Comprehensive prior art searches can be time-consuming, but in the current competitive IP environment, even the most experienced IP prosecutors cannot afford to skip or cut corners.
The increasingly global economy also means that thorough patent research does not stop at the border of whichever country the inventor happens to be in. The need for thorough, accurate and efficient international patent research tools has never been greater.
One aspect of international patent searching that traditionally has been time-consuming and inefficient is deciphering the legal status of a patent or application across the world’s various patent authorities. However, new efforts to offer harmonized legal status data from various authorities, including the EPO and WIPO, are addressing this issue.
Speaking Your Language
International prior art searches would be painstaking enough even if the information within all patent authorities was available in English. Of course, it is not.
Discovering that a patent’s legal status is “Zverejnene ziadosti o udelenie dodatkoveho ochranneho osvedcenia” probably doesn’t offer much insight, unless one happens to be fluent in Slovak. This particular European Patent Office status indicates that the assignee has filed for a supplementary protection certificate (SPC), which would extend its EPO-protected exclusivity for up to 5 ½ more years.
In INPADOC, the database of international patent legal status information maintained by the EPO, this status and its English translation are both listed under the code “SK SPCF.” This is helpful for overcoming the language barrier but does not address what is perhaps a larger problem: many other valid EPO legal status codes mean essentially the same thing, that the IP owner is seeking supplemental coverage for the patent in question.
Standardizing Legal Status Codes
Discovering the legal status of patents or applications in other patent authorities around the globe has, in the past, been something of a challenge.
Patent researchers had to go into each authority they wanted to search and locate the legal status code relevant to their search parameters. That data was not always easy to find, and for those who do not speak the language of that particular patent authority, it was particularly difficult. Finding each authority’s legal status code list and adding the relevant codes to the search parameters was cumbersome and vulnerable to human error.
For example, if the patent data search discussed above required reviewing the SPC status of possible prior art, each of the different status codes that indicated that the IP owner was seeking supplemental patent protection would need to be identified and included in the search. This was extremely time and labor-intensive, even by the standards of typical prior art searches. The potential for costly human error during such a repetitive, detail-oriented task also is high.
New enhancements to today’s patent data intelligence tools have eliminated this kind of labor-intensive, error-prone search approach. LexisNexis® TotalPatent®, for example, now features standardized legal status for major events in the lifecycle of a patent or application. More than 4,000 legal status codes, culled from various patent authorities around the world, including USPTO, EPO and WIPO, have been harmonized.
That means international patent researchers no longer need to know or be able to locate all the relevant codes for a particular legal status that might shape a prior art search. Now, searchers only need to know what they are looking for. In the case of the example above, that would be any existing patent that meets the other search criteria and is currently in the process of applying for SPC protection.
The standardization of legal status does not eliminate all effort from an international patent search, of course, but it does make those searches a little less tedious—and a lot less prone to errors or oversights.