World Patent Information 27 (2005) 99–103

www.elsevier.com/locate/worpatin

Discussion

Electronic non-text material in patent applications—somequestions for patent offices, applicants and searchers

Stephen Adams *

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

Abstract

Taking as a starting point the actual and the perceived value of models of claimed inventions in the 19th century, the author

explores the proposition that non-text disclosures of this type and, more significantly, their modern equivalents as 3D electronic

images, as well as many other forms of electronic non-text material, will have an increasing place in fully communicating the inven-

tions filed in 21st century patent applications. He argues that moving to a patent application process in which supplementary machine

readable material can be supplied, and can form part of the total disclosure of an invention, without the need for it to be convertible to

paper form, would increase intelligibility of invention disclosures of both existing problem areas such as genetic sequence patents, as

well as forestalling increasing problems likely to arise in other areas as the 21st century unfolds. He notes that in this way the limi-

tations inherent in having to describe 21st century inventions by using the 15th century technology of the printed page could be over-

come. Analogies with the situation for certain types of trademark applications for registration, e.g. sound marks, are also noted.

� 2005 Elsevier Ltd. All rights reserved.

Keywords: Electronic non-text; Invention models; Patent applications; Invention disclosure; Supplementary machine readable; Genetic sequence

patents; Trademark applications

1. Introduction

In a recent paper [1], Katherine Durack wrote about

the history and function of models in the 19th century

US patent system. Her insights as a social historian

and professor of communications have prompted me

to consider the issue of non-text disclosures in general.

2. Definition

To start with a definition: in the context of this paper,

‘‘electronic non-text material’’ refers to those informa-

tion elements which are generated during the invention

process, captured, submitted as part of a patent applica-

tion, searched, published and disseminated without ever

0172-2190/$ - see front matter � 2005 Elsevier Ltd. All rights reserved.

doi:10.1016/j.wpi.2004.12.005

* Tel.: +44 (0) 118 966 6520; fax: +44 (0) 118 966 6620.

E-mail address: stevea@magister.co.uk

being reduced to paper. In addition—and more signifi-

cantly from the searchers� point of view—they are notrequired to be provided in a format which is capable

of being reduced to paper. This is an important distinc-

tion, since although much invention information is

being generated in electronic form, current rules require

that this is reduced to a paper-friendly format at the

point of patent application, and in so doing loses much

of the flexibility and precision of its original form.

3. The proposition

According to Durack�s paper, during the early days

of US patent law, in an age of relatively low literacy

and high printing costs for engineering drawings, the

three-dimensional model proved to be a cost-effective

way of communicating the full nature of an invention,even for US utility patents (patents of invention). Well

into the 20th century, the utility model laws of some

100 S. Adams / World Patent Information 27 (2005) 99–103

countries, such as Finland, Spain and Italy, still required

a form of three-dimensional disclosure as part of the fil-

ing process. Since most utility models were in the

mechanical field, this made sense. If an applicant pro-

vided a model, it enabled both the patent office to under-

stand the invention (although such cases were often notsubject to a full substantive examination) and a neutral

third party to become aware of the true implications for

their work. But do models—or other forms of non-text

disclosure—have any place in our current age of increas-

ingly sophisticated full-text databases? I would argue

that they do to some extent today, and could become

much more important in the future. I suggest that we

have a substantial (and probably rising) proportion ofpatent documents which fail to provide optimum disclo-

sure by words alone. They are backed up by a whole raft

of non-text techniques, such as drawings (by which I

would principally understand mechanical depictions

and electrical circuit diagrams), photographs (consider

US Plant Patents especially, but also photo reproduc-

tions of e.g. chromatographic plates, electron micro-

graphs and so on), chemical structure diagrams,genetic sequence listings, computer program listings

and microbiological deposits.

4. A trademark analogy

What are the implications, both for applicant and

searcher? Let us consider the field of trade marks asan analogy. A trade mark application with a graphic ele-

ment and a word element should ideally be retrievable

by either, or both in combination. There are three pos-

sible retrieval mechanisms for such marks:

1. Direct text: text-based retrieval for the word ele-

ments, including techniques such as phoenetic match-

ing and permuted or rotated text indexes,2. Coding: a text-based representation of the graphic ele-

ments, either by proprietary descriptions (abstract

such as �the mark includes a representation of a lion�shead�) or a public system such as the Vienna Classifi-

cation on the Figurative Elements of Marks (section

3.1.16 covers heads of animals from division 3.1,

which includes lions),

3. Non-text: direct access to the graphic elements, typi-cally by some form of pattern matching or image

search process.

The last of these is the least-well developed. Although

substantial research into direct image searching has been

done in the last decades [2–4], including experimental

work at the University of Northumbria applied to trade

marks [5], it would appear that we are still a long wayfrom a robust, functional system. Current technology

struggles to achieve what the human eye accomplishes

in an instant—to identify both a dachshund and a Great

Dane as being candidate answers in a search for a dog.

5. 15th Century technology and 21st Century inventions

Despite so-called �electronic application� and �paper-less patent office� projects, a fundamental requirement

today—for both patents and trade marks, no matter

how complex—is that the application is required to be

filed in a form which can be reduced to the two-dimen-

sional printed page. The sole exception to this is under

the provisions of the Budapest Treaty, which allow a

microbiological sample to form an integral part of a pat-ent application. It appears to me that this ‘‘reduction-to-

paper’’ requirement is becoming less and less reasonable.

For example, as trade mark applications expand into the

area of (e.g.) colours and smells, search systems do not

exist which would allow direct access to non-text disclo-

sure. To search and examine these types of marks, there

must be established standards of representation—for

example, a colour mark can be defined in the Pantone�

system, a smell mark by the structural formula(e) of the

odour component(s) and a sound mark by a conven-

tional music notation. Yet this sort of artificial construct

places a heavy burden upon the applicant at the point of

drafting. There is less room for manoeuvre in the use of

such non-standard �languages�, as they are less familiar

to both examiner and applicant, and the applicant needs

to take great care that they use the fullest degree of pre-cision available. For example, in the Shield Mark case

[6], it was held that although the means existed for dis-

closing a musical mark in a satisfactory manner, the

application failed because those means had been poorly

used. Current filing requirements continue to insist that

the application is capable of being reproduced using

15th century technology, the printed page. As the scope

of marks expands, it could become more difficult for21st century applicants to obtain distinctive marks, sim-

ply because paper becomes such a convoluted mecha-

nism for disclosure. In the same way, as patent

applications reach out into areas of hitherto un-

dreamed-of technology, there is a risk that, at best,

examination times become more extended as applicant

and examiner clarify the nature of the invention by cor-

respondence and, at worst, patentability may be denied,simply as a result of limitations in how a new technology

can be adequately demonstrated on paper.

6. Current retrieval options for electronic non-text

patent information

In the field of patents, the retrieval situation is, eventoday, worse than for trade marks. As searchers, we

have advanced text-retrieval systems available (although

S. Adams / World Patent Information 27 (2005) 99–103 101

these often return results which rank highly in recall, but

poorly in precision). However, large quantities of the

world�s patent literature are not yet in full-text electronic

form, so cannot be retrieved by this method in any

event—see, for example, the paper by Lagemaat in this

context [7]. The second method (Coding) is fairly wellprovided for, with a range of proprietary coding and

indexing systems (CAS Registry Numbers�, the Manual

Code system of World Patents Index and so on) and

public concept representation systems such as the Inter-

national Patent Classification and the other national

classifications. The third method (Non-text) is very

poorly provided for—there is only one very limited area

in which we can currently obtain direct access to thenon-text information in patents, and that is in chemis-

try. At present, this depends upon the commercial infor-

mation industry and database producers creating the

appropriate connection tables, fragment codes or other

file representations for us to search chemical structures

or genetic sequences in a quasi-direct manner. Even

these systems struggle to cope directly with the subject

matter of US 4,966,911, granted in 1990, wherein claim1 reads (in part):

‘‘A method of regulating the immune system of a mam-malian host, comprising the step of administering to thehost a compound having an immunoregulatory confor-mation comprising an aromatic ring associated with twoatoms X1 and X2 selected individually from among oxy-gen, sulfur and nitrogen, the immunoregulatory confor-mation being defined as follows:

3:1 A <¼ D1 <¼ 4:1 A

2:4 A <¼ D2 <¼ 2:8 A

and

35� <¼ a <¼ 60�

wherein P1 = the plane defined by the aromatic ring-

D1 = the distance between the centers of plane P1 andatom X1 D2 = the distance between the centers of plane

P1 and atom X2. . . . . . . . .’’

In all other areas of technology, as searchers we rely

upon the text where available or the text representationswhere it is not; the non-text material is effectively

invisible.

7. A challenge for the patent application process

I believe that one challenge for the future has to be

the question of how the patent application process will

deal with electronic non-text material. Many industries

today are generating information in the course of their

R & D processes which has the potential to assist both

patent examiners and patent information specialists in

their job. If a gearbox manufacturer has used a CAD–

CAM system to develop a new vehicle transmission sys-

tem, does it really make sense to throw out all that data

and reduce it to a set of planar engineering drawings?

Would it not be much more efficient for the applicant

to be allowed to lodge a supplementary data package,such as a computer file or a hologram, which shows ex-

actly what the invention does? Provided that there were

agreed standards for the data interchange, it could save

enormous effort for the applicant and a great deal of

time and correspondence between examiner and appli-

cant during the examination stage. We could even find

ourselves back in the era of models, but packaged in a

much more economical way. Systems already exist forrapid prototyping of mechanical items [8]. These so-

called ‘‘three-dimensional printers’’ are capable of tak-

ing a relatively small data definition file and operating

a lathe-like or milling mechanism to produce an exact

replica of (for example) a vehicle component which

has been designed on-screen. Why not allow the appli-

cant to submit such a �print file� along with their conven-

tional application? If computer-based inventions orsoftware patents become universally acceptable, do we

really expect applicants to deposit millions of lines of

software code on paper in order to obtain a patent?

Of course not—they will be permitted to send it on a dis-

kette or file it over the Internet. So why should it then be

printed out for the purposes of disclosure in the unex-

amined application or the granted patent? In any event,

a mere listing of the program would be insufficient to en-able a patent examiner or searcher to distinguish be-

tween two inventions which achieve the same technical

effect by means of a different computer language. For

any examination against the prior art to be meaningful,

the case has to be understood in its entirety and for that

to happen efficiently, I suggest that we need to enable

applicants to lodge details of their invention in which-

ever format renders it most easily understandable, bothto examiner and to industry at large. Ultimately, exam-

iners are interested in the question ‘‘What is the inven-

tion?’’, not ‘‘How skillfully has this applicant described

their invention?’’.

8. Advantages for an improved patent system for the

21st Century

The ability to use three-dimensional representations

of an invention could enable a stronger patent system

to emerge. This is because the degree of information lossin the course of reducing the invention to paper would

be reduced. A hot topic in the IP law field at present,

in the wake of the US Supreme Court�s decision in the

Festo case [9] is the application of the doctrine of equiv-

alents. Yet three-dimensional disclosures could enable

applicants to define their inventions much more

102 S. Adams / World Patent Information 27 (2005) 99–103

effectively and hence reduce the doubt over what is or is

not technically equivalent. For example, if an applicant

could submit not only a primary genetic sequence, but

also a data package incorporating secondary structures

for the in vivo gene or protein, or the target active site,

this has the potential to enable a much better definitionof the invention and a much improved criteria for estab-

lishing infringement.

There are other potential advantages in moving to a

more paper-less application process. By allowing supple-

mentary machine-readable material to form part of an

application, and removing the requirement that this part

should be integral with the printed specification when it

is published, patent offices could eliminate many of thecurrent problems with genetic sequence patents, and

forestall anything similar happening in other technical

fields. The text portion of an application could be mini-

mised to only those parts which provide a useful written

description. The supplementary material package would

be deemed �published� by virtue of a front-page

announcement that it was available, together with infor-

mation concerning what open-source or industry-stan-dard tools are needed to utilise it. It is worth noting in

this context that the journal literature has already pro-

gressed in this direction. The earliest example was prob-

ably the Pergamon journal ‘‘Tetrahedron: Computer

Methodology’’ of the mid-1980s, which allowed deposit

of diskette materials. Several of the ACS journals ac-

cepted microform data tables in the 1980s and 1990s,

and today�s Elsevier ScienceDirect� system allows sup-plementary material such as movies, animation se-

quences and background data-sets to enhance the

electronic versions of published articles. There seems

no reason why the complete patent documents could

not consist of distinct machine-readable elements, per-

haps even stored in separate data repositories and only

merged into a �virtual publication� at the point of inspec-tion. The interested third party would be able to selectonly those elements which are meaningful for them.

Of course, such a proposal is likely to raise the objec-

tion that the application has been less-than-fully ‘‘laid

open to public inspection’’, in that the entire contents

are not immediately accessible to the average man in

the street. However, if reasonable care is taken to ensure

that all components of such a multi-media disclosure are

readily available to the most likely interested parties, (forexample, by ensuring that the required visualisation tool

is a de facto standard in the industry sector concerned), I

suspect that we would in fact be no further from ‘‘uni-

versal’’ disclosure than we are today. There has always

been some element of expert interpretation required in

the reading of published patent applications. If patent

applications are to develop in this way, I imagine that

further multi-lateral agreements, akin to the BudapestTreaty, will be needed. It is possible that the WIPO Sub-

stantive Patent Law Treaty, currently in the early stages

of discussion, would be a suitable vehicle with which to

take a step forward in modern techniques for handling

applications.

9. From whence cometh the new search tools needed?

From the point of view of the patent information spe-

cialist, this future will bring tremendous challenges. To-

day, the tools to search this sort of non-text disclosure

simply do not exist. We are faced with a perpetual

‘‘chicken or egg’’ situation. No patent office which val-

ues the strength of its examination will move to accept

electronic non-text material as a valid part of an appli-cation until they can be sure that prior art can be rigor-

ously identified—a good search underpins good

examination. On the other hand, no patent database

producer is going to invest in the technology required

to develop search tools of this nature until they are sure

that the patent offices intend to accept such material

within their applications. So both sides are hamstrung,

waiting for one another to act, and the enormous effi-ciencies which could be gained by moving away from

a paper-based system will be lost.

Investment in the type of tools which would permit

direct search of electronic non-text elements in mechan-

ical and electrical patents would have benefits even to-

day, even if the above scenario never comes to pass.

Today, we have retrieval systems which are capable of

mimicking the examiner�s rapid scan of the drawingsfrom a selection of patent documents (for example, some

of the features of EPOQUEnet at the EPO, or the image

scan provided in the Korean WIPS system). However,

the candidate answers are still generated on the basis

of text queries, not by direct search of the non-text ele-

ments. A true image or drawing search system would be

a huge step forward in this field.

10. Costs

What would it cost? Apart from the investment in re-

trieval and storage tools, there are likely to be some ini-

tial costs for the applicant. Consequently, a system of

electronic non-text disclosure would have—initially at

least—to be optional rather than mandatory. A multi-national manufacturer of televisions or washing ma-

chines might actually find that their ongoing costs could

be reduced, as they would re-use electronic information

generated during the invention process in their subse-

quent applications. However, the smaller applicant, with

less sophisticated research tools, should be allowed to

continue to provide two-dimensional drawings with

their application.Against the costs of developing input and search-and-

retrieval tools, we should consider the alternative—that

S. Adams / World Patent Information 27 (2005) 99–103 103

is, the perpetual cost of having to provide an application

which is totally backwards-compatible with paper. The

time may not be far away when this will cease to be

an acceptable method of operation and will become a

significant burden to the applicant.

11. An ongoing debate

This article has been strictly in the realms of specula-

tion, and given the speed with which image search sys-

tems are developing, I think it is unlikely that we will

see emergence of entirely new and effective search tools

for a generation or more. But it would be interestingto hear from the patent offices, from those searchers in

the technical fields who would most benefit, and from

database producers and system designers about the

practicality of such a development. It is not impossible

that patent information systems development could be

set to pioneer development work which will have impli-

cations across many other areas of information retrieval

in the future.

11.1. Note from Katherine Durack

In welcoming the contribution of this paper to the de-

bate, Katherine Durack also comments that in her cur-

rent research she is finding that �there is potentially

significant tension between the rhetorical goals of an

inventor and a patent agent or attorney as each drive to-ward different objectives.

The inventor, it seems to me, is focused on arriving at

a specific solution to a problem; the language he or she

uses to describe the invention will invariably reflect this

motive (assuming the inventor is one who is versed in

the kinds of scientific and technical prose a patent office

requires). The result (ideally) would be a clear, detailed

description of a concrete solution to a specific problemand often the kinds of prototypes (physical or digital)

that Stephen mentions.

In contrast, the attorney or agent is duty-bound to

help the inventor gain the widest possible scope for the

patent, and thus he or she begins with the specific solu-

tion defined by the inventor and seeks to broaden it.

This, it seems to me, results in the use of language that

is as abstract as possible.It may be that no matter the form of documentation

accepted, the tension between these goals would remain.

In a sense, the patent system pits the ethos of business

against the ethos of scientific and medical research,

and how one describes the scientific ‘‘property bound-

ary’’ is squarely at the center of the matter. Doubtless,

though, media richer than the printed page would con-

tribute to clarity in disclosure and in greater understand-ing among all interested parties.�

11.2. Editor�s comment

This is an interesting topic and one that is potentially

important as the nature and extent of the disclosures

made in both patents and other publications continues

to change quite rapidly. These changes are in line withthe development of the corresponding technology for

storing and retrieving data, for example as stationary

or moving images, as sounds, or in other forms, to ever

more sophisticated levels. We very much welcome fur-

ther contributions on this topic, which can be in the

form of short communications or as full papers.

References

[1] Durack KT. Tacit knowledge in patent applications: observations

on the value of models to early US Patent Office practice and

potential implications for the 21st century. World Patent Inf

2004;26(2):131–6.

[2] See, for example, references to the technique of content-based

image retrieval (CBIR), such as <www.cbir.org.uk> and research

at the Ecole Polytechnique Federale de Lausanne (EPFL) <http://

lbdwww.epfl.ch/e/research/iquest/>.

[3] Geradts Z. ‘‘Content based image retrieval from forensic image

databases’’. Doctoral Thesis, University of Utrecht, supported by

the Nederlands Forensisch Instituut. Delft: Ipskamp, 2002. ISBN

90-73053-03-X.

[4] King I, Jin Z. Integrated probability function and its application to

content-based image retrieval by relevance feedback. Pattern

Recognit 2003;36(9):2177–86.

[5] Eakins JP, Graham ME. Content-based Image Retrieval: A report

to the JISC Technology Applications Programme. Newcastle, UK:

Institute for Image Data Research, University of Northumbria at

Newcastle, January 1999 <http://www.unn.ac.uk/iidr/research/cbir/

report.html>.

[6] Shield Mark BV -v- Joost Kist (trading as MEMEX). European

Court of Justice, Case C-283/01, decision 27 November 2003. The

application was for the first 9 notes of Beethoven�s melody ‘‘Fur

Elise’’. The Court held that the representation ‘‘E, D#, E, D#,E, B,

D, C, A’’ lacked precision and clarity, whereas the full musical

stave complete with clef and notation would be an acceptable

representation for trade mark application.

[7] Lagemaat WG. Patent archives—the silent threat. World Patent Inf

2005;27(1):27–9.

[8] Some of the players in this field of technology include Z

Corporation, 3D Systems Inc. and Stratasys Inc.

[9] Festo Corp. -v- Shoketsu Kinzoku Kogyo Kabushiki Co., 535 US

722, 28 May 2002.

Stephen Adams is founder and managing

director of Magister Ltd., an information and

training consultancy specialising in patents

documentation. He trained as a chemist at the

University of Bristol, UK, followed by a

Masters degree in Information Science at City

University, London. He has worked in tech-

nical information since 1981, latterly with

Zeneca Agrochemicals (now Syngenta) as

their principal patent searcher until 1997. He

has also been the editor of ‘‘International

Packaging Abstracts’’, a techical searcher in the Ministry of Agricul-

ture, Fisheries & Food in the UK, and Chair of the Patent and Trade

Mark Group.