This part of the Encyclopedia of Law provides an overview of the basic attributes of patents, along with the
patentability requirements, practice in the USPTO, primarily the steps involved in obtaining a patent, some post-issuance considerations such as the patent term, and the need to mark patented articles to notify the public of the existence of the patent, foreign patent applications, as well as ownership, patent assignments, and patent licensing. Legal issues to take in account also include judicial exceptions to statutory classes, limitations on remediesÂ—notice, patent exhaustion, ownership, assignments and licensing.
This entry discusses how to research and retrieve the full text of patents filed outside the U.S., plus related miscellaneous information.
For detailed information on how to apply for a patent in countries outside the U.S., consult the Manual for the Handling of Applications for Patents, Designs and Trademarks Throughout the World, published by Wolters Kluwer (formerly by Property B.V.) and available online at KluwerManualIP.com (subscription). For information on the patent laws of individual countries see the “Foreign and International Patent Laws” section, below. For information on patents filed in the U.S. see “Patents – U.S.”
Getting Foreign Patents
Free database: Many patent offices post free patent databases. Major patent office databases include the EPO’s esp@cnent, China’s SIPO, Japan’s IPDL, South Korea’sKIPRIS, the U.K.’s Ipsum and Canada’s Canadian Patent Database. Links to most other government sites are available through the British Library’s Patents pages. Patents are generally filed in each country’s home language. English searching and/or translations are available for some non-English speaking countries.
Fee-based and Subscription Services: You can also get foreign patents from a number of fee-based and subscription services. Systems designed specifically to retrieve patents include:
You can also get foreign patents from online research systems with significant foreign patent databases. Online systems with large foreign patent collections include:
- The Questel Intellectual Property Portal and Questel’s QWeb;
- The Questel Intellectual Property Portal and Questel’s Thomson Innovation; and
Other systems with significant foreign patent databases include:
You can use the Intellogist’s Interactive Patent Coverage Map to look up which of the specialty patent systems has coverage for a particular country.
Retrieval Services: If you can’t get what you want online, you might find it by placing an order with the British Library or Thomson Reuters Document Retrieval (800-648-6787 in the US), or a competitor. If they can, they will send you the foreign patent in few hours. If they can’t they will try to get the patent from the home country.
Foreign Patent Research
Like foreign patent retrieval, foreign patent research comes in three varieties: searching free databases, searching online systems and hiring a patent research firm to do the search for you.
Free Databases: I generally use the free searchable patent databases as a first stop if I’m looking for something in particular. If I find it, great. If not, I go on.
The broadest free searches seems to be WIPO’s Patent Scope, which claims to search over 5 million patent applications from many countries, and the EPO’s esp@cnent, which says that its “Worldwide” search covers bibliographic data from patent applications filed in over 50 countries. Databases vary in depth, but the site says “A large proportion of the data goes back to 1970.”
You can also do research in the individual country databases discussed in the “Getting Foreign Patents” section, above. The EPO’s Asian Help Desk provides guidance on searching for patents in the China, Taiwan, Japan and Korea databases.
Fee-based and Subscription Databases: All the research systems discussed above in the “Getting Foreign Patents” section allow reasonably sophisticated database searching.
For serious searching, you may want to use the Derwent World Patent Index. The DWPI database is produced privately by Thomson Reuters and is available through their various patent systems including Thomson Innovation, ProQuest Dialog, Delphion and Westlaw.
The Intellogist posts an Interactive Patent Coverage Map that allows you to look up the vendors with searchable databases for a particular country.
Patent Research Services: If you don’t want to do the searching yourself, you can hire a patent research company to do the research for you, such as Goneau & Lemens(819-770-6122), Thompson Reuters IP Search Services (800-223-9697), Inrea, or one of the other Consultants & Services listed by the Patent Information Users Group. The EPO’s Asian Patent Information Services does Chinese, Japanese and Korean patent research (+43 1 52126 4545 or send email to: email@example.com).
Other Foreign Patent Matters
European Patent Organization (EPO): The EPO was created to establish and maintain a uniform patent system in Europe. The executive arm of the EPO is the European Patent Office, which serves as a central register for EPO patents and patent applications. The EPO Web site provides information about the EPO and useful databases for EPO patent research www.european-patent-office.org. The site includes a lists of member countries. Use the EPO’s Register Plus to get the file histories (a/k/a “file wrappers”).
European Patent Register: The European Patent Register contains “all published European Patent applications and PCT applications with designation of EPC Member States from first publication until grant. The Register is posted free on the EPO Web site www.european-patent-office.org/epidos/epr.htm.
File Histories: The correspondence between a patent office and the person filing the patent is often compiled into a “file history” (also called a “file wrappers“) and kept by the patent office. Copies may be available through the patent office Web site, as discussed in File Wrappers? Are Those, Like, People Who Bust a Wicked Rhyme About Paperwork? by Anne N. Barker. EPO file histories are available free through Register Plus.
If a file history is not readily available free from a patent office, you can get copies through a specialty document retrieval service such as RWS Group, DPS Files,DigiPat, Information Specialties Corporation (ISP) (800-472-0120), Thomson Patent File Histories, ReedFax or one of the other services listed in the File Wrappers? article.
Foreign and International Patent Laws: For information on the patent laws of individual countries see Patents Throughout the World (West), World Patent Law and Practice (Lexis) and/or the Manual for the Handling of Applications for Patents, Designs and Trademarks Throughout the World, published by Wolters Kluwer (formerly by Property B.V.) and available online at KluwerManualIP.com (subscription).
English versions of the patent laws of most countries are published in Industrial Property Laws and Treaties of the World (WIPO) and World Patent Law and Practice: Patent Statutes, Regulations and Treaties (Lexis). Patent laws enacted after 2000 are posted in the WIPO Lex database. KluwerManualIP.com has patent treaties, with lists of the member countries (subscription only).
For more foreign patent law resources, see the Resource Guide for Researching Intellectual Property Law in an International Context by Andrew Larrick at the Columbia Law Library. For additional sources of foreign legal information, see “Foreign Laws.”
Patent Families: A patent “family” is a list of the countries where a patent was filed, plus the number assigned to the patent by each country’s patent agency. For information on researching patent families, see the Patent Families section of the U.S. Patents entry.
Japanese patent information can be requested from the EPO’s Japan desk for a nominal fee (firstname.lastname@example.org) or retrieved from the Patolis database, if you have access.
Reassignment Data: Sometimes patent will be reassigned to someone other than the original owner. You may be able to find reassignment data in one of the patent research databases discussed above. Otherwise, call Goneau & Lemens (819-772-2770), Thompson Reuters IP Search Services (800-223-9697), or one of the other Consultants & Services listed by the Patent Information Users Group to see if reassignment data is available.
Translations: See the “Patents” section of the Translation entry for information on translating foreign patents into English.
References and Further Reading
About the Author/s and Reviewer/s
Copyrights and Patents in U.S. Constitutional Law
A list of entries related to Copyrights and Patents may be found, under the Copyrights and Patents subject group, in the United States constitutional law platform of the American legal encyclopedia.
Patents (Law Materials)
In this section, find out some resources in relation to Patents legal materials (as legal instruments).
Other Legal Instruments
Other legal instruments include:
- Charters and articles of incorporation
- Commercial arbitration agreements
- Contracts (including Collective labor agreements and Deeds)
- Cooperative agreements
- Legal memorandums
- Legal petitions (including Remonstrances)
- Law Materials
- Legal Instruments