A comparison of early publication practicesin the United States and Europe

Stephen Adams *

Magister Ltd., Crown House, 231 Kings Road, Reading RG1 4LS, UK

Abstract

Early publication practices in the USA under the American Inventors Protection Act and in Europe under various national laws

and under the European Patent Convention are compared and contrasted. A brief survey of the historical development of early

publication practices in Europe sets the scene. Particular topics covered then include non-published applications, rapid publication,

search reports, bibliographic data such as assignee details and microbiological deposits, substantive examination requests, and the

scope of subsequently granted patents. The author concludes that there are many substantial and significant differences between

the two regions, and that patent searchers and database producers need to be very much aware of these differences and to monitor

the anticipated future changes to US practice.

� 2003 Elsevier Science Ltd. All rights reserved.

1. Introduction

The introduction of the early publication provisions

of the American Inventors� Protection Act (AIPA) of1999 led to the first unexamined United States patent

applications being laid open in March 2001. This paper

compares the practice in the United States with the well-

established equivalent procedures in Europe, with spe-

cial reference to the implications for patent information

specialists and database producers.

Specific areas discussed include provisions for non-

publication or accelerated publication, search reports,the level of disclosure at 18 months, substantive exam-

ination procedures and the scope of the granted patents

arising from the new procedure.

2. Background to deferred examination

Before considering the provisions and operation of

the AIPA, it is appropriate to review how the system of

deferred examination started. This practice is well es-

tablished in most industrialised countries, and it pro-

vides the context in which the majority of patentinformation specialists operate.

Up to the early 1960s, many national patent offices

operated a strict examination based on national novelty,

and published their patents only once, at grant. Many

offices were accumulating extensive backlogs of work,and at one point, it was estimated that Japan was

dealing with some 750,000 pending cases. It was not

uncommon for long delays in prosecution; one of the

strictest regimes, the Netherlands, could take up to 10

years to grant. Since many countries also counted their

patent term from the date of grant, this led to increasing

anomalies in patent term, with some members of a pa-

tent family expiring long after those which had beenexamined and granted rapidly.

For both the information specialist and the applicant,

the single-publication regime had certain drawbacks.

For the former, the principal problem was that there

was no publication until grant, and consequently no

early warning of conflicting applications. This tended to

reduce the effectiveness of patent documents as current

awareness tools. Furthermore, it was much more diffi-cult to predict systematically the geographic extent of

protection––patent family members were published

individually over a much extended period. For the ap-

plicant, perhaps the principal problem of single-publi-

cation was financial; with all fees payable up front, and

no refund in the event of refusal to grant, filing a patent

application was more of a gamble, especially with

marginal inventions.

*Tel.: +44-1189-299515; fax: +44-1189-299516.

E-mail address: stevea@magister.co.uk (S. Adams).

0172-2190/03/$ - see front matter � 2003 Elsevier Science Ltd. All rights reserved.

doi:10.1016/S0172-2190(03)00031-0

World Patent Information 25 (2003) 117–122

www.elsevier.com/locate/worpatin

The novel methodology of deferred examination was

first adopted by the Netherlands in 1964. The intention

of the system was to allow the applicant a statutory

period between filing and examination, during whichthey would be allowed to withdraw with little or no

penalty. The hope was that this opportunity for �secondthoughts� would eliminate marginal inventions by early

voluntary withdrawal, either because the applicant had

lost interest or because the search report cast doubt on

the likelihood of grant. This would allow examiners to

concentrate on those cases where the applicant had a

serious commercial interest in obtaining a grant, asshown by their willingness to pay the higher fees for

substantive examination. Under the system, there would

be no search or examination unless the applicant spe-

cifically requested it. They could, if desired, request the

search only. Either search or substantive examination

could be deferred for up to 7 years. In return for these

advantageous terms, the applicant would have to accept

that their application as filed would be laid open topublic inspection (OPI) at 18 months from priority.

Similar laws were enacted in Germany in 1968 and in

Japan in 1970.

Later systems varied slightly, such as in the United

Kingdom and under the European Patent Convention.

Instead of allowing deferment of both steps for the

maximum period, it became necessary to request at least

a search within 12 months of the priority date, or theapplication was deemed withdrawn. When published at

18 months, the application would ideally be accompa-

nied by the search report, but if the latter was not ready,

the application alone would publish. A further change

was to require that substantive examination should be

requested within a fixed period after publication of the

search report––again, failure to do so would result in the

application being deemed withdrawn.Statistics published at the time suggest that deferred

examination was successful in reducing the workload on

examiners. Five years after the Dutch law was brought

in, it was estimated that 40% of applications filed had

not received a search request, and a further 21% had not

filed a request for substantive examination [1]. This

meant that only 39% of the applications lodged under

the new law had proceeded to substantive examination.In Germany by 1971, the corresponding figures were

approximately 35% and 15%, leading to a 50% reduction

in examination requests [2]. However, the early years of

the European Patent Office indicate that by 1981, only

15% of cases failed to request a search, and a further

13% dropped out before requesting examination, leaving

72% to go forward to the next stage [3]. Even at the time,

there was some suggestion that the Netherlands, bybeing the first country to adopt the system, had achieved

the greatest benefit, at least in the short term [4]. The

United Kingdom adopted deferred examination from

1978, simultaneously with the start of the European

Patent Office (EPO), and it seems likely that the opening

of a financially attractive regional patent office distorted

the effects of the national law change; the Annual Re-

port for 1980 of the United Kingdom Patent Officenoted [5] ‘‘inspection of samples indicates that over 90

percent of searched cases proceed to examination, a

higher percentage than either was foreseen or is the ex-

perience in the European Patent Office.’’

Even allowing for the variable degree of ‘‘success’’ of

the system, as measured by the reduction in examiner

workload, the adoption of deferred examination by

many countries established a new regime for the infor-mation specialist. For the first time, it became possible

to monitor applications en route to grant, and by using

their knowledge of the legal procedures, to anticipate

events. As data accumulated, legal status information

became a more useful source of commercial intelligence.

In most countries of the world, the basic principles of

deferred examination are now established. It is generally

accepted that all national patent applications will bepublished unless specifically withdrawn by the appli-

cant, or under other exceptional circumstances such as

non-compliance with formal filing requirements. Many

countries allow for ex parte comments after publication

of the search report, to draw the examiner�s attention to

additional prior art which does not feature in the official

search [6]. The prior art search and substantive exam-

ination are sequential processes, with a positive decisionrequired from the applicant in order to proceed from

one stage to the next.

3. The practice in the United States

One of the first and most obvious differences between

Europe and the United States, is that the US system has

split the two main elements of publication and exam-

ination. The AIPA provides only for early publication,

and essentially no changes have been made to the ex-

amination procedure. The two steps, strictly sequential

in Europe, proceed in parallel in the US. The new USlaw is in effect a hybrid. The part of the US Patent and

Trademark Office (USPTO) responsible for early pub-

lication operates independently of the examination

corps. If the latter complete their work in less than 18

months, it is quite conceivable that a case will be ready

to grant before it publishes unexamined. It would seem

sense under these circumstances to extract the corre-

sponding US-A from the publication schedule. How-ever, there seems to be no such provision in the Office�spractice, and it has been observed elsewhere [7] that

many instances have already occurred where US granted

patents (US-B1) have preceded their unexamined

equivalents (US-A1) by days, weeks or in extreme cases,

by several months. This seems to be an unnecessary and

unhelpful duplication of work by the USPTO and does

118 S. Adams / World Patent Information 25 (2003) 117–122

not help information providers to prepare good data-

bases. At the time of writing, it is believed that the

USPTO has implemented a new practice, to withdraw

an early publication if the corresponding grant occursmore than 30 days before the scheduled publication date

of the application. No further information is available.

The following sections consider a number of further

specific elements in the early publication procedures of

the United States, and compare them with the corre-

sponding practices in Europe, principally those of the

EPO.

4. Non-published cases

In both the UK and the EPO, all applications which

comply with the initial filing requirements and are notexpressly withdrawn or refused prior to completion of

the technical requirements for publication will be pub-

lished at 18 months. Using older publication systems

such as typesetting, there could be a considerable period

between completion of the technical requirements and

the nominal 18 month point. At least one applicant fell

foul of the system in the early days of the UK law.

Hitachi made a Convention application at the UK Pa-tent Office in December 1978 and were notified by mid-

May 1979 that technical preparations for publication

were completed, and that their application was due to

publish in approximately 8 weeks time, in mid-August.

In early July, they attempted to withdraw the case in

order to prevent publication, but this was denied both in

the Patent Office and at the subsequent Patent Appeals

Tribunal hearing. The case duly published [8].Under the new US system, it is not guaranteed that

an application will publish at all. The law at present

includes an ‘‘opt-out’’ procedure, under which the ap-

plicant can ensure that their US application will not

publish. To obtain this concession, the applicant needs

to certify that ‘‘the invention disclosed . . . has not and

will not be the subject of an application filed in another

country. . . that requires publication . . . 18-months afterfiling.’’ [9]. The intention of this provision seems to be to

provide reassurance for the smaller inventor, filing only

in the United States, and to mimic the regime of confi-

dentiality-until-grant which was possible under the old

law. This was controversial, and at the time of writing

there is a proposal in the 21st Century Strategic Plan of

the USPTO to amend the law to eliminate this provision

[10]. In the meantime, the effect of the law in terms ofinformation practice is to ensure that the majority of US

patent applications published at 18 months will have at

least one other family member, typically published

around the same time by a separate publishing authority

or another country.

However, the wording of this opt-out clause is sig-

nificant. To quote the Q&A section on the AIPA, from

the USPTO website––‘‘The trigger in the statute is not

the publication, but rather the trigger is the act of filing in

a foreign country that requires publication, or under in-

ternational agreement that requires publication.’’ (Ref.[11], question CQ3). In other words, the ruling is that if

a US applicant made an application (e.g.) under the

PCT based upon a US priority filing, but withdrew the

PCT application before the WO pamphlet published,

they would nonetheless have forfeited their ability to

certify non-filing outside the US, and their priority ap-

plication would publish in the US at 18 months. The

information consequence is that there may be a smallnumber of US-A1 documents which have no foreign

published equivalents, not because the applicant has

failed to invoke the entitlement, but because it has been

denied to them.

5. Provisional protection and rapid publication

Both European and US laws allow a degree of pro-

tection against infringement, to the applicant whose

unexamined case has entered the public domain. Es-sentially, the applicant may sue for infringement back-

dated to the date of publication of their unexamined

patent application, provided that the case has gone to

grant and that claims have been allowed which are

substantially similar to those present in the earlier

publication. If the applicant is operating in a commer-

cial environment in which they consider infringement to

be likely, it could be advantageous to ensure that thepatent application is published at the earliest opportu-

nity, thus extending the window during which actions

may be later held to be infringing. The new US law has

specific provision for deliberate publication of unex-

amined cases earlier than 18 months, but at the time of

writing there are no data to determine how frequently

this is happening.

Other countries have provision for accelerated searchand/or examination, which under some circumstances

may result in either an unexamined document being

published prior to 18 months, or omitted altogether.

However, publication unexamined at around 18 months

is still the most common practice in most countries, al-

though both Japan and Germany also allow specifically

for the creation of a single granted patent with no pre-

ceding unexamined stage (JP-B1, DE-C1).

6. Search reports

Under the European Patent system, a prior art search

is normally completed and published, either with the

specification at 18 months as an A1, or as a delayed

search report (A3), before the request for substantive

examination is filed. (There are some exceptions to

the rules concerning when the examination request is

S. Adams / World Patent Information 25 (2003) 117–122 119

lodged, but they do not affect the search report publi-

cation stage.) Third parties may make comments upon

patentability in the light of the search report, but do not

become party to the proceedings. Patent informationspecialists have therefore become accustomed to re-

viewing official search reports upon competitor�s appli-cations, as indicative of the prior art which will be

considered when the case undergoes examination.

By contrast, the new US-A documents do not carry a

search report of any kind, and there is hence no clue as

to what the examiner will consider. This is again indi-

cative of the �parallel processing� regime at the USPTO,since the assigned examiner will often have a list of ci-

tations in their possession by this time. However, for

some reason these have been withheld from early pub-

lication along with the specification.

7. Bibliographic disclosure at 18 months

Most of the content of an early published US appli-

cation is superficially similar to other unexamined doc-uments, but on closer examination there are significant

differences here as well. Two in particular illustrate the

divergence in practice between the US and other coun-

tries of the world.

7.1. Assignee data

An obvious missing element is the assignee field,

normally containing the corporate applicant. All Euro-

pean and United Kingdom cases carry this information.However, under old US practice, it was not uncommon

for the formal assignment from inventor/applicant to

their corporate employer to be left until very late in the

application process, close to grant. There does not ap-

pear to have been any change in the law with the AIPA,

hence it often happens that no assignment has taken

place by the time of early publication. As also observed

elsewhere [7], a very substantial proportion of US-Adocuments carry no assignee data at all.

To illustrate the impact of this, a single week�s outputwas sampled and analysed in more detail. The publica-

tion week of January 31, 2002 allegedly issued US un-

examined applications in the number range US2002/

0010956-A to US2002/0013960-A, a total of 3005 doc-

uments. 1 A 10% random sample (299 documents) was

selected. Of these, only 86 (28%) carried formal assigneedata at INID field 73. Since this field code is presumably

used as a data tag for electronic dissemination, this

means that all database producers taking a data feed

from this source will be missing assignee information for

72% of the records.

Given that many users of patent information havemonitoring procedures set up on the basis of assignee

data, this oversight is very unfortunate. There does not

seem to be any practical reason why the USPTO pro-

cedure cannot be tightened up, to ensure that assign-

ments are completed in time for inclusion in the front

page data at 18 months. At the present time, the likely

ownership of the resultant patents can only be deter-

mined manually, on a case-by-case basis.In the given example, it could be technically feasible

to trace assignee data on up to a further 67% of the

sample. A total of 43 documents (14%) cited a corporate

interest at INID field 75 or 76 (the attorney address for

correspondence), and 96 (32%) claimed a foreign pri-

ority through which the assignee or corporate interest

could be traced via an equivalent publication. A further

63 documents (21%) claimed internal US priority, andsome of these included citations of divisional grants, all

of which carried corporate assignee data (other samples

may vary in the proportion which carry this data, hence

this 21% is a maximum). This left a minimum of 5% of

cases in which no indication of the eventual assignee

could be discerned. Hence the exercise of tracking as-

signees is by no means impossible, but substantially

more awkward than it needs to be.

7.2. Microbiological inventions

A second group of bibliographic data which differs

under AIPA practice is that relating to microbiologicalinventions. These often rely upon a sample of a micro-

organism (deposited at a recognised depository authority

under the terms of the Budapest Treaty) in order to fulfil

the enabling disclosure requirements. Under US practice

prior to the new law, it was common for the deposit to be

made as one of the final administrative stages, shortly

before grant. In the absence of an early publication re-

gime, this was acceptable practice, as third parties werenot disadvantaged. However, under the EPO and cor-

responding United Kingdom system, a deposit must be

completed at the time of filing of the patent application

and cited (with its official accession number) when the

application is published at 18 months. A special INID

code (field 83) has been created for the front page cita-

tion. In order to protect the applicant�s invention, thereare rules which limit the access of third parties to thesample until after the grant of the patent.

It might be expected that the new US early publica-

tions would follow the same pattern. However, there has

been no rule change to require this, and no sample de-

posit is required until payment of the issue fee. Neither

citation of the deposit accession (assuming it has hap-

pened) nor access for third parties is provided for at 18

1 However, only 2998 were in fact available on the USPTO website

at the time of the search, in March 2002, and in the absence of a

Gazette record of authority for these documents it raises a question of

whether the missing documents should in fact be considered �published�or not.

120 S. Adams / World Patent Information 25 (2003) 117–122

months. On the contrary, a report by the US govern-

ment�s General Accounting Office [12] has specifically

stated that access is NOT required until after grant. The

GAO�s argument is that ‘‘. . . the statute does not require

an associated release of a biological deposit concurrent

with 18 month publication because . . . the deposit itself is

not part of the application.’’ Whilst this might be correct

in law, it places the US in isolation from practice in the

rest of the world, and seems from the information spe-

cialist�s point of view to be a spurious argument.

It is hard to gauge the significance of this approach at

present. The GAO report estimated that fewer than 1%of a sample of US granted patents was supported by

microbiological deposits in US facilities. However, it

remains to be seen whether the same approach will be

taken to remove other �supporting disclosures� from the

requirement to publish – for example, genetic sequence

data provided in electronic form only.

8. Requests for substantive examination

As noted above, the EPO practice requires that arequest for substantive examination must come from an

applicant within specified time limits, otherwise the case

is deemed withdrawn. As a consequence, the act of

lodging that request can become an important piece of

commercial intelligence, indicating an ongoing com-

mitment on the part of the applicant. Various legal

status databases, including the free EPO Register ser-

vice, record the fact of filing of this request. Further-more, at the time of filing, all third parties will have an

indication of the prior art which will be considered

against the case, either from the A1 or the A3 document.

By contrast, examination in the US office is not de-

pendent upon the completion of a separate administra-

tive stage. There is no equivalent to the filing of a

request for examination; this is considered to have been

made by the act of filing the application. Consequently,the information specialist cannot use official registers to

assess an applicant�s continuing interest in a case, as

they can in Europe, nor do they have any clue (in the

absence of the search report) about what the examiner

will be considering during their work.

9. Scope of granted documents

During the process of substantive examination in

Europe, the examiner may require that material is de-leted from the claims or the disclosure, to avoid prior

art. In crude terms, the ‘‘information content’’ of the

granted case is almost always more restricted than

the corresponding unexamined document. There is no

equivalent to the continuation-in-part procedure under

USPTO practice, which permits new material to be ad-

ded. In bibliographic databases, such as Derwent�s

World Patent Index, the unexamined documents form

the basis of the abstracts created for patentability

searching. Since they are guaranteed, by definition, to be

at least as wide in scope as the later grant, the indexingcreated from these early documents will usually be ad-

equate to capture the subject matter of the granted case.

The new AIPA contains a procedure which threatens

to turn this entire assumption on its head, and could

have profound implications upon the way in which da-

tabases need to be created. Now formalised into the

Code of Federal Regulations [13] is a method of al-

lowing subject matter to be removed prior to publica-tion. This so-called �redaction� of the published US-A

document permits the applicant to edit out any matter

which does not appear in a corresponding non-US

published unexamined application. However, the re-

dacted material remains in the US file for examination

purposes before that office. As a consequence of this, it

is quite conceivable that a granted (US-B) document

may be published which contains a wider scope thaneither the corresponding unexamined publication (US-

A) or any foreign equivalents. The effect is illustrated in

Fig. 1

At the time of writing, there is no mechanism in place

which allows an information specialist to identify whe-

ther a US published application has been redacted. No

note appears on the front page of the unexamined

document, or in the official registers in a searchableform. It is possible to obtain a copy of the file wrapper

including the redacted portions, but only by requesting a

specific case. In the absence of a systematic record, there

are no data as to how commonly redaction has been

requested, nor any prospect of being able to gather it in

the future. Anecdotal evidence suggests that this pro-

cedure will not be widely used, and at the time of writing

there is a proposal in the 21st Century Strategic Plan ofthe USPTO [10] to delete this provision; however, it is

not known whether this will proceed to Congress. In the

meantime, all database producers handling unexamined

and granted US data would be well advised to compare

both publication stages in order to ensure that they are

creating the optimum indexing record for the case.

Fig. 1. Effect of redaction upon information content.

S. Adams / World Patent Information 25 (2003) 117–122 121

10. Summary and implications for information

The introduction of the American Inventors� Protec-tion Act has resulted in a significant change in the nature

of the patent information emanating from the United

States. The form of early publication has some distinct

aspects which lead to unconventional publication se-

quences, and documents which have at least the potentialto differ markedly from corresponding publications from

other countries. It is too early (in late 2002) to comment

upon the full impact of some of the special provisions,

but the situation needs to be monitored carefully.

Table 1 provides a comparison of the different aspects

discussed, with special reference to the database impli-

cations.

Acknowledgements

This paper is based upon a presentation at the semi-

nar ‘‘Living with AIPA: Impact of the American

Inventors Protection Act After a Year’’ held by the

Chemical Information (CINF) Division during the

American Chemical Society�s 223rd National Meeting in

Orlando, Florida, April 7–11, 2002. My grateful thanks

go to the Corporation Associates of the AmericanChemical Society, who awarded a bursary to support

my attendance at that meeting.

References

[1] Davidson CMR. The experience in Holland in respect to deferred

examination of patent applications. Nordiskst Immaterielt

R€aattsskydd 1969;38(2):156–64.

[2] Hoffman K. Three years experience with the deferred examination

system in Germany. Int Rev Indust Property Copyright Law

1972;3(2):164–83.

[3] Anon. Annual Report of the European Patent Office 1981.

M€uunchen: Europ€aaisches Patentamt, 1982.

[4] Banks MAL et al. The British Patent System; Report of the

committee to examine the patent system and patent law. Cmnd.

4407. London: HMSO; 1970. p. 28.

[5] Comptroller-General of Patents, Designs and Trade Marks.

Patents, Designs and Trade Marks 1980. 98th Annual Report of

the Comptroller-General. London: HMSO, 1981.

[6] For example, see Patents Act 1977, 25 & 26 Eliz. 2 ch. 37,

s. 21.

[7] Kaback SM. A patent searcher looks at the American Inventors

Protection Act. World Patent Inform 2002;24(4):263–8.

[8] Anon. Hitachi�s Application, Intellectual Property Decisions

1979; 2 (10): abstract no. 2176.

[9] United States Code (U.S.C.) Title 35, § 122(b)(2)(B)(i).

[10] Anon. The 21st Century Strategic Plan. Washington DC: USPTO,

June 3, 2002. Annex page P-67.

[11] http://www.uspto.gov/web/offices/dcom/olia/aipa/infoexch.htm#cq.

[12] Anon. Deposits of biological materials in support of certain

patent applications. Report no. GAO-01-49. Washington, DC:

General Accounting Office, October 2000.

[13] United States Code of Federal Regulations (C.F.R.) Title 37,

§ 1.217.

Stephen Adams is founder and managing di-rector of Magister Ltd., an information andtraining consultancy specialising in patentsdocumentation. He trained as a chemist at theUniversity of Bristol, UK, followed by aMasters degree in Information Science at CityUniversity, London. He has worked in tech-nical information since 1981, latterly withZeneca Agrochemicals (now Syngenta) astheir principal patent searcher until 1997. Hehas also been the editor of ‘‘InternationalPackaging Abstracts’’, a technical searcher inthe Ministry of Agriculture, Fisheries & Food

in the UK, and Chair of the Patent and Trade Mark Group.

Table 1

Summary comparison of USPTO and EPO practice on early publication

Event USPTO practice EPO practice

Operation of basic law Early publication and examination processes in parallel Early publication and examination processes

operate sequentially

Publication as A-document

at 18 months

Probably high %; some exceptions allowed under �non-foreignfiling� provisions

Almost 100%––occasional exceptions for non-

compliance

Single-member families Unlikely; will only occur where applicant has waived or forfeited

non-publication right

Common

Publication as A-document

earlier than 18 months

Allowable on request; unknown at present how significant this

will be. Could have implications for the use of A-documents for

current awareness

Rare

Front-page information of

A-documents

Likely to be missing assignee data in high % of cases Complete

Search report publication Does not happen until grant Occurs either simultaneously with early publi-

cation or separately, prior to grant.

Enabling disclosure at 18

months

May be incomplete if reliant upon microbiological or other non-

text information

Complete

Request for substantive

examination

Not required––examination proceeds automatically Must be specifically requested by applicant

Information content of

B-documents

May be broader than any other family member, including

corresponding US-A document; re-abstracting or indexing may

be required to ensure retrieval

Invariably narrower than corresponding A-

documents; indexing of A-document adequate

to ensure retrieval of granted case

122 S. Adams / World Patent Information 25 (2003) 117–122