A short examination of the timeliness and accuracy of United Kingdom patent legal status data...

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A short examination of the timeliness and accuracy of United Kingdom patent legal status data sources Stephen Adams Magister Ltd., Crown House, 231 Kings Road, Reading RG1 4LS, UK Abstract In examining the timeliness and accuracy of United Kingdom patent legal status data sources, the author takes as his starting point the Patent and Designs Journal of the UK Patent Office. He then tracks the progress for a batch of patent status events recorded in the Journal on a specific date, both in the official phase before publication in the Journal, and their subsequent ap- pearance in three electronic databases. The databases examined are the UKPO’s Patent Status Information Service, the EPO’s epoline â European Patent Register and the Questel. Orbit implementation of the Inpadoc Patent Register Service/Legstat files. He distinguishes between the official time-lag from the action date to the record date in the UKPO, and the processing time-lag from the record date to the update date in the electronic databases. He demonstrates the complexities of this field, with delays in data availability attributable to several causes, including those inherent in the nature of the patent law under which patent offices operate. He concludes that great care in compiling and cross-checking of status data is essential, especially for countries, such as the United Kingdom, which are party to regional patent issuing authorities. Ó 2002 Elsevier Science Ltd. All rights reserved. 1. Introduction The purpose of this paper is to provide a snap-shot of the current information sources which publish legal status data on patents having effect in the United Kingdom. Work was carried out to determine the time interval between the definitive publication of such ac- tions in the official gazette of the United Kingdom Pa- tent Office (the ‘‘Patents & Designs Journal’’ or PDJ) and the entry of corresponding data into a publicly available and searchable electronic source (the ‘pro- cessing time-lag’). Where possible, the interval between an official date of action and its appearance in any public source (the ‘official time-lag’) was also examined, with comments upon the accuracy and consistency of the data. 2. Legal status sources consulted This study was limited to an examination of three electronic sources; the website of the United Kingdom Patent Office (http://www.patent.gov.uk, specifically the Patent Status Information Service at http://webdb4. patent.gov.uk/patents/ and the corresponding Supple- mentary Protection Certificate (SPC) Service at http:// webdb2.patent.gov.uk/rspc/), the European Patent Reg- ister mounted under the epoline â service (http://www. epoline.org) and the legal status portion of the INPA- DOC database, variously referred to as the Patent Register Service (PRS) or the Legstat file. In this study, the version loaded on the Questel-Orbit host service was used as the standard. The reason for the inclusion of European Patent data sources arises from the United Kingdom’s member- ship of the European Patent Organisation. The United Kingdom recognises two parallel mechanisms by which patents may have effect upon its territory––its own patents and European Patents designating the United Kingdom. However, certain national procedures must be complied with in order to secure the latter rights. These procedures, the most notable of which is the re- quirement to lodge a translation into English of all non- English language granted patents designating the United Kingdom, are essentially national and do not form part of the required data elements found in the official Reg- ister of the European Patent Office (the so-called ‘Rule 92 data’). By contrast, other procedures, such as the notification that a European Patent application has been World Patent Information 24 (2002) 203–209 www.elsevier.com/locate/worpatin E-mail address: [email protected] (S. Adams). 0172-2190/02/$ - see front matter Ó 2002 Elsevier Science Ltd. All rights reserved. PII: S 0 1 7 2 - 2 1 9 0 ( 0 2 ) 0 0 0 2 7 - 3

Transcript of A short examination of the timeliness and accuracy of United Kingdom patent legal status data...

A short examination of the timeliness and accuracyof United Kingdom patent legal status data sources

Stephen Adams

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

Abstract

In examining the timeliness and accuracy of United Kingdom patent legal status data sources, the author takes as his starting

point the Patent and Designs Journal of the UK Patent Office. He then tracks the progress for a batch of patent status events

recorded in the Journal on a specific date, both in the official phase before publication in the Journal, and their subsequent ap-

pearance in three electronic databases. The databases examined are the UKPO’s Patent Status Information Service, the EPO’s

epoline� European Patent Register and the Questel. Orbit implementation of the Inpadoc Patent Register Service/Legstat files. He

distinguishes between the official time-lag from the action date to the record date in the UKPO, and the processing time-lag from the

record date to the update date in the electronic databases. He demonstrates the complexities of this field, with delays in data

availability attributable to several causes, including those inherent in the nature of the patent law under which patent offices operate.

He concludes that great care in compiling and cross-checking of status data is essential, especially for countries, such as the United

Kingdom, which are party to regional patent issuing authorities.

� 2002 Elsevier Science Ltd. All rights reserved.

1. Introduction

The purpose of this paper is to provide a snap-shot ofthe current information sources which publish legalstatus data on patents having effect in the UnitedKingdom. Work was carried out to determine the timeinterval between the definitive publication of such ac-tions in the official gazette of the United Kingdom Pa-tent Office (the ‘‘Patents & Designs Journal’’ or PDJ)and the entry of corresponding data into a publiclyavailable and searchable electronic source (the ‘pro-cessing time-lag’). Where possible, the interval betweenan official date of action and its appearance in anypublic source (the ‘official time-lag’) was also examined,with comments upon the accuracy and consistency ofthe data.

2. Legal status sources consulted

This study was limited to an examination of threeelectronic sources; the website of the United KingdomPatent Office (http://www.patent.gov.uk, specifically the

Patent Status Information Service at http://webdb4.patent.gov.uk/patents/ and the corresponding Supple-mentary Protection Certificate (SPC) Service at http://webdb2.patent.gov.uk/rspc/), the European Patent Reg-ister mounted under the epoline� service (http://www.epoline.org) and the legal status portion of the INPA-DOC database, variously referred to as the PatentRegister Service (PRS) or the Legstat file. In this study,the version loaded on the Questel-Orbit host service wasused as the standard.

The reason for the inclusion of European Patent datasources arises from the United Kingdom’s member-ship of the European Patent Organisation. The UnitedKingdom recognises two parallel mechanisms by whichpatents may have effect upon its territory––its ownpatents and European Patents designating the UnitedKingdom. However, certain national procedures mustbe complied with in order to secure the latter rights.These procedures, the most notable of which is the re-quirement to lodge a translation into English of all non-English language granted patents designating the UnitedKingdom, are essentially national and do not form partof the required data elements found in the official Reg-ister of the European Patent Office (the so-called ‘Rule92 data’). By contrast, other procedures, such as thenotification that a European Patent application has been

World Patent Information 24 (2002) 203–209

www.elsevier.com/locate/worpatin

E-mail address: [email protected] (S. Adams).

0172-2190/02/$ - see front matter � 2002 Elsevier Science Ltd. All rights reserved.

PII: S 0 1 7 2 - 2 1 9 0 ( 0 2 ) 0 0 0 2 7 - 3

granted, should appear essentially simultaneously inboth EPO and United Kingdom sources. Hence thePDJ––and electronic sources derived from it––containsa mixture of information relating to both UnitedKingdom national patents and European cases.

3. Source material

A range of legal actions published in the 30 May 2001issue of the PDJ were examined, and a single exampleextracted from most sections. This gazette forms thedefinitive source of record for stages of progress of pa-tent applications in the United Kingdom, and coversproceedings under the Patents Act 1977, the principalUK patent legislation as amended, and the two ECRegulations governing grants of supplementary protec-tion certificates (SPCs).

In common with many national patent gazettes, eachissue divides its content into a range of standard head-ings, detailed in Table 1. One example from each stan-dard heading has been chosen at random to represent theheading as a whole. If there is reason to believe that theheading contains substantial variability, this has beencommented upon in subsequent discussion. Note thattransactions relating to European Patents designatingthe United Kingdom use the abbreviation EP(UK).

A miscellany of less-common events is gathered to-gether under the overall heading of ‘‘Other Proceedingsunder the Patents Act 1977’’ in each issue of the PDJ.

Table 2 lists the sub-headings, denoted by the relevantSection of the Patents Act under which the proceeding isbeing carried out, which were available in the 30 Mayissue, and one example has been chosen for examinationfrom each of these.

4. Definitions of ‘timeliness’

The patent information specialist needs to take ac-count of two distinct time intervals when consideringlegal status databases. The first––which is perhaps the

Table 1

Standard headings from the PDJ

Heading Comments Example(s) chosen

Part 1: Proceedings under the Patents Act 1977

Applications for patents filed Notifications of United Kingdom filings ap-

proximately 6 weeks after lodging at the UK

Patent Office (GB-A0 ‘documents’)

GB0108908.5

Applications terminated Relates to applications withdrawn prior to 18-

month publication

GB0031604.2

Applications published GB-A documents GB 2356661––A

Patents granted GB-B documents GB 2327795––B

European Patents granted EP-B designating GB; two examples chosen (a) EP 231879––B (b) EP 606532––B

Translations filed Sub-divided into (a) European Patents, (b)

amended European Patents and (c) claims of

European Patents

(a) EP 753718––B (b) EP 402724––B (c) nil

return in this issue

European Patents void Due to failure to lodge translation under

Article 65 EPC

EP 919771––B

European Patents revoked Two examples chosen (a) EP 262937––B (b) EP 701706––B

European Patents ceased Usually due to non-payment of renewal fees EP 672289––B

European Patents expired At end of normal term EP 40496––B

UK patents ceased Usually due to non-payment of renewal fees GB 2224654––B

UK patents expired At end of normal term GB 2077235––B

Other proceedings under the Patents Act 1977 See Table 2 See Table 2

Part 2: Proceedings under EC Regulations 1768/92 and 1610/96

SPCs lodged SPC/GB01/018

SPCs granted SPC/GB93/108

SPCs entered into force Nil return in this issue

SPCs expired SPC/GB97/051

Table 2

Example headings from the ‘‘Other Proceedings’’ section

Sub-heading Definition Example chosen

Section 27 Amendment of specifica-

tion after grant

EP 642324––B

Section 28 Restoration of ceased pat-

ents

GB 2280118––B

Section 30 Transactions in patents and

applications

GB 0000424.2

Section 32 Register of Patents GB 2075028––B

Section 72 Counterclaim for revoca-

tion

GB 2232806––B

Section 73 Revocation on the Comp-

troller’s initiative

GB 2280200––B

Section 89A(6) Requests for publication of

translation

GB 0107363.4

Rule 110 Alteration of time limits EP 912391––B

204 S. Adams / World Patent Information 24 (2002) 203–209

interval most commonly meant when the issue of‘timeliness’ is discussed––is the primary responsibility ofthe database producer and distributor, whether they bethe patent offices generating the data or commercialthird parties. It can be measured as the interval betweenthe formal reporting of a legal action in the official ga-zette (the ‘record date’) and the point at which the sameinformation actually becomes searchable on the elec-tronic public search services (the ‘update date’). Thisinterval is subject to wide variation, particularly if thedatabase producer is reliant upon another party, such asan online host, to mount their database. It is only pos-sible to measure this aspect of timeliness as a snap-shot,since any single week’s data flow may be subject to anon-recurrent failure (for example, data corruption mayforce the host to request the database producer to re-send the information before the host can load it), whichdisrupts that week’s update schedule. For simplicity, thisinterval will be referred to in this paper as the ‘‘pro-cessing time-lag’’.

The second form of timeliness is somewhat moresubtle, and recognises that certain legal status eventshave in effect a retrospective action, in that the date oflegal effect (the ‘action date’) can be deemed to haveoccurred some considerable period before the publica-tion of the decision (the ‘record date’). This interval iswithin the control of the patent office concerned and, aswill be seen, can also vary substantially for differenttypes of action, and within a single group of actions. Forsimplicity, this interval will be referred to in this paper asthe ‘‘official time-lag’’.

5. Search process

The majority of the actual searching was conductedover a period of 3 days. The United Kingdom PatentOffice website was consulted on 5 and 7 June 2001, theepoline� service on 7 June 2001 and the Legstat file viaQuestel-Orbit also on 7 June 2001. Some supplementarysearching was also carried out in January 2002. Theinitial findings are listed at Table 3.

In the column headed ‘‘EPOLine (record date)’’, thereare three possible entries:

• The entry (n=a) is used to indicate where the EPO-Line file is not appropriate as an information sourceand where it is not expected to find an entry i.e. casesrelating to UK national patents.

• The entry (data not present) is used to indicate thatthe file did not contain the data sought in the specificcase, but that there is a reasonable expectation (onthe basis of other sample records) that this field couldhave been captured e.g. the file is not comprehensivein respect of national lapses following non-paymentof renewal fees.

• The entry contains the record date for the specificitem.

In the column headed ‘‘Legstat (update code)’’, theQuestel-Orbit update code is recorded, if available.Again, there are three possible entries:

• An entry in the form (YYYY-WW) records the yearand week when the data were added to the databaseand became available for searching. For the searchingrun on 7 June 2001, the most recent update availablein the file was 2001–22.

• An entry in the form (pre YYYY-WW) records thelatest possible update in which the item could havebeen added to the database. Unfortunately, it is notpossible to be more specific for these items becausethe update code is over-written whenever a new ac-tion is added. If several actions have been added tothe document record over successive weeks, such thatthe action under examination is no longer the mostrecent one, it is not possible to track back the updatecode to identify the week of addition.

• On a few occasions, data does not appear in the Leg-stat record at all, and is recorded as (data missing).

6. Observations on the ‘official time-lag’

On examining the printed version of the PDJ, itquickly becomes clear that certain actions are cumulatedover a period of time and appear in a single issue ofrecord. This means that the ‘‘official time-lag’’ can varywithin a given action. For example, the notifications ofGB applications filed are generally recognised as takinga minimum of 6 weeks to appear in the PDJ. This is aconsequence of the national security restrictions on ap-plications abroad by United Kingdom residents, inSection 23 of the Patents Act 1977. In the example inhand, these so-called GB-A0 records were filed between29 Mar 2001 and 17 Apr 2001, and all appeared in thePDJ for 30 May 2001, giving an official time-lag of be-tween 6 and 8 weeks.

At the other extreme, there are actions wherein theofficial time-lag is effectively zero, such as notificationsof the grant of an examined United Kingdom patent.Under the UK legislation, it is the publication of noticeof grant in the PDJ which determines the date of effectof the patent; hence, all the GB-B cases announced inthe 30 May issue take effect immediately.

The data collected in Table 3 enables a summary ofofficial time-lag to be created for some of the major legalstatus actions. This summary appears as Table 4.

From the point of view of the information specialist,the most contentious item in Table 4 is the official time-lag for the notice of a patent having ceased due to non-payment of renewal fees. Under UK legislation, certain

S. Adams / World Patent Information 24 (2002) 203–209 205

grace periods are allowed for restoration of lapsedpatents, and it appears to be the case that legal status

information announcing the definitive lapse of a case isnot published until after the expiry of the grace period,

Table 3

Initial findings from three sources

PDJ section

heading

Range of action

dates for this section

Example(s)

chosen

Action date(s) for

example(s) chosen

GBPO website

(record date)

EPOLine

(record date)

Legstat

(update code)

Applications for

patents filed

29 March 2001–17

April 2001

GB0108908.5

(claiming priority

from GB0009298)

10 April 2001 Noted; no record

date given

n/a 2001–33 (with-

drawal of priority

case)

Applications ter-

minated

30 May 2001 GB0031604.2 3 May 2001 Noted; no record

date given

n/a 2001–25

Applications pub-

lished

30 May 2001 GB 2356661––A 30 May 2001 Noted; no record

date given

n/a 2001–22

Patents granted 30 May 2001 GB 2327795––B 30 May 2001 30 May 2001 n/a 2001–22

European Patents

granted (designat-

ing GB)

30 May 2001 (a) EP 231879––B

(b) EP 606532––B

(a) 30 May 2001

(b) 30 May 2001

(a) 30 May 2001

(b) 30 May 2001

(a) 30 May 2001

(b) 30 May 2001

(a) 2001–22 plus

additional details

(b) 2001–22

Translations filed:

(a) European Pat-

ents, (b) amended

European Pat-

ents, (c) claims of

European Patents

(s.78(7))

(a) 3 May 2001–9

May 2001 (b) not

given (c) nil return

(a) EP 753718––B

(granted 28 Feb-

ruary 2001) (b)

EP 402724––B

(granted 14 Feb-

ruary 1996,

amended after

opposition)

(a) 4 May 2001 (b)

3 April 2001

(a) 8 May 2001

(b) 9 May 2001

n/a (a) Pre 2001–46

(b) Pre 2001–52

European Patents

void

Not given EP 919771––B 29 November

2000

Noted; no record

date given

n/a Pre 2001–51

European Patents

revoked

Not given (a) EP 701706––B

(b) EP 262937––B

(a) 10 November

2000 (b) 13 March

2001

(a) 27 April 2001

(b) 27 April 2001

(a) Noted; no re-

cord date given

(b) Noted; no re-

cord date given

(a) 2001–22 (b)

2001–22

European Patents

ceased

6 October 2000–12

October 2000

EP 672289––B 12 October 2000 9 May 2001 Data not present Pre 2001–26

European Patents

expired

4 May 2001–10 May

2001

EP 40496––B 7 May 2001 4 May 2001 [sic] Data not present 2001–25

UK patents

ceased

6 October 2000–12

October 2000

GB 2224654––B 6 October 2000 3 May 2001 n/a 2001–25

UK patents ex-

pired

4 May 2001–10 May

2001

GB 2077235––B 4 May 2001 3 May 2001 [sic] n/a 2001–25

Other proceedings

under the Patents

Act 1977––refer

to Table 2 for de-

tails of individual

cases

(b) 25 April 2001–5

May 2001

(a) EP 642324 - B (a) 4 May 2001 (a) 8 May 2001 (a) n/a (a) 2001–25

(b) GB 2280118 -

B

(b) 5 May 2001 (b) 5 May 2001 (b) n/a (b) 2001–25

(c) GB 0000424.2 (c) 4 May 2001 (c) 4 May 2001 (c) n/a (c) 2001–25

(d) 3 May 2001–9

May 2001

(d) GB 2075028––

B

(d) 4 May 2001 (d) 4 May 2001 (d) n/a (d) 2001–25

(e) GB 2232806––

B

(e) 22 February

2001

(e) 20 April 2001 (e) n/a (e) Pre 2001–45

(f) GB 2280200––

B

(f) 4 May 2001 (f) 4 May 2001 (f) n/a (f) 2001–25

(g) GB 0107363.4 (g) 23 March 2001 (g) 8 May 2001 (g) n/a (g) 2001–25

(h) EP 912391––B (h) 3 May 2001 (h) 9 May 2001 (h) Erroneous

data

(h) Pre 2002–02

SPCs lodged 4 May 2001 SPC/GB01/018 (4

May 2001)

4 May 2001 Noted; no record

date given

n/a Data missing

SPCs granted Not given SPC/GB93/108

(granted 11

March 1994)

26 May 2001 Noted; no record

date given

n/a Data missing

SPCs expired 8 May 2001 SPC/GB97/051 8 May 2001 Noted; no record

date given

n/a 2001–25

206 S. Adams / World Patent Information 24 (2002) 203–209

and with the patentee having been given every oppor-tunity to prevent their case lapsing.

7. Quasi-legal status actions

There are some instances where the handling of anevent may legitimately be considered a legal status actionor merely a bibliographic publication. A particular casehighlighted here is that of the so-called GB-A0 records inINPADOC. If a GB-A0 filing leads directly to a GB-A(or equivalent foreign) unexamined document, with nochanges in status at all between filing and publication at18 months, there will be no record of the application inthe legal status (PRS) portion of INPADOC. Instead,these notifications of filing are treated as if they weretangible documents and appear in the normal biblio-graphic sub-file of INPADOC (the PFS), being allocateda dummy ‘publication’ number derived from the appli-cation number. Hence application GB0108908.5 appearsin the PFS as GB 200108908-A0, but there is no corre-sponding PRS record, since this application proceededdirectly to publication as GB 2361179-A. However, thepriority application GB0009298.1 has a record in thePFS as GB200009298-A0 and a second record in the PRSat update week 2001–33, recording its withdrawal.

This sequence of events gives the opportunity tocapture some additional baseline data. The formal noticeof withdrawal of GB200009298-A0 appeared in the PDJdated 25 July 2001, and entered the INPADOC legalstatus file under update code 2001–33. This gives ustwo data points to assess timeliness of the INPADOCload:

• PDJ issue 30 May corresponding to INPADOC legalstatus code 2001–22

• PDJ issue 25 July corresponding to INPADOC legalstatus code 2001–33

This leads to the qualitative conclusion that 11weekly INPADOC updates spanned the data release

period of 9 weekly issues of the PDJ. Allowing for asmall amount of overlap, this would suggest that theprocessing time lag for GB-A0 data is approximately 3weeks. This is backed up by the second GB-A0 with-drawal record in Table 3, application GB0031604.2,observed on 30 May with an action date of 3 May. It ismy understanding that at least some of this is manuallykeyboarded rather than being received as machine-readable data, since A0 documents do not form part ofthe official publication stream, which would explain partof this processing time-lag.

8. Observations on the ‘processing time-lag’

INPADOC is the only one of the three sources whichsystematically records the date of entry of an item intothe database (the ‘update date’, as opposed to the ‘re-cord date’). This means that this is the only file fromwhich it is possible to obtain meaningful data on theprocessing time-lag, as defined above. Since informationis loaded in weekly batches, it is useful to use the updatecode as a qualitative measure of the spread of time overwhich data with a common record date is added to thefile. Table 5 shows these findings for most of the officialactions recorded. It highlights the fact that whilst no-tices relating to publication and grant are virtually in-stantaneous (time-lag ¼ 0), there is a consistent 3–4week processing period before notices relating to ces-sation or expiry appear in INPADOC. This is in addi-tion to the (sometimes not insignificant) official time lagfor the same actions, recorded in Table 4. In some cases,each time-lag contributes approximately equally e.g. aGB patent expired at term takes about 4 weeks to ap-pear in the official paper record and a further 3 weeks toenter the INPADOC database. Clearly, in these in-stances, any improvement by either the data originatoror the data distributor will assist timeliness. In other

Table 4

Variations in ‘official time-lag’ for different actions

GB application filed 6–8 weeks

GB application terminated �4 weeks

GB granted <1 week

EP(UK) granted <1 week

EP(UK) translation lodged �3 weeks

EP(UK) void Variable

EP(UK) revoked Variable

EP(UK) ceased �8 months

EP(UK) expired 3–4 weeks

GB ceased, non-payment �8 months

GB expired �4 weeks

GB restored 3–5 weeks

GB re-assigned 3–4 weeks

SPC expired on completion �3 weeks

Table 5

Variations in INPADOC ‘processing time-lag’ for a range of actions

Nature of action (record

date 30 May 2001)

Legstat update

code

Legstat process-

ing time-lag

Applications terminated 2001–25 þ3

Applications published 2001–22 0

Patents granted 2001–22 0

European Patents granted

(designating GB)

2001–22 0

European Patents revoked 2001–22 0

European Patents ceased Max. 2001–26 þ3–4

European Patents expired 2001–25 þ3

GB patents ceased 2001–25 þ3

GB patents expired 2001–25 þ3

Other proceedings under

the Patents Act 1977

Typically 2001–

25

Typically þ3

SPCs expired 2001–25 þ3

S. Adams / World Patent Information 24 (2002) 203–209 207

cases, one or other of the two intervals is the majorcontributor e.g. a notice that a GB patent has ceased dueto non-payment of renewal fees has a processing time-lag of about 3 weeks but the bulk of the delay is dueto the official time-lag, as the action enters the publicrecord with a retrospective action date of severalmonths.

9. Errors, omissions and unexpected findings in the data

In comparing these three sources, it becomes appar-ent that each has its own strengths and weaknesses in theway in which it reports the data. Sometimes, this relatesto the limitations imposed upon the range of avail-able search fields. For example, in the case of the UKapplication GB0108908.5, this application number isdirectly searchable at the UK website, but searching bythe earlier priority (GB0009828.1) retrieved only a re-cord annotated as ‘‘Application terminated’’ with nocross-reference to the later filing. There is no facilitywithin the system to search a ‘‘related applicationnumber’’ field, such as would be available in value-added services like INPADOC and Derwent’s WPI file,or even the USPTO website. By contrast, the websitedesign allows a useful explicit link between the directlysearchable SPC number (e.g. SPC/GB01/018) and thecorresponding patent record (e.g. for EP393911)––this isparticularly useful as it highlights the fact that morethan one SPC may be filed citing a given patent, and isnot easily available in the INPADOC file. However, thedata are still open to error; the record for SPC/GB93/108 appears in the printed PDJ in the section for ‘‘SPCgranted’’, whereas the website clearly shows that thecertificate entered into force on 26 May 2001, havingpreviously been granted on 11 March 1994.

One of the most notable aspects of United Kingdomlegal status data is in respect of European Patents des-ignating the United Kingdom. Once a patent has beengranted by the EPO and its grant announced in theEuropean Patent Bulletin and the corresponding PDJ,there are a number of post-grant events which arehandled on a strictly national basis. These include therequirement for filing of translations into national lan-guages and the maintenance of the patent in each des-ignated state by payment of fees to the national office.These items are not systematically recorded in the EPORegister, since they fall outside the EPO’s jurisdiction,but in some cases data may be forwarded for inclusionin this file. This can lead to an unsatisfactory situationwherein the unwary searcher can be misled into usingthe wrong information source. For example, the EPORegister records lapse data from France for EP 672289-B but not for the United Kingdom. The UK PatentOffice website does contain the corresponding informa-

tion that no fees have been paid, so is definitive in thisinstance.

There is at least one example where the GBPO web-site and the EPO Register apparently contradict oneanother. Under the ‘‘Other proceedings’’ section of thePDJ, there is a notice relating to EP 912391-B, grantedon 3 May 2000. The EPO Register entry for this patentfurther notes that the case has lapsed in the UnitedKingdom on the same date; in other words, it has beendeclared void ab initio as a result of the failure by thepatentee to lodge a translation from the original Ger-man into English. This declaration was published in thePDJ for 1 November 2000. However, the printed PDJ of30 May 2001 and the corresponding entry in the GBPOwebsite both note that the patentee applied for, and wasgranted, an extension in the time limits for filing thetranslation. The translation was duly lodged on 2 Feb2001 and the patent reinstated, and is to be treated ashaving effect from 3 May 2000. This change in status isentirely missing from the EPO Register. It is, however,recorded in the legal status record from INPADOC.

A further example of missing data was found in thefiling of SPCs. The Du Pont Company lodged two ap-plications for SPCs on 4 May 2001, both citing grantedpatent EP 393911-B but with different marketing au-thorisations for different products. The two applicationswere given sequential SPC application numbers SPC/GB01/018 and SPC/GB01/019. The INPADOC recordfor EP 393911-B notes the application filed for the latter,but is missing any record of the former. Using the SPCservice on the GBPO website and searching by patentnumber retrieves both records, plus that for a later caseSPC/GB01/034, although ironically it then records anincorrect filing date of 8 Jan 2001 (instead of 1 Aug2001) in the hit-list display for 018; the main record isfortunately correct. This is clearly a data loading errorconfusing American and British date formats.

A second error in the SPC data is more understand-able. As noted above, the printed PDJ has allocated therecord for SPC/GB93/108 under the wrong section,placing it into ‘‘SPCs granted’’ instead of the correct‘‘SPCs entered into force.’’ The corresponding INPA-DOC legal status codes for these two stages are GB/CTFG and GB/CTFE respectively. Since INPADOCdraws upon the PDJ for its source material, it is un-derstandable to find the original entry on the genuinegrant:

19940406 GB/CTFG GB: CERTIFICATE GRAN-TED SPC/GB93/108 940311, EXPIRES:20030322but no corresponding entry with the GB/CTFE code on26 May 2001. This underlines the fact that many data-base producers who transcribe or manipulate databefore load do not normally correct erroneous infor-mation. Although a cursory examination of the printedrecord would show what had gone wrong, it is not

208 S. Adams / World Patent Information 24 (2002) 203–209

generally accepted that the database producer’s job in-cludes the generation of new entries corresponding towhat should have been printed.

10. Summary

This short study has indicated that the ‘official time-lag’ for legal status actions generally contributes at least50% of the overall delay in notification for these events.It has also reinforced the suggestion that good practicein legal status searching should include the cross-checking of at least two independent sources for accu-racy. For countries belonging to regional patent-issuingauthorities, it is also important for the informationspecialist to be clear about the relative jurisdictions––and hence information sources––involved in determin-ing legal status.

Acknowledgements

The Editor is grateful to the following for kindly re-viewing and confirming the accuracy of the informationin this article relating to services provided by their or-ganization: Peter Back, United Kingdom Patent Office;David Dickens, Questel.Orbit; Madeleine Lanier, Eu-ropean Patent Office.

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.

S. Adams / World Patent Information 24 (2002) 203–209 209