Patent Information News

Issue 4 | 2016
Patent Information News
CONTENT
3 Editorial
3 Spain joins the Federated Register
service
4 What’s new in Espacenet?
5 Espacenet – what people are
asking
6 Q. What should a patent searcher
know about patent law?
A. More and more, as time goes on.
7 Free patent information webinars
in 2017
8 Who represents users of patent
information?
9 Changes to the IPC as from
1 January 2017
10 White spot analysis
11 More improvements to the
European Patent Register in 2016
11 Publications corner
12 One hundred issues of Patent
Information News
13 News from Asia
14 Comprehensive patent law change
in early 2017: the return of the
post-grant opposition system
16 Other news
Patent information strategy outlined
at annual conference
President Benoît Battistelli outlined the cornerstones of the Office's patent
information policy in his opening speech at the EPO Patent Information
Conference, which took place in Madrid between 8 and 10 November this year.
"We aim to be the leading provider
of patent information. That means
being absolutely committed to
high-quality patent information by
ensuring it is complete, useable,
timely and correct," Mr Battistelli
told the conference in his opening
speech.
Those attending heard how the EPO
is increasingly focusing on usability
to enable everyone to search data
efficiently and easily, while ensuring
the reliability and correctness of the
data. The President highlighted in
particular the Office's Espacenet
New project, which would, he said,
redefine the interface, making it
more user-friendly and bringing in
new features to expand its capabilities.
Espacenet saw its use grow by
12% in 2015, with three quarters of a
million users per month accessing
the service. During periods of high
demand, this had briefly increased
to 2.5 million.
Mr Battistelli also used his speech
to draw the audience's attention to
an ongoing pilot project in which
the Office publishes the search
strategies used by its examiners.
This information is available via
the European Patent Register for
each patent application for which
a search was carried out after
November 2015. There was also a
discussion round on the same topic
at the conference, during which
participants concluded that this
was a very useful service. They
continued on page 2 >
Patent Information News 4 | 2016 December 2016 1

continued from page 1
recommended making it machinereadable
and including links to the
classification symbols the examiner
had searched. They also hoped that
the EPO would one day publish the
search strategy together with the
search report itself.
In a total of eight discussion rounds,
current topics in patent information
were discussed by the participants
and the EPO’s experts. The conclusions
are shown in the table below.
The prospect of patent searches
being done by a computer provoked
a lot of debate following the two
keynote talks. Luis Ignacio Vicente
del Olmo of Spanish company
Tele fónica set the scene, describing a
dramatic increase in the number of
patent applications in the field of ICT
(information and communications
technology). ICT, seen to gether with
other developments such as the
Internet of Things and Big Data
was creating new challenges. He
introduced an EU-funded project
called CIFRA (Challenging the ICT
Patent Framework for Responsible
Innovation) that was identifying
imperfections in the patent system.
Personally, he said, he would recommend
focusing on increased transparency.
For him, this meant access
to worldwide legal status information,
tools to look at enterprises'
patent port folios and, in the longer
term, patent ownership information,
as well as clear reasoning from
patent offices when they granted or
refused a patent.
EPO principal director Grant Philpott
took the discussion further, looking
at the 4th Industrial Revolution
(Industry 4.0) and predicting it
would have a dramatic effect on
society. "No job would be safe", he
said, "if it is routine, a computer will
do it." He noted that computers
were already capable of analysing
legal cases, citing studies that
showed a remarkable level of
synchronisation with the human
judges who had handled the cases
in real life. It was only a matter of
time, he concluded, before patent
searching would be automated.
Main conclusions of the discussion rounds at the EPO Patent Information Conference 2016
Discussion round
Conclusions
Search strategies – what are
we learning from the EPO's pilot
project?
Harmonising and simplifying legal
status codes
1. Make search reports machine-readable
2. Links to classification symbols
3. Publish together with search report
1. Need for harmonisation in legal status codes across offices
2. Fewer and clearer codes
3. Clarity in grouping (hierarchy)
Open data in patents – recent
developments in Europe and
beyond
What's the importance of patent
indicators in patent valuation?
Linking patent data and business
data - why do it, and what are the
hurdles?
Are data protection issues
hampering our access to patent
information?
1. Need for data accuracy and global standards
2. Fair use policies essential
3. Services needed for non-experts
1. It is time to create a new user group for patent statistics and patent analysis
2. Users need a dedicated training programme in this area
1. Accurate patent assignee and ownership data is essential
2. More data required from Asia and from SMEs
3. The 18-month rule for patent publications delays data's availability
1. Patent searchers should be aware of the European data protection
directive, as it will affect their work
2. Non-patent literature and copyright affects the patent searcher's access
to good prior art
Freedom-to-operate:
what does the client expect from
the patent searcher?
1. Need for better OCR data, better machine translations and more full-text
data from around the world
2. Legal status data from Africa, the Middle East and Latin America
is of growing importance
3. For viewing, more highlighting features in the texts, and multiscreen
viewing would aid searchers
Patent information from Asia –
still the challenge it used to be?
1. Today's challenges concerning Chinese utility models, and patents
in India, Russia, ASEAN and Iran
2. Constant improvements to English language services
(machine translations, English website interfaces) are essential
Grant Philpott, EPO principal director
and keynote speaker at the EPO Patent
Information Conference 2016
He saw the patent searcher's future
in very advanced searching and
evalua tion.
This conclusion tied in well with the
presentations on legal status at the
end of the conference by patent
attorneys Tobias Wuttke and
Susanne Hantos. Both of these
speakers saw a growing need for
patent searchers to understand
legal status information, and by
implication, the underlying patent
laws (see separate article on page
6 and 7).
Other topics covered in the conference
programme were full-text
and semantic searching, patent
monitoring and citation analysis.
Many of the presentations are available
on the EPO Patent Information
Conference website:
www.epo.org/pi-conference
2 Patent Information News 4 | 2016 December 2016

EDITORIAL
Reaching out for 25 years
This is the 100th edition of Patent Information News. With four editions a year,
it marks 25 years of active communication between the European Patent Office
and the users of its patent information products and services.
Just last month, we held the 26th
annual conference on patent
informa tion, and you can read
about the event, which took place
in Madrid, in a number of articles in
this issue.
The EPO is extremely active in its
pursuit of dialogue by any yardstick.
As a patent office, it is a world
leader in this respect. In addition to
this newsletter and the conference,
we hold frequent meetings with
user groups such as PDG and
CEPIUG, and we support Europe's
PATLIB network of patent information
centres. We also have our
online forums and are delighted to
observe how enthusiastically you
use them.
Quality is a hallmark of the EPO's
work in the patent information
field. And quality depends on
meeting our users' needs. It is the
excellent dialogue we have with
users that makes it possible to
understand those needs. My thanks
therefore go out to you, our readers,
for your part in that.
Richard Flammer
Principal Director Patent Information
and European Patent Academy
Richard Flammer
FEDERATED REGISTER
Spain joins the Federated Register service
A further country joined the EPO's
Federated Register service this
September. Spain brings the total
number of participating states to 15,
the other 14 being Austria, Croatia,
Czech Republic, Finland, Former
Yugoslav Republic of Macedonia,
Greece, Ireland, Lithuania, Luxembourg,
Netherlands, Romania,
Serbia, Slovenia and Switzerland.
Launched in April 2015, the service
gives users easy access to reliable
and up-to-date bibliographic and
legal status information on European
patents validated in the participating
countries.
Available within the European
Patent Register (www.epo.org/
register), the Federated Register
allows you to retrieve the status of
a granted European patent once it
has entered the national phase in
these 15 countries and view them
all together in one table.
Information on the content
provided by each national patent
office currently integrated into the
Federated Register is available on
the EPO website. 1
Ultimately, it is the goal of the
Federated Register to offer access to
the status of a granted European
patent across all the designated
states, as well as extension and
validation states. Patent Information
News will keep you posted as
more countries join.
The Federated Register is part of the
European Patent Register, available
at www.epo.org/register.
1) www.epo.org/searching-for-patents/legal/register/documentation/federated-register.html
Patent Information News 4 | 2016 December 2016 3

ESPACENET
What’s new in Espacenet?
This article presents a short overview of the most important recent changes to Espacenet.
By clicking the INPADOC patent family tab, users can access Global Dossier
for other family members:
Sorting the results list
Following user reports that sorting result lists in Espacenet by Date of
upload was not very helpful, it is now possible to sort by Publication date.
Extension of the Global Dossier service
As with the European Patent Register (see page 11), the Global Dossier
service has been extended to encompass patent authorities participating in
the WIPO CASE initiative. The Canadian office and WIPO have now made
their public dossiers available, and other authorities are expected to
follow suit.
Access to Global Dossier and links to the European Patent Register
and national registers
The Espacenet interface displays Global Dossier icons and links to the patent
registers of various authorities. Each link opens a new window showing the
corresponding register. No link is displayed if a register cannot be accessed
direct.
4 Patent Information News 4 | 2016 December 2016

Latest full-text coverage and latest bibliographic coverage
If you want to know what data is covered by the Espacenet databases, you
can find out by looking at the online coverage tables, which are updated
daily. Please note that the layout has recently changed. Coloured rows
indicate that the data has changed compared to the previous day. The
details of the changes are indicated in green. If the entire row is new, all
entries are in green. If some gaps in coverage have been filled without any
change to the first/latest publication, only the total number of documents
is in green.
Progess in the harmonisation of national interfaces
As part of the Espacenet New project, the national versions of the
Espacenet server are being harmonised and migrated to the EPO's
infrastructure. Twenty-five interfaces have already been integrated and
more will follow in due course. This change means you can search the
full-text collections of national data in the respective national language
through the national interface in a harmonised way. Currently, you can
use the national interfaces to search the full-text collections of Austria,
Ireland, Luxembourg, Portugal and Spain.
Links:
Bibliographic coverage:
www.epo.org/searching-for-patents/technical/patent-additions.html
Full-text coverage:
www.epo.org/searching-for-patents/technical/full-text-additions.html
Espacenet – what people are asking
Espacenet users put many different questions to the EPO's Patent Information
User Support team. Here are the currently two most frequent ones.
How should I interpret the importance
of CPC symbols when viewing
results in Espacenet?
The font in which a CPC symbol is
printed specifies inventive or additional
information. Inventive information
is displayed in bold font and
additional information in normal
font.
Inventive Information
Is the first classification symbol
the main symbol?
Additional
information
Espacenet users also wanted to
know whether the first CPC symbol
that appears in the bibliographic
data indicates the main class.
The answer to this is no, the order
in which CPC symbols appear in
Espacenet has no particular
meaning; they are simply displayed
in alphabetical order. The only
differentiation is between invention
information shown in bold and
additional information shown in
normal font.
Inventive information (bold) in alphabetical order
Additional information (normal font) in alphabetical order
Patent Information News 4 | 2016 December 2016 5

LEGAL STATUS SEARCHING
Q. What should a patent searcher know
about patent law?
A. More and more, as time goes on.
Three presentations at the EPO Patent Information Conference showed that demands are
increasing on patent searchers to have a deeper understanding of patent law. And they are
likely to increase even more in the future.
Grant Philpott had already
prompted a debate on the future of
patent searching as a profession
on the first day of the EPO Patent
Information Conference when he
suggested, "If it's routine, the
computer will do it". His prediction
was that the future for patent
searchers lay in advanced non-
routine analyses. In this light, the
presentations two days later by
Tobias Wuttke and Susanne Hantos
Opposition activity in the field of
security printing: The graphic shows
the opponents with the highest number
of oppositions filed (vertical axis) and
the patent holders with the highest
number of oppositions received in the
technical field (horizontal axis). For
these parties, the number of opposition
cases is specified in the matrix and
colour-coded.
had the sense of a call to action in
preparation for that future.
Both speakers focused their
message on data that describes the
legal status of patents. Both also
stressed the potential importance of
this data and the huge bearing it
had on strategic decision-making.
Legal status data
"Legal status patent information,"
said Tobias Wuttke, "is the backbone
of every R&D, M&A, FTO process
and every patent dispute/negotiation.
No patent-related service is
possible without it."
In the area of patent infringement
large amounts of money were at
stake, according to Mr Wuttke.
Judges could award very high
damages and in some jurisdictions
impose an interest rate of 8% above
the base rate. Mergers and acquisitions
(M&A) were another area
where he saw an important
contribu tion from legal status
specialists, citing time pressure as a
ubiquitous problem, often leading
to people only considering pending
disputes, not potential ones, and
frequently ignoring reinstatement
of IP rights or restoration.
In addition to the more traditional
uses of legal status data, Mr Wuttke
also drew the audience's attention
to the growing popularity of
statistical analysis in this area. His
example here showed various
companies' behaviour in opposition
proceedings at the EPO, demonstrating
with the data that some
companies filed many oppositions,
while others did not. Oppositions
were particularly important in
Europe, he said, because they
provided a window of opportunity
for challenging a patent in one
central attack across a number of
countries. After expiry of the
opposition period, a patent could
only be challenged at national level.
Freedom to operate
In what was voted the best
presentation of the conference by
delegates, Susanne Hantos made a
plea for a better understanding of
Opposition activity in the field of security printing
Top 10
opponents in
the technical
field
Top 10 applicants of opposed patents
Applicant 1 Applicant 2 Applicant 3 Applicant 4 Applicant 5 Applicant 6 Applicant 7 Applicant 8 Applicant 9 Applicant 10
Total number of
oppositions filed
by opponent in
technical field
Opponent A 4 113
Opponent B 5 3 1 1 1 2 2 1 85
Opponent C 4 5 3 1 2 2 1 2 38
Opponent D 3 2 2 1 1 35
Opponent E 1 3 30
Opponent F 5 29
Opponent G 5 4 3 2 2 2 1 25
Opponent H 23
Opponent I 2 1 1 1 1 1 1 20
Opponent J 4 2 2 1 1 1 1 15
Total number of
oppositions 27 19 13 10 8 7 6 5 5 5
against applicant
6 Patent Information News 4 | 2016 December 2016

the freedom-to-operate search.
Frequently, she said, people conflated
a freedom-to-operate search
with a patent validity search by
searching for non-enforceable prior
art. In the context of IP rights, freedom
to operate, as opposed to other
barriers such as regulatory approval,
standard requirements or importation
restrictions, should look exclusively
at the risk of infringing
third-party IP rights in the event of a
company following a certain course
of action. It was, she said, all about
avoiding infringement, as infringement
could be costly, and possibly
even lead to bankruptcy.
A validity search, on the other hand,
examined whether or not there was
any prior art that might cause a
court of law to render a third-party
patent invalid. She said a validity
search should be considered as a
follow-up action after a freedomto-operate
search, or what she
preferred to call a "patent infringement
risk search". She urged
caution, however, about relying on
Fig. 1: Determining the scope of protection
Scope of protection (Art. 69 EPC + protocol)
Doctrine of equivalents =
non-claimed obvious alternative means
which also solves technical problem
Literal infringement = claim features
realised in their literal sense
Functional interpretation
the results, warning that, "What you ones at the time of the search, as
or your counsel thinks about the the PCT allows applicants to submit
validity of a blocking patent and amended claims during the international
phase of the application.
what a court decides about patent
validity can be very different." Noting that a product or process
described in the full text of the
Patent searchers, said Susanne original application but not claimed
Hantos, could improve legal certainty
by having a clear understanding subsequently claimed during
in the published claim set can be
of patent law that would enable examination, she advised: "If only
better searching. One important published patent application claims
aspect here was an awareness that are searched, potential infringement
risks could be missed." For this
patent claims can change before or
after the patent is granted. In PCT reason, full-text searching (where
procedures, for example, the published
claims may not be the
possible) should be conducted.
current
Susanne Hantos, like Tobias Wuttke,
also cited the doctrine of equivalents
as an important concept that
searchers should be aware of.
Doctrine of equivalents
The doctrine of equivalents is
relevant to infringement risk assessment.
It states that infringement
can occur even if the item sold is not
identical to the claim in the patent
that is being infringed. It is sufficient
if the item or process is equivalent
to the patent claim for
infringement to occur.
The diagram (Fig. 1) is a reproduction
of Mr Wuttke's slide on the
doctrine of equivalents, and
explains the concept in graphical
form.
Indirect infringement is also
possible. This happens when a component
of an infringing product is
supplied to aid, abet or persuade
another to produce the infringing
product.
TRAINING
Free patent information webinars in 2017
Joining one of the EPO's free online
webinars is a good way of keeping
up to date with the latest on EPO
patent information. The programme
for the first half of 2017 is shown in
the table. Block your calendar now
for the topics that interest you.
For more information see
www.epo.org/pi-training.
Free patent information webinars in 2017
Date Time Title
16 Jan 16.00 Virtual helpdesk
17 Jan 11.00 INPADOC
18 Jan 11.00 Patent portfolio management
14 Feb 14.00 Recent and upcoming law changes in Japan and Korea
15 Feb 11.00 Patent families
22 Feb 11.00 Recent and upcoming law changes
in Mainland China and Hong Kong
1 March 11.00 Recent and upcoming law changes in India
8 March 11.00 Introduction to patent classification
27 March 11.00 Patent Information Newsflash
5 April 11.00 Business use of patent information
10 April 11.00 Virtual helpdesk
26 June 16.00 Patent Information Newsflash
10 July 16.00 Virtual helpdesk
Iris Danner and Martin Noé, the EPO’s
patent information webinar hosts
Patent Information News 4 | 2016 December 2016 7

USER GROUPS
Who represents users of patent information?
Butcher, baker or candlestick-maker, almost every profession is united through a professional
organisation that represents its interests in discussions with lawmakers and with suppliers to the profession.
In the field of patent information, Europe has a rich assortment of groups to represent users.
Patent Documentation Group
The oldest and best-known user
organisation in the field of patent
information is the Patent Documentation
Group (PDG), established in
1957. PDG's membership is made up
of companies, not of individuals and
its focus is on promoting "the effective
and efficient use of patent
information". 1 This focus is reflected
in the structure of its five working
groups:
– Networks and on-line retrieval,
WG ONLINE (since 1976)
– Impact of patent laws on
documentation, WG IMPACT
(since 1980)
– Patent database vendors, WG PDV
(since 1992)
– Biotechnology searching (since
2001 linked to the WG ONLINE)
– Analysis & Visualisation, WG A&V
(since 2006)
PDG has a reputation as a body that
combines a deep knowledge of
patent information data, tools and
services, with a high-level strategic
approach to future developments.
For more on PDG see
www.p-d-g.org.
Are you a member of a patent
information user group?
For individual patent searchers,
there are ten user groups around
Europe that offer personal membership.
All of them work on promoting
the professional interests of their
members. The table lists the user
groups and their websites. They are
all open to any patent searcher
interested in joining.
These ten user groups have to -
gether formed a Europe-wide
umbrella organisation, called the
Confederacy of European Patent
Information User Groups (CEPIUG).
Founded in 2008, CEPIUG promotes
the sharing of experiences and
expertise in patent searching
across Europe. It also works on
co-ordinating European efforts in
the education and training of new
entrants into the profession of
patent searching. CEPIUG is also
working on providing a common
Table 1: CEPIUG members
ground for basic training within the
field of intellectual property rights
and information retrieval.
For more on CEPIUG see
www.cepiug.org.
A number of Spanish patent
informa tion professionals have
recently decided to establish a
mailing list as a starting point for
the creation of a national users
group. For more information contact
Marta Ballbè at
mballbe@esteve.es.
SACEPO/PDI – representation
before the EPO
PDG, CEPIUG and the national user
groups in Europe may, if they
choose, nominate members to the
SACEPO/PDI sub-committee.
SACEPO stands for Standing Advisory
Committee before the EPO and
is the only official body where users
can put their views to the Office.
The sub-committee on Patent
Documentation and Information
(SACEPO/PDI) meets once a year in
Vienna. The dialogue at these
meetings is of great importance for
decision-makers at the EPO.
Name Country Website Average number
of members
BPIP – British Patent Information
Professionals
BEPIUG – Belgian Patent
Information User Group
PIF – Patent Information Forum
SIPIG – Swedish IP Information
Group
WON – Werkgemeenschap
Octrooiinformatie Nederland
AGM – Arbeitsgruppe
Elektronische Medien in der
Patentinformation
AIDB – Associazione Italiana
Documentalisti Brevettuali
CFIB – Club Francophone
d'Information Brevet
PATMG – Patent & Trademark
Group
PING – Patentinformationsnutzergruppe
United Kingdom
Belgium
Denmark
Sweden
Netherlands
Germany
Italy
France and Frenchspeaking
countries
(Switzerland, Belgium,
Luxembourg)
United Kingdom
Germany and Germanspeaking
countries
(Switzerland, Austria)
None
www.bepiug.org
piforum.mono.net
None
www.won-nl.org
www.dgd.de/agm.aspx
www.aidb.it
www.lecfib.net
www.cilip.org.uk/about/
special-interest-groups/
patent-and-trademark-group
pontos.patent-inf.tu-ilmenau.
de/tiki-index.php#&panel1-1
67
106
86
52
198
30*
65
141
86
57
*data of March 2015
8 Patent Information News 4 | 2016 December 2016

CLASSIFICATION
PIUG
Readers who deal with US patent
information a lot, or who are located
outside Europe, may be interested in
the Patent Information User Group
(PIUG), based in the United States.
According to PIUG's website, its mission
is "to support, assist, improve
and enhance the success of patent
information professionals through
leadership, education, communication,
advocacy and networking." 2 Its
activities are therefore very much
aligned with those of PDG and
CEPIUG. The area where PIUG has
set the benchmark is in its online
networking activities, where its
discussion forum is thought by
many to be the best of its kind
within the field of patent information.
PIUG holds an annual conference,
which takes place in a different US
city each year, and an annual biotechnology
event, which is always
held in New England.
For more on PIUG see
www.piug.org.
PDG, CEPIUG and PIUG are working
together on the creation of a suitable
certification scheme for patent
information professionals.
For more on this certification
scheme see www.qpip.org/.
Changes to the IPC as from
1 January 2017
WIPO has announced a revision of the International Patent Classification (IPC)
scheme that will enter into force on 1 January 2017.
The full details of the changes to
the classification symbols are available
via a new publication platform
(IPCPUB 7) on WIPO's website:
web2.wipo.int/classifications/ipc/
ipcpub7/?version=20170101
This platform also includes the
former IPC2016.01 version.
Earlier IPC versions (prior to 2016.01)
are currently still on the old platform
IPCPUB. 1 That will, however, be
discontinued and WIPO will migrate
the older IPC versions as searchable
PDF files to the new IPCPUB platform.
For information on the revisions
made, go to the page for the 2017
version of the IPC and click the
Compilation tab (the French version
can be selected in the left-hand
column).
The changes are shown here in
tabular format, using the following
codes:
D – deletion
C – modification with a change of
scope, i.e. involving reclassification
M – modification without a change
N – new
of scope, i.e. not involving
reclassification
U – unchanged in this language
version, but changed in the
other language version of the
IPC
IPC subclasses/main groups that have been the object
of substantive modifications
Symbol
A01K 61/00 – 63/00
A21D 13/00
A47B 88/00
A61C 5/00
A61C 13/00
A61K 8/00
A61K 47/00
B01J
B29C 64/00 to 67/00
B31
B60Q 3/00
B64F 5/00
B65D 88/00
C01B 31/00 to 32/00
D06L
E05B 65/00
E05F 5/00
G07T 7/00
H01L 27/00
H04B 7/00
The table shows IPC subclasses/
main groups that have been the
object of substantive modifications.
Some additional changes (not in the
table) fall into the "M" category and
only involve a clarification to the
title of the entries.
As from 1 January 2017, the EPO
will start publishing documents
classified under the new version of
the IPC. For the documents in the
Subject-matter concerned by the changes
Culture of aquatic animals
Finished or partly finished bakery products
Drawers for tables, cabinets or furniture
Filling or capping of teeth
Dental prostheses
Cosmetics or similar toilet preparations
Medicinal preparations characterised by the
non-active ingredients used
Chemical or physical processes
Additive manufacturing (e.g. 3D printing);
shaping techniques
Making articles of paper, cardboard, etc
Arrangements of lighting devices
for vehicle interiors
Designing, manufacturing, assembling,
cleaning, maintaining or repairing aircraft
Large containers
Carbon compounds
Dry-cleaning, washing or bleaching
Locks for special use
Braking devices, e.g. buffers
Image analysis
Devices consisting of a plurality of semiconductor
or other solid-state components
formed in or on a common substrate
Radio transmission systems
backfile affected by these changes,
a gradual reclassification will take
place. Users may wish to supplement
their IPC search with a further
search using the symbols from the
previous version. Together with the
USPTO, the EPO will also endeavour
to bring the CPC scheme into line
with the new IPC in the first few
months of 2017.
1) Source: p-d-g.org/portal/fep/en/dt.jsp
2) Source: www.piug.org/who_is_PIUG
1) web2.wipo.int/classifications/ipc/ipcpub
Patent Information News 4 | 2016 December 2016 9

PATENT ANALYSIS
White spot analysis
Yvonne Wich from Fraunhofer IAO has been performing research into tools capable
of extracting more detailed information from patents on problems and solutions to
identify attractive gaps, known as "white spots", in the patent landscape.
Ms Wich was scheduled to give a
presentation on white spot analysis
at the EPO Patent Information
Conference, but was forced to cancel
her trip at the last minute. This
article takes a look at the main
findings of Yvonne Wich's talk that
never was.
Patent data is well-used in the
development and implementation
of technology strategies, but Ms
Wich wanted to find out whether it
could systematically function as a
source of inspiration in technology
planning processes.
This work, which is very much in line
with the EPO's mission to foster
innovation in Europe, starts with the
assumption that patent information
is not only a rich source of ideas.
Indeed, a lack of data in certain
areas can also tell us something
meaningful. This lack of data may
indicate that the technical field
concerned is of little interest, or it
can indicate a white spot, an area of
opportunity.
attractive. Free online search tools
provide ways of finding the most
important applicants in a given field
as well as classification codes that
describe in more detail the technological
content. This, however, is
generally not enough for a reliable
white spot analysis. Here, modern
text-mining tools can overcome, at
least partly, the limitations of the
traditional structured analysis of the
technical content of patents. These
tools are capable of producing
patent maps that highlight similarities
between documents, analysing
and labelling the topics covered
and grouping similar documents
together.
Some commercially available tools
go further. Ms Wich has, for ex -
ample, taken a close look at the
"semantic lenses" developed by
Fraunhofer IAO white spot analysis
Patent
search
Content
extraction
(text mining)
Indentification
of
white spots
Invention Machine Goldfire. These
analyse subject-action-object
principles in patent documents
and then propose concepts familiar
to them. By way of illustration,
Ms Wich shows in her presentation
how the inbuilt knowledge base
links to known solutions, one
example being the use of oil
additives as corrosion inhibitors.
Another product that Ms Wich has
studied is Luxid Annotation Factory.
Fraunhofer IAO adapted this tool
jointly with Temis and developed
the Patent Skill Cartridge to tag,
analyse and enrich any given patent
data set. It extracts problems and
solutions and creates rich metadata
on the relationship between them.
Users may decide later whether or
not the automatically extracted
solutions fit the given problem.
Technical
Market-based
Assessment of the white spots
Fraunhofer's white spot analysis
gathers this information in a
problem-solution matrix indicating
how existing problems are ad -
dressed in the state of the art and
more importantly which white
spots can be identified for future
inventions.
In a further step, economic evaluation
criteria such as the market-
related and the institution-oriented
capabilities of the potential white
spots are assessed in greater detail
to distil the most promising ideas
for new products and methods.
Ms Wich's presentation is available
on the EPO website at www.epo.
org/pi-conference. She has also published
a paper on the same subject,
available online (in German). 1
Company
related
Ranking
of the
white spots
The question is how to distil this
information from the huge databases,
and then how to identify
which white spots are economically
Search &
selection
Idea generation
Analysis of white spot map
Assessment and ranking
Extractions
of problems and
solutions
Problems
Solutions
S1 S2 S3
P1 Patent A
*
* *
P2 Patent D Patent D Patent E
P3 Patent C
New (not patented) combinations of
problems and solutions ➞ white spots?
*
Patent C, D
1) http://wiki.iao.fraunhofer.de/index.php/IT-gest%C3%BCtzte_White-Spot-Analyse
10 Patent Information News 4 | 2016 December 2016

EUROPEAN PATENT REGISTER
More improvements to the European Patent Register in 2016
The European Patent Register is constantly being improved, with new
features and enhancements for users coming out regularly. See, for
example, the article on page 3, reporting on Spain joining the Federated
Register service. The deep-linking service has also been extended to a new
member: the Former Yugoslav Republic of Macedonia.
A new release of the European Patent Register issued in November 2016
included the following improvements:
Extension of the Global Dossier service
In addition to the IP5 patent offices (China, Japan, Korea, the US and the
EPO), the Global Dossier service is now gradually encompassing patent
authorities that participate in the WIPO CASE initiative, starting with patent
applications filed at the Canadian Intellectual Property Office (CIPO) and at
WIPO. The service gives users direct "on-the-fly" access to the entire public
part of the patent file (also known as the file wrapper) for each patent
application in the system.
Date on which responsibility passes to the examining division
Within the framework of the "Programme for accelerated prosecution of
European patent applications" (PACE), the date on which responsibility for
an application passes to the examining division will now be notified via the
European Patent Register. This will help users when requesting accelerated
examination. 1 Users can find this information in the EP About this file panel
view - in the Examination procedure section - and in the EP Event history
panel view of the European Patent Register.
More details about the improvements included in this new release are
Status history is now available
In addition to the current status of a patent application, the European
Patent Register now displays the status history in the About this file panel
view; just click the Show history button. The status history is only available
for new events from 28 november 16 onwards.
available in the release notes. 2
1) See Rule 10 EPC and Guidelines for Examination in the EPO, C-II, 1.
2) www.epo.org/searching-for-patents/legal/register/archive/release-notes-november-2016.html
PUBLICATIONS CORNER
"Publications corner" presents the latest statistics on EPO publications.
European patent publications
■ EP-A1: European patent applications published with search report
January – December 2016
■ EP-A2: European patent applications published without search report
Weekly
Total
Change
■ EP-A3: European search reports
average 2016
Jan–Dect. 2016
vs. 2015
■ EP-B1: European patent specifications
■ EP-B2: revised European patent specifications
Note: The table does not include statistics on European patent applications
EP-A documents
EP-A1
EP-A2
Total EP-A1 + A2
1 300
88
1 388
67 603
4 575
72 178
9.5%
–36.6%
4.7%
filed via the PCT route (Euro-PCT applications). These are published by WIPO
and are not made available by the EPO unless they are in a language other
Percentage EP-A1 of total A1+A2
EP-A3
225
93.7%
11 689
–25.3%
than English, French or German. Currently about 60% of all European patent
applications are Euro-PCT filings.
EP-B documents
EP-B1+B2
1 866
97 046
42.7%
Patent Information News 4 | 2016 December 2016 11

-
basf (badische anilin & soda… -
beiersdorf -
caltech (california institut… -
cnrs (centre national de la… -
harvard university -
henkel -
immunomedics -
l'oreal -
mit (massachusetts institut… -
northwestern university -
p&g (procter & gamble comp… -
pfizer -
philips electronics -
rhodia -
rohm & haas company -
schering corporation -
selecta biosciences -
unilever -
university of california -
university of texas system -
-
1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012
Date of priority
Figure 1: Graph visualising filing behaviour over time of top applicants in the nano-biotechnology/nano-medicine sector,
1995-2012. The graph was produced using PATSTAT Online’s built-in charts.
continued on page 2 >
PUBLICATIONS
One hundred issues of Patent Information News
For 25 years, Patent Information News has been reporting on developments in
patent data and patent search tools from the EPO and around the world.
The current edition of Patent Information News is the 100th.
Patent Information News has
reported on all the landmark events
in European patent information.
Espacenet, the revision of the IPC,
the creation of the Cooperative
Patent Classification, Patent Translate,
legal status data from China,
Japan and Korea, Global Dossier – it
was in Patent Information News
that many readers first learnt of
these developments.
1991 1998 2006
The Patent Information News
editorial team: Katharina Maes and
Daniel Shalloe
In addition to major news, the
publication has also kept patent
searchers up to date on new data
arriving in the EPO's databases, on
product releases and on general
developments in Asia, Europe and
elsewhere. Frequently, it was the
only publication that covered this
type of background information,
which is so vital for experts in
patent information.
from around the patent world that
might affect a patent searcher's
work, or providing an in-depth look
at a particular aspect. We believe
that Patent Information News is
unique in the material it covers, and
in its style."
Originally called "EPIDOS News", the
publication changed its name to
"Patent Information News" in 2006.
It was initially only in English, but
switched to three languages in
1998. The preparation of three
versions rather than one means a
lot more work for the editorial team,
and for the translators, but the
statistics show that it is well worthwhile.
About 50% of readers prefer
the English version, 35% the German
and 15% the French version.
In line with modern technological
trends, the Office stopped the print
version of Patent Information News
at the end of 2015. It is now available
online as a PDF file. Its 4 500
subscribers receive an e-mail alert
with a link to the latest issue the
day it appears.
Issue 4 | 2015
c O n T enT
2 Search for patents on your mobile
3 e ditorial
3 e PO pilots the publication of its
search strategies
4 Finding related patents in
espacenet
5 e xaminer's advice: make a
search table!
6 Wide-ranging topics featured
at the ePO Patent Information
conference
8 Full-text searching and secure
access for espacenet
9 The power of IP statistics
10 Over 20 million citations added
to the ePO's citation database
10 Search reports: when is an
X document not an X document?
11 changes to the IPc as from
1 January 2016
12 Patent information seminars
and webinars 2016
13 2015 ends with more improvements
to the european Patent
Register
14 news from Asia
14 Publications corner
15 c hanges to data from china
15 India: new test data in
ePO’s databases
15 Authority file – the place to go
if you have a patent number
and nothing else
16 Other news
2015
Patent Information News
Applicant (EEE-PPAT)
PATSTAT Online: a new member
of the patent information services
for experts family
PATSTAT Online is a new, web-based interface that enables you to run
queries in PATSTAT, the EPO's statistical database for patents, and perform
statistical analyses. You can use PATSTAT Online to create visualisations of your
analysis results (see Figure 1) and download result sets for offline use.
PATSTAT Online is the latest
they allow you to query bibliographic
and legal status databases, management system and then
upload the data to a local database
addition to the patent information
services for experts family of
download result sets and visualise manage it.
products. Developed over the last data.
few years, the patent information
A unique source of data for
services for experts are a suite of Tools currently available under the sophistic ated patent statistics, the
web-based tools that give access to PISE label include European patent databases of the PATSTAT product
bibliographical and legal status applications and specifications, line have become a standard in the
patent data for advanced patent European Patent Bulletin and Global field of patent intelligence and statistics.
They provide value-added
searches and patent intelligence. Patent Index (see Table 1).
You can use these tools via a central
bibliographic patent data of nearly
entry portal at www.epo.org/pise. Unlike the PATSTAT product line in 100 million patent documents from
With their common look and feel, raw data format, PATSTAT Online more than 90 patent authorities
allows you to access the PATSTAT worldwide. They also cover legal
databases without having first to
Patent Information News 4 | 2015 December 2015 1
"Patent Information News has
always been an important channel
for promoting the EPO's patent
information products and services,"
says editor Daniel Shalloe, "but it is
much more than that. We aim to go
broader and deeper than most
product newsletters, giving news
How to subscribe for e-mail alerts
when a new issue is published
– Go to the EPO's publications page
at www.epo.org/publications.
– Scroll down until you see Patent
Information News.
– Click subscription form and
follow the instructions on the
screen.
12 Patent Information News 4 | 2016 December 2016

PATENT INFORMATION FROM ASIA
News from Asia
China: SIPO has relaunched its Patent Search and Analysis platform
SIPO has launched a new version of the Chinese language interface of its
Patent Search and Analysis platform, providing searches in Chinese IP rights
from 1985 onwards. Aimed mainly at domestic users, it includes patent
documents from various other jurisdictions worldwide. Free registration
and login are necessary for most features, including display and download
of Chinese full-text and original documents (PDF versions), citations and
family members.
Various functionalities have been added or improved, such as a customisable
search interface, direct links to cited references and a cross-lingual
retrieval option between various languages. Users can search legal status
information with publication numbers. In the older version, this was only
possible with application numbers. In addition, the platform offers a
separate search interface for medical patents, various dictionaries and
analysis tools. The interfaces in English and other languages have also
been revised. The changes mainly comprise a system upgrade and a more
user-friendly interface, but no significant new features.
Users can access this tool free of charge via PIPC's K-PEG service (Korean
Patent Evaluation and Grading). It is only available in Korean, so the EPO's
Asian Information Services have created a new search guide explaining how
to use this service without knowing the language. This search guide is
available in the Searching in databases - Korea section. 4
List of all patents in IPC
section C that lapsed
during the period
from 17 November to
1 December 2016. You
can export the list to
Excel.
To reflect these recent changes, the EPO's Asian Information Services have
updated the step-by-step search guides in its Searching in databases –
China section to include instructions for using the Chinese and English
interfaces of this database. 1
Japan: JPO publishes white book on patent information policy
The JPO has published a white book on its patent information policy (in
Japanese). This study is based on the result of a comprehensive survey of
Japanese patent information users. It concludes that given the dramatic
increase in patent data due to growing application numbers it has become
even more important to ensure access to correct data, especially for SMEs
and research institutions. Services should provide reliable, high-quality
and quick search results. Another issue of growing importance is data
protection, one example being the problem of how to deal with the publication
of applicant addresses.
Japan: Vietnamese and Thai data available on the JPO's FOPISER platform
Since 10 May 2016 the JPO has been providing data from Vietnam and
Thailand on its FOPISER (Foreign Patent Information Service) data platform.
Bibliographic data from these countries can be searched with IPC classes
and English keywords, via a Japanese interface. Trade marks are available
via number searches using either the application or registration number.
Korea: tool for monitoring lapsed and expired Korean patents
The Patent Information Promotion Center (PIPC) has implemented a tool
for monitoring lapses of Korean patents and utility models. It allows users
to specify a time range and IPC section and provides a list of all patents and
utility models that lapsed in the selected time period and technical field.
It covers lapses due to non-payment of annual fees and those due to the
expiry of the patent/utility model term.
India: Indian Patent Office launches new website
In September 2016, the Indian Patent Office launched a new website. As a
result, InPASS – the official patent database of the Indian Patent Office –
has a new search mask that requires you to enter a CAPTCHA code before
running the search. The result list displays only the application number and
date, title and status.
Thailand: comprehensive amendment to the Trademark Act
Thailand implemented a revision to its Trademark Act on 28 July 2016,
aimed at bringing Thailand's trade mark legislation into line with international
standards. Some of the most important provisions are as follows:
– introduction of sound marks, three-dimensional marks and shape marks
– possibility to file trade marks in multiple classes (previously only
single-class filings possible)
– increased time period for paying registration fees (from 30 to 60 days)
– introduction of a grace period for renewals: renewal possible within six
months of the expiry date against a 20% surcharge
For more news from Asia, see the Updates section on the EPO website at
www.epo.org/asia.
1) www.epo.org/searching-for-patents/helpful-resources/asian/china/search.html
2) www.jpo.go.jp/shiryou/toushin/toushintou/jouhou_fukyu_160520_katsuyou.htm
3) www.foreignsearch.jpo.go.jp/
4) www.epo.org/searching-for-patents/helpful-resources/asian/korea/search.html
Patent Information News 4 | 2016 December 2016 13

KOREA
Comprehensive patent law change in early 2017:
the return of the post-grant opposition system
The most recent amendment of the Korean Patent Act deserves special attention
as it contains a number of significant changes to Korea's patent pro cedures.
The amended Korean Patent Act will
enter into force on 1 March 2017 and
includes the following provisions:
– reduction of the period for filing
the examination request from five
to three years from the filing date
– introduction of an "ex officio
re-examination system": if the
examiner discovers a reason for
refusal even after taking a decision
to grant, he may still revoke
his original decision and start a
re-examination of the application
ex officio as long as the applicant
has not yet paid the first annual
fees
utility models granted from 1 March
2017 onwards.
Why did Korea re-introduce
opposition?
The new opposition system will
provide an additional way for third
parties to challenge a weak patent.
Currently, Korean patent law provides
the following two procedures
to tackle applications or granted
rights:
– third-party observations against
pending applications: these may
be submitted at any time from the
publication of the application until
the final decision
– request for invalidation: anyone
may file a request within three
months from the publication of
the granted patent; interested
parties may file at any time.
According to a publication by the
Korean Patent Office (KIPO), the two
procedures no longer suffice. Due to
the very short patent pendency
period of only ten months from
examination request to the first
office action, no less than 40% of
all patents are granted before the
application has been laid open to
the public. In these cases, third parties
first learn about the application
when it is granted and have no
opportunity to weigh in during the
examination procedure by submitting
third-party observations.
Furthermore, invalidation procedures
are comparatively expensive
and complex, which might
discourage third parties from
making use of them more often. 1
The differences between
the new opposition procedure
and invalidation trials
The new post-grant opposition
system will not replace the invalidation
procedure. As in Japan, both
systems will exist side by side. However,
only interested parties will be
allowed to request invalidation
– new regulations for misappropriated
applications: if a patent is
granted to a patentee who is not
the rightful owner, a party claiming
ownership rights may simply
request to transfer the right from
the registered patentee (currently,
the party has to request invalidation
and file a new application).
The most notable change, however,
is the re-introduction of the postgrant
opposition system. This procedure
existed in the past before it
was abolished in 2007. With this
revision Korea is following in the
footsteps of Japan, where postgrant
opposition was abolished in
2003 and re-introduced in April
2015. In Korea, the new opposition
system will apply to all patents and
Differences between opposition and invalidation procedures in Korea
Court of first instance
Entitled to file
Filing period
Procedure
Grounds
Methods
Possibility to file corrections
Possibility to file appeal at Patent
Court (court of second instance)
Costs
Post-grant opposition
Any person
Six months from publication of
granted patent
Ex-parte (only KIPO vs patentee;
after filing opposition request, the
petitioner has no influence on the
procedure)
Only lack of novelty or inventive
step
Documentary proceedings
Only once
Not possible for petitioner
Low (both for attorney and official
fees)
Invalidation trial
KIPO's Intellectual Property Trial and Appeal Board
Interested person
Any time
Inter-parte (petitioner disputes
with patentee)
All grounds for invalidation (e.g.
lack of novelty/inventive step;
insufficiency of description/
claims; amendments beyond
original disclosure)
Principle of oral proceedings
Unlimited
Permitted for both parties
High (both for attorney and
official fees)
14 Patent Information News 4 | 2016 December 2016

trials. As the table shows, there are
a number of differences between
the two procedures. 2
shots). This overview will also
include opposition trials from March
2017 onwards.
Searching information
on opposition cases
According to a recent publication,
KIPO reckons with between 500
and 1 000 requests for opposition a
year. Thus, when monitoring a competitor's
patent, it will be even more
important to keep a close eye on
events after grant, in particular
during the above-mentioned sixmonth
opposition period.
Users can retrieve legal status data
on Korean opposition procedures
both in Espacenet and in the KIPRIS
search system. Please note that no
opposition data is available in
Global Dossier, as this service only
includes information up to grant or
the decision of rejection.
In KIPRIS, most legal status data is
updated every day. To access this
information, select a document in
the result list. You will then proceed
to an overview showing detailed
information about the selected
patent. Here, click the Judgement
tab for a list of all trial procedures
related to this patent (see screen-
For all pending procedures, the list
includes only the trial number, the
indication of the event (refers to the
type of trial, e.g. invalidation trial,
appeal against rejection, etc.) and
the requisition date (date on which
trial was requested).
If a trial has already been held, the
list includes not only the requisition
date but also the trial date, i.e. the
date on which the decision was
taken. In addition, the trial number
appears in bold in the first column
and links to a separate window
showing detailed information about
the trial, the decision and a chronological
overview of all important
events related to the procedure (see
screenshots).
Help in searching for Korean
opposition data
The EPO's Asian patent information
team in Vienna provides various
tools and services to help you in
your daily work with Korean patent
information.
Example of a trial for invalidation: in the Trial List (screenshot left), copy and paste
the Korean entry under Indication of event into a machine translation tool to
get an idea about the type of trial (here: invalidation). Click the trial number for
detailed information ("Details") and a chronology of events ("Trial History")
related to the trial.
The team has written a series of
search guides that explain step-bystep
how to retrieve the data you
are interested in, including information
on trial proceedings. The search
guides also include English translations
of KIPRIS items that are currently
only available in Korean. You
can find these search guides in the
Searching in databases – Korea
section on the EPO website. 4
When monitoring a granted patent,
it makes sense to check the legal
status regularly throughout the
opposition period. If you do not
want to run these regular searches
yourself, you can ask the EPO to
perform legal status watches on
your behalf. You will then receive
updates on the legal status at the
frequency you choose (monthly/
quarterly/half-yearly, etc.). You can
find more information on this
service under Searching Asian documents
on the EPO website. 5
Free webinar on Korean and
Japanese patent law changes
For a detailed overview of patent
law changes in Korea and Japan,
join the free webinar on 14 February
2017 at 13.30-15.00 hrs CET.
For more information visit www.
epo.org/learning-events/events/
search/details.html?id=13422.
1) Korean Intellectual Property Office (KIPO): "특허법, 실용신안법 일부개정법률 설명자료"
(Explaining material about the partial revision of the Patent Act and Utility Model Act), February 2016,
pp. 3-8, available at www.kipo.go.kr/kpo/user.tdf?a=user.ip_info.adv_law.BoardApp&board_id=adv_
law&catmenu=m04_01_03
2) Ibid, p. 23
3) ibid, p. 4
4) http://www.epo.org/searching-for-patents/helpful-resources/asian/korea/search.html
5) http://www.epo.org/searching-for-patents/technical/asian-search-monitoring.html
Patent Information News 4 | 2016 December 2016 15

OTHER NEWS
Contact us!
www.epo.org/forums
Patent Information Helpdesk
patentinformation@epo.org
Asian patent information
asiainfo@epo.org
Training
pitraining@epo.org
Save the date!
As the year comes to a close, now's
the time to block your calendar for
some important events taking place
in the field of patent information in
2017. See the table.
Important patent information events in 2017
31 Jan Vienna, Austria Patent information from Latin America
www.epo.org/latin-america-day
29 – 31 March Munich, Germany Search Matters
www.epo.org/search-matters
6 – 7 April Vienna, Austria East meets West
www.epo.org/emw
3 – 4 May Munich, Germany PATLIB2017
by invitation only
7 – 9 Nov Sofia, Bulgaria EPO Patent Information Conference
www.epo.org/pi-conference
Sales & Distribution Customer
Service Centre (CSC)
csc@epo.org
EPO Customer Services are open
for your enquiries on all matters
relating to European patents:
Tel.: 00 800 80 20 20 20*
(Monday to Friday,
08.00-18.00 hrs CET)
www.epo.org/contact
*or +49 89 2399-4500 from
countries where the freephone
number is not available
New! Online course on
patent searching
For over twelve years, the EPO's
Seminar on Patent Searching
has been a great way for patent
informa tion newcomers to get
started. As from March 2017, the
seminar will be available online.
Until now, the seminar has taken
the form of a four-day course at the
EPO. The new online version will
allow more people to participate –
and without the need to travel. It
will be available as a four-module
course spread over two weeks. Each
module will be broadcast as a live
90-minute session, with opportunities
for interaction with the trainers
and the other students.
The first of the new courses will take
place between 21 and 31 March 2017.
For more information see
www.epo.org/sps.
IP5 Statistics Report 2015 Edition
PUBLICATION INFORMATION
Publisher: Richard Flammer
Editors: D. Shalloe, K. Maes
Contributors: R. Feinäugle,
L. McDonald-Maier, J. Mühl,
Y. Sánchez García, J. Schaaf,
I. Schellner, D. Shalloe
Design: Atelier 59
Patent Information News is
published by the
Principal Directorate
Patent Information and
European Patent Academy,
European Patent Office
Rennweg 12
1030 Vienna, Austria
Tel.: +43 1 52126 0
Having published a limited selection
of key IP5 statistical indicators in
March 2016, the IP5 offices have just
released final figures for 2015 in the
full IP5 Statistics Report.
The IP5 Statistics Report highlights
filing trends in 2015, gives a description
of worldwide patenting activ-
ities and explains operations and
developments at the IP5 offices.
The IP5 Statistics Report 2015 Edition
is available for download at www.
fiveipoffices.org/statistics.html.
The opinions expressed in this
publication are not necessarily those
of the EPO.
Espacenet and INPADOC
are registered trade marks.
ISSN 1024-6673
www.epo.org
16 Patent Information News 4 | 2016 December 2016