The section heads group is currently investigating searching and retrieval of patent documents for ISR’s from the Internet. The purpose is to ensure that the best practice is achieved from our use of the Internet. It is expected that a number of Internet sites will be thoroughly investigated and best practice in their use for searching and retrieval will be identified.

As a temporary measure, the section heads group recommend the following as current best practice to examiners for ‘obtaining’ for ISR’s the full text of published patent documents.

Definitions

By ‘obtaining’, is meant viewing the full text of the patent document on-line, printing the full text on-line, or ordering the patent document from ES&S.

For the purpose of this document a distinction is made between a ‘text’ form and an ‘image’ form of the patent document. A ‘text’ form is one comprising text only, without columns, page, and line numbers of the published paper document. Drawings and chemical formulae are not present in the ‘text’ document. On the other hand, an ‘image’ form is an electronic photocopy of the published paper patent document. Drawings and chemical formulae are present in the ‘image’ version.

Practice

Based on the information available at present, we have identified the following as current best practice has been identified. (Examiners should remember that these recommendations are merely reflective of our current understanding about the Internet and may be modified later). The expectation is that examiners will follow current best practice. The starting point for this practice is when examiners, having completed an abstract search, have a short list of abstracts for which they want to obtain full specifications for detailed culling.

Paper copies on file

The current practice of placing paper copies of the 'image' versions of the citations on file remains unchanged. ‘Image’ versions of patent documents are currently much slower to view and print as compared to the ‘text’ version of the document.

Ordering from ES&S

Examiners should continue to order all the documents from ES&S where they have any doubts about the value of using the Internet.

Culling on line

Examiners should only cull from ‘text’. If the examiner needs to view drawings or chemical formulae then retrieval of the full documents from ES&S is recommended.

This issue of culling on line is currently being looked at and further advice will be given in due course. However, at this stage, it is clear that it would be a waste of examiner time to cull using the ‘image’ version of the document.

Printing on line

Printing of the image from the Internet is more efficient than retrieval from ES&S in the following circumstances.

if only a few documents are required to be printed for the ISR report,
if there are only a few pages in each document,

Espace is the recommended site because it is the only site that examiners currently have access to capable of providing high quality for ‘image’ retrieval.

Flow Chart

A flow chart of the current process for obtaining documents for ISR’s is attached.

Observations

The following observations about the 3 major Internet sites are also made:

The IBM site is currently not suitable for obtaining full text documents because of the poor quality of its images and because its prints contain site references.
Currently the USPTO full ‘text’ site provides ‘text’ versions of US patents from 1975 without drawings or chemical formulae. While ‘image’ versions are becoming available, the site is not yet reliable.
Espace has full ‘image’ versions including drawings and chemical formulae of EP, WO and US since 1920. The database contains an English language abstract of the patent document from 1975. From 1975, the full text of the patent may come either as ‘text’ and/or as ‘images’ but prior documents may be only available as ‘images’. The image version is as good as the quality obtained from ES&S. The image version is a clean copy in that it does not contain any site references on its pages.

A number of patent sites including USPTO and Espace are currently being looked at in detail. When these investigations are complete, the above practice will be reviewed.