Report:Orbit.com/Data Coverage/Patent Coverage/Legal Status Information

Legal Status Information

Two types of legal data are provided on Orbit.com: legal status data under the "Legal Status" tab (and through the Timeline tab for FamPat records) in the full record view and US patent litigation data under the IP Litigation module. Links to the national registers of some patent authorities are also provided under both the Legal Status tab and the "Published As" section of the Biblio tab in the full record view. Finally, additional legal services are available on the Orbit.com platform, such as European patent validation, legal status alerts, and patent file history orders.

Questel has also partnered with global IP case law database DARTS-IP, and Questel is planning to eventually release patent litigation/opposition tags that cover Asia, Europe, and the US, based on the data provided by DARTS-IP.^[1][2]

Legal Status Information

The Legal Status tab is available for FamPat, PlusPat, and Full Text patent records on Orbit.com. According to the Questel help file, legal status data is received from two main sources:^[3]

• Patent Register Service (PRS) of the EPO - The PRS Service covers various events occurring throughout the life of the patent for approximately 50 patent offices (see the table below). EPO Legal status actions are integrated into the worldwide collection of invention families with biblio fulltext (Fampat). These actions may be combined with other search criteria such as keywords, classification, patent assignee or patent country/office. EPO legal status actions aren't searchable in PlusPat or Full Text collections but may be displayed for PlusPat and Fulltext records.

PRS Legal Status Coverage from EPO (see this page on the Questel website for the most up-to-date PRS coverage chart)

- For Bulgaria, Belize, Belorussia, Croatia, Egypt, Georgia, Japan, Kenya, South Korea, Latvia, Malaysia, Mexico, Poland, Romania, Slovakia, Uzbekistan and South Africa, the database only contains information on entry into national phase of the corresponding PCT application.
-For Luxembourg, the database only covers the Supplementary Protection Certificates.

• Nomura Research Institute (NRI) in Japan - This organization provides legal status actions (examination, registration and appeal) for Japanese patents from 1964 and utility models from 1983. Note that a separate subscription is required to display the NRI JP Legal status. One may test NRI access by clicking the NRI link in the Legal Status tab. If the NRI window opens, one has access. NRI JP Legal status actions are not searchable, but a user may search JP numbers to display legal actions.

Select the NRI Legal status link to open the additional legal status data from NRI for JP publications. A separate subscription is needed to view the data.

The NRI data will appear in a separate window (with subscription). Select each colored box in the chart to view more detailed information in the right pane.

Under the Legal Status tab in the full record view, the legal status data for each family member is collapsed by default. The user can select the (+) icon to the left of each "Legal Details" heading to view the list of events for each family member. There is also an option at the top of the panel to "unfold all" (expand) or "fold all" (collapse) family member lists.

Legal events and status for all family members are displayed under the Legal Status tab.

The following information is displayed when the when the legal status data for a family member is "folded" (collapsed):^[3]

• Legal details for “publication number ”: concerns procedures from national patent offices
• Legal details for designated state « patent office code »: concerns patent offices designated by PCT procedure.
• Member state legal details for « patent office code »: concerns patent offices designated by EP procedure.
• EED: date of expiration - actual or expedted (format YYYY-MM-DD)
• State: dead or alive. It is the date of expiration (EED above) which determines state of patent.
• Status: seven types of status descriptions are available concerning the state of patent:
  • Expired: patent expired, did arrive at term for duration of protection, attributed Dead
  • Lapsed: patent lapsed, did not arrive at term for duration of protection, attributed Dead
  • Revoked: patent revoked, attributed Dead
  • Granted: patent granted, attributed Alive
  • Pending: patent application pending, attributed Alive
  • Restored: patent restored, attributed Alive
  • Unpublished: attributed Alive

When legal status data is "unfolded" (expanded) for a family member, the following information is displayed for each action in the list:

• Date of legal action or event.
• Description of the event, including whether the event was positive or negative.
• Addition information about the event, including corresponding country codes, application number, information from WIPO, etc.

All events listed under a family member are color coded as green (positive action), red (negative action), or white (neutral action).

Editor's Note:

The legal status tab previously listed a specific code for each legal event, which consisted of the patent office code followed by a specific legal status action code (EPO) and then an event group code defined by Questel. Questel created 16 event codes that grouped similar actions for the different patent offices:^[3]

• ADM – Administrative notifications
• CCL - Modifications of classification
• COR - Corrections, modifications
• ENP - Entry into national phase, translations (AP, EA, EP, OA, WO)
• EXM - Requests for examination, examination procedures and process, search reports
• DCS - Designated States
• LIC - License agreements
• NENP – Non Entry into national phase (WO, EP)
• NIF - Not in force, Lapse, expiration, forfeiture, refusal, withdrawal
• NMC – Change of names of applicant, title holders, inventors, others : opponents, requesters
• NOPP - No opposition registered
• OPP - Opposition, reexamination
• PIF - Payment of fees, in force, registrations, grants
• RAS - Reassignment
• RES - Restitution, restoration : in force
• SPC – Supplementary Protection Certificates, extension of term of duration of protection

These codes are no longer listed on the events in the Legal Status tab, but 11 of the 16 event group codes listed above are also listed as searchable fields on the FamPat fact sheet (two additional codes, RGR and RLW, are also listed in the fact sheet).^[4] It is therefore probable that these event codes are still applied to the legal status events on FamPat records, although the codes are no longer displayed under the Legal Status tab on the Orbit.com platform.

TimeLine Tab

The Timeline tab is displayed in the far right pane (with the Image/Drawing/First Page/Complete tabs) in the full record view for FamPat records only. This tool provides a graphic representation of the legal status for all family members over a period of time. According to the Questel help file:^[3]

Legal status events (from Legal status tab) are displayed in a timeline graph for each family member. Placing your cursor on a symbol displays a tooltip with event and number (filing, application, etc.). Placing your cursor on a color bar displays the event, number and date. Color signification is indicated under the graph.

In the screenshot below, the diamond symbols in the timeline appear to represent a new publication stage or beginning of a new legal status, while the small triangular icons represent additional events such as fee payment.

The Timeline tab, with a visualization displaying the legal status for all family members in a FamPat family over a period of time. Mousing over an icon or colored timeline bar displays a tooltip with additional information.

Editor's Note:

This display of legal status events in a timeline format is a unique visualization feature that isn't available on other major patent search platforms. This tool can be used to quickly see which family members were in force or lapsed at the same time.

Links to National Registers

An icon can be selected under both the Biblio tab and the Legal Status tab to open a new window displaying the national register data for a chosen family member. The icon is displayed under the "Links" column of the "Published As" section of the Biblio tab, and the icon is also displayed to the right of the legal details for a family member in the Legal Status tab.

Select the National Register icon beside the legal details under the Legal Status tab to view the patent data directly in the issuing authority's national register.

Selecting the icon will open a new browser tab or window that displays the national register website for the patent authority which issued the selected family member. When possible, the national register will automatically display the data for the selected publication, without the user needing to search the national register site at all.

Data for a publication viewed directly in the national register (in this case, CIPO).

According to the Questel user guide, links to patent authorities are provided for publications from WO, EP, US, AU, BE, BR, CA, CH, CN, DK, EA, EE, GB, GR, IL, IN, JP, KR, MA, NZ and PT.^[4]

IP Litigation Module

The IP Litigation module is a database available through a separate subscription on Orbit.com that provides litigation details for US patent cases. The data is sourced from Court's Electronic Case Filing System (ECFs) and the Public Access to Court Electronic Records (PACER). The collection covers US patent cases back to 2004 and is updated daily.^[5]

The advanced search of the IP Litigation module includes options to search by number, inventor or IPC classification. Users may also utilize a full text search to search dockets.^[5]

Case details include:^[5]

• Details of litigation, prosecution activities, arguments, complaints, recent dockets, patent, product and file history of the litigated patents
• Family INPADOC legal status details
• Counter claimant/defendant details, related cases, and the number of cases for each party
• Link to PACER

The case details view in the IP Litigation module (image from Questel website).

In the IP Litigation module, users may also view the following fields related to asserted patents:^[6]

• Family patent/Legal status (when available)
• File History (when available)
• Inventors
• Issue date
• Expected Expiration Date
• IPC code

The patent details view in the IP Litigation module (image from Questel website).

Relevant cases can be marked as favorites.^[5]

The following enhancements are planned for the IP Litigation module:^[6]

• Cases from 1980 to 2003
• CAFC - Court of Appeals for the Federal Circuit
• ITC - United States International Trade Commission
• Trademark Cases

Editor's Note:

Other patent search platforms include PACER data integrated with the US patent data available through the system, such as Courtlink on TotalPatent. TotalPatent even lists patent litigation cases related to a US publication directly in the full record, and users can view additional information on these cases via Courtlink for no extra cost.^[7]

DARTS-IP Partnership

In a 2012 presentation for the International Patent Information Conference and Exposition, Questel announced a partnership with the Global IP database DARTS-IP. According to the presentation, DARTS-IP has collected over 230,000 patent decisions from 1,200 courts around the world.^[1] DARTS-IP already covers patent litigation from Europe, and it plans to release additional collections for the US, China, Brazil, India, Australia, and more countries in late 2012 and 2013.^[1] Questel will eventually release new patent litigation/opposition tags (provided through the DARTS-IP data) that cover Asia, Europe, and the US.^[2] Testing indicates that these patent litigation/opposition tags don't appear to be available as of October 2012.

Additional Legal Services

Besides the legal status, national register links, and optional IP Litigation module, Questel provides some additional legal services accessible through the Orbit.com platform:

• Valipat: Users can order European Patent validations in each EP Member State.^[8]
• PatLegal: Users can receive alerts on any changes made in patent families, legal status and file histories from various patent offices (EP, Euro/PCTs, US, CA, CN, FR, DE, JP, KR, GB).^[9]
• Digipat: Users can order patent copies, US and foreign file histories, and special PTO documents on request.^[10]

Additional legal services (including the IP Litigation module) listed on the Orbit.com main menu.

Sources

1. ↑ ^{1.0 1.1 1.2} Garat, Renaud. "Questel's Latest Developments." Presentation for IPI CONFEX 2012 on Questel website, http://www.questel.com/customersupport/userdoc/presentations/IPI_2012_QUESTEL_PLENARY_SESSION.pdf. Accessed October 5, 2012.
2. ↑ ^{2.0 2.1} Iglesias, Miguel and Joe Terlizzi. "Questel Workshop: PIUG Conference - April 29th, 2012." PowerPoint presentation at PIUG Conference in Denver, Colorado on April 29th, 2012. Accessed May 30, 2012.
3. ↑ ^{3.0 3.1 3.2 3.3} "Search Module - Document view." Questel website, http://www.questel.com/imagination/orbit_help/prd/en/PatentPatentDocument.htm. Accessed October 1, 2012.
4. ↑ ^{4.0 4.1} Questel. "User Guide: Orbit, the Questel IP Portal." October 2011. Questel website, http://www.questel.com/customersupport/userdoc/orbit_documentation/Patent_module_user_guide_Xpert_Search_Questel.pdf. Accessed October 5, 2012.
5. ↑ ^{5.0 5.1 5.2 5.3} "IP LITIGATION." Questel website, http://www.questel.com/Prodsandservices/IP_Litigation.htm. Accessed October 3, 2012.
6. ↑ ^{6.0 6.1} "IP Litigation Faqs." Questel website, http://www.questel.com/Prodsandservices/IP_Litigation_faqs.htm. Accessed October 3, 2012.
7. ↑ "LexisNexis® TotalPatent™ User Guide." LexisNexis website, https://www.lexisnexis.com/totalpatent/retrieveHelpManual.do?lang=EN (restricted). Accessed May 10, 2012.
8. ↑ "Valipat." Questel website, http://www.questel.com/Prodsandservices/EP_Patent_Validation.htm. Accessed October 4, 2012.
9. ↑ "Watch Legal Status." Questel website, http://www.questel.com/Prodsandservices/EP_Patent_Validation.htm. Accessed October 4, 2012.
10. ↑ "Welcome to Digipat." Digipat website, http://www.digipat.com/en/. Accessed October 4, 2012.