative technologies which may replace known technologies, or to evaluate a specific technology which is being offered for license or considered for acquisition;
locate information about published patent documents involving specific companies or individuals, as applicants, assignees, patentees or inventors;
assist in determining the novelty, or lack of novelty, of an invention claimed in a patent application or a patent already granted, or even of an invention for which no application has yet been filed.

(b) How are search reports generated?

The search is performed by highly skilled patent examiners of industrial property offices contributing to the WIPO Patent Information Services Program.

They consult their search files which contain collections of national and foreign patents and published patent applications (90%) as well as relevant non-patent literature (10%). The search files are classified according to the International Patent Classification (IPC) which subdivides the whole technology into more than 70,000 groups.

Some searches are performed on internationally accessible computerized databases which are privately owned and located outside industrial property offices. All search reports list patent documents and relevant non-patent literature concerning the technical problem described in the request with brief descriptions explaining their relevance.

This service as well as full text copies of the documents cited in the search reports are provided free of charge.

(c) What do search reports contain?

Search reports contain:

citations of patent and non-patent literature considered to be relevant to the technological problem given in the request (copies of those documents will also be provided), however, neither commercial information nor technical drawings and designs, and the like, may be expected to be provided;
in most cases, a short description of the relevance--to the technological problem given in the request--of the documents cited;
normally, the classification symbols of the International Patent Classification (IPC) and/or a national patent classification of the subject matter fields searched. It would also include, where relevant, an indication of the patent document collections searched and the period covered by the report;
the date on which the search was actually completed.

(d) Submit a request for a-state-of-the art search report

This service is free of charge. WIPO accepts requests only if they are made by institutions or individuals from developing countries. Any information given by the requestor to describe his inquiry will be treated as confidential.

Examples of two requests for search reports, together with the corresponding reports, and one request for a name search, accompanied by the results are available. It is particularly recommended that these be carefully studied before a request is submitted to the International Bureau of WIPO.

(i) How does the service work?

Requests for search reports submitted directly by a private institution or by an individual are accepted only if they are endorsed by a national (or regional) industrial property office, a national research and development institution or other government authority of the country of residence of the requestor.

Each request for a search report is examined by WIPO before it is forwarded for processing to one of the contributing industrial property offices.

WIPO acknowledges receipt of search requests and informs the requestor to which contributing office the request was transmitted for performing the search.

According to the policy of the International Bureau of WIPO, requests may have to be refused if they are related to arms, chemical warfare, military technologies, etc.

(ii) What are the requirements for a request?

Each request for a search report must:

specify the government department or other national authority, institution or organization making or endorsing the request;
give a title which, for reference purposes, summarizes the subject matter of the request;
contain a full and detailed description of the subject matter of the request. This should relate to a single, well defined technological problem, or, in the case of a name search, have precise and complete spelling of company names and/or individuals;
include, if the description is very long, (e.g., several pages), a summary of the description giving the particulars of the technological information sought;
be signed by the requestor and/or the director or other responsible official of the government authority or institution making and/or endorsing the request;
use the appropriate form [ PDF].

Each request for a search report should contain drawings if they assist in the understanding of the description. The request should list any limitations of the search report which could facilitate a swift and more accurate search (e.g., by publication date, by country, by language of documents disclosing technology relevant to the request or by the symbols of the International Patent Classification (IPC) specifying the technical field).

Requests should be written in English, French, German, Spanish or Russian. It is important to note that some requests submitted in Spanish or Russian will have to be translated into English by the International Bureau of WIPO, so that the contributing industrial property office can perform the search. The process of preparation of the search report will be accelerated if such requests are submitted with the title and abstract already translated into English.

The description in a request for a search report should be sufficiently detailed and precise so that the examiner himself does not need to make assumptions concerning the information sought. For example, if information concerning a desired solution to a technological problem is required, both the type of solution and the problem itself should be clearly defined in order to avoid the searching of other, unwanted solutions, or of the same solution to a different technological problem. Moreover, if general solutions to a technological problem are required, the requestor should describe those solutions to the problem that are already known to him so that the examiner can concentrate upon the specific need.

If searches are requested to locate information regarding patent literature which involves specific companies and/or individuals, the spelling of names, including all versions known to the requestor, must be precise and complete.

If WIPO, or the contributing industrial property office, consider that the request does not contain sufficient information, the requestor will be asked to provide additional technical information. A detailed search to identify technical solutions or other relevant data can only be made if a very clear description of the technology being sought is given.

B. Search and examination of patent applications under the International Cooperation for the Search and Examination of Inventions Program

WIPO Patent Information Services include search and examination of patent applications filed with Industrial Property Offices under the ICSEI (International Cooperation for the Search and Examination of Inventions) program including search and examination of patent applications submitted by the African Regional Industrial Property Organization (ARIPO), which have no priority or for which no search reports have been established.

(a) What are the benefits for industrial property offices to use this service?

This service, which complements the service of the state-of-the-art reports, is intended to assist industrial property offices of developing countries in examining pending patent applications which have been filed by residents and non-residents of their respective countries and therefore in assessing novelty and inventive step of patent applications filed with them.

Examination of the patentability of an invention requires a very large volume of documentation and an important staff of highly qualified and specialized engineers and lawyers. Most of the developing countries and many of the developed countries cannot afford the cost that such a documentation and staff would necessitate.

The objective is to find ways and means by which such countries could be so assisted that, mainly by relying on such assistance, they could issue patents that are just as "viable" as those issued by the technically most advanced industrial property offices, that is, patents that have a high degree of likelihood of successfully withstanding attacks on their validity.

Such patents are desirable not only from the viewpoint of their owners but also from the viewpoint of prospective transferees or licensees of patented technology (since they would have a better idea about the real value of the patented inventions that are being offered to them for exploitation ), as well as of users of patented inventions for purposes of technological information (because only a careful, complete and correct examination can guarantee the clarity and completeness of the disclosure of a patented invention) and prospective competitors (because they could better measure the risks of infringement if they decide to use the patented invention without the patentee's permission).

(b) What do ICSEI search and examination reports contain?

The ICSEI search and examination reports, prepared by highly skilled examiners of industrial property offices having at their disposal the required documentation, contain opinions on the novelty and inventive step of inventions claimed in the respective patent applications, which can in time be used by the requesting industrial property office to decide whether or not the invention claimed in the application deserves a patent.

(c) Submit a request for search and examination reports under the International Cooperation for the Search and Examination of Inventions Program

This service, which is intended to assist industrial property offices in developing countries exclusively, is free of charge. The patent applications transmitted will be handled confidentially both by the International Bureau and the executing industrial property office.

The copy of a patent application sent to WIPO under the ICSEI Program should be complete, except that the identification of the applicant may be omitted. Patent applications in the English, French, German or Russian languages are accepted under the ICSEI Program.

To submit a request, please use the appropriate form [ PDF].

C. Equivalent patent documents (patent "family")

(a) Why search for equivalent patent documents?

The identification of "equivalent" patent documents or the location of a member of a patent family can be useful in order to:

find the countries in which a patent application for a given invention has been filed (if published);
find a "patent family member" that is written in a desired language;
estimate the importance of the invention (by number of patent documents relating to the same invention and being published in different countries or by Regional or International industrial property organizations).

(b) How does the service work?

In order to use this service, users or industrial property offices should forward to the International Bureau some basic bibliographic data.

On the basis of these data, the International Bureau or the industrial property offices can proceed with an online search for equivalent patent documents published in other countries or by regional or international patent authorities. In the case that equivalent patent documents were published and patent literature was cited during the examination procedure or during documentary searches by other IP offices (normally in the form of search reports annexed to the published patent applications or as citations listed on the first page of the granted patent), the International Bureau secures copies of both the search reports and patent documents cited therein.

The International Bureau can also search, by using its free online access to certain industrial property databases to identify a member of a "patent family."

(c) Submit a request for information on equivalent patent documents

This service is free of charge. WIPO accepts requests only if they are made by institutions or individuals from developing countries. Requests made by private institutions or individuals require the endorsement of a government authority.

An example of a request for furnishing information on equivalent patent documents and citations or patent family members, together with the reply to be expected is available.

Each request for information on equivalents, or patent families must:

indicate the industrial property office or other institution making the request;
give complete and accurate bibliographic data of the pending patent application and details concerning which equivalents are to be located or the patent document in respect of which family information is requested;
be signed by the director or other responsible official of the industrial property office or institution and government authority making and/or endorsing the request.

When submitting a request for information on equivalent patent documents published by other industrial property authorities, the office with which the patent application is pending should forward the following information to the International Bureau of WIPO:

country of origin of the application, and, if applicable, priority number and filing date;
name(s) of inventor(s)/applicants (s).

The requestor should state, if desired, language preferences for the equivalents. However, patent documents only, and not other kinds of literature, are obtainable within the scope of this service. A necessary prerequisite for locating patent families is the availability of bibliographic data or at least the publication number of the patent document and name of the country or the organization which has published it (or the respective application number including filing date and country or organization in which the application has been filed).

The requestor should state any limitation of the search to be carried out in order to facilitate its processing (e.g., period to be covered, International Patent Classification symbols, countries, etc.).

To submit a request for information on equivalent patent documents and patent families, please use the appropriate form [ PDF].

D. Copies of individual patent documents

(a) How does the service work?

Free copies of the full text of any published patent or patent application, as may be specifically requested by the users from developing countries, are also available. In the event that a requested document is published by a country in a language not understood by the requestor, WIPO endeavors to find a description of the same invention contained in another corresponding patent document published by another country in English. If no corresponding patent is available in a language familiar to the requestor, WIPO endeavors to identify the translation of the abstract in English wherever available. Some 30 industrial property offices provide, free-of-charge, copies of their patent documents, however, the main suppliers of free copies are those offices in Austria, France, Germany, Japan, Mexico, Portugal, the Russian Federation, Switzerland, the United Kingdom, the United States of America, as well as the European Patent Office (EPO) and WIPO.

(b) Submit a request for copies of individual patent documents

Each request for copies of individual patent documents must:

specify the government department or other national authority, institution or organization making the request;
be signed by the requestor and/or the director or other responsible official of the government authority or institution making and/or endorsing the request;
use the appropriate form [ PDF].

For each requested copy of a document, at least the publishing country or organization and the document number must be given.

Also, if needed, there should be an indication (in plain language) of the kind of patent document requested (e.g., published unexamined patent application, published examined patent application, granted patent).

When requesting copies of Japanese patent documents please specify whether the publication number refers to an examined patent application (kokoku) or unexamined patent application (kokai).

In order to facilitate the processing of the request, the identification data should be grouped according to publishing country or organization and kind of document and should, within those groups, be given in the order of the document numbers.

In general, the copies provided by WIPO will be sent to the requestor together with a copy of the original request. If for some reason it is not possible to supply a copy of a requested document, an indication will be given on the copy of the original request.

This service is designed for the provision of copies of individual patent documents. It is not possible to ask for copies of patent documents not identified by their serial numbers. Thus, no requests will be honored which, for example, ask for the supply of copies of complete series of patent documents that are classified according to one (or more) symbols of the International Patent Classification.

To submit a request for copies of individual patent documents, please use the appropriate form [ PDF].