Report:Thomson Innovation/Data Coverage/Patent Coverage/Legal Status Information

Legal Status Information

The legal status information in Innovation is extensive, particularly for the United States (US), European Patent Office (EP) and Native Japanese Patent collections. Typically patent search engines offer at least access to the INPADOC legal status file, which is produced by the European Patent Office (EPO). Innovation goes beyond that coverage with national US data feeds that relate to the re-assignments, post-issuance activity, filed litigation, and maintenance fee status of patents in the collection, and EP data on procedural status, oppositions to published patents, and licensing agreements. The native-language Japanese collection includes Japanese examination information, Japanese registration and post-registration legal status, and trial and appeal information.

INPADOC Legal Status

The INPADOC legal status database is one worldwide source of legal status data from over 60 countries. However, the database producer is reliant upon the national patent offices to provide this data in a timely manner. In addition, the database is only updated once a week, and so may not be as current as a national register.

Legal status codes used by the EPO are defined and specific, and may differ by country because of differences in patent law. The codes are assigned a specific color to correspond to their result in the Family Legal Status Report: black for neutral, green for positive (moving closer to grant/coverage), red for negative (moving closer to rejection/expiry/abandonment).

Date range searching is not permitted in the INPADOC legal data – however searching on a specific date is allowed. Users can also search based on legal status impact (neutral, positive, or negative). INPADOC legal status information became available for Japanese publications in January 2012, and the data released by the EPO at that time went back to April 2011.^[1]

EP Procedural Status Data

This data is limited to EP collections only. It provides information of process/procedure steps that have been completed for this patent.^[1] A link is available on the record view to the requested record on the EPO website (European Patent Register) to see any additional changes in the status of this patent.^[1] The latest updates for EP procedural status information are listed in the Collection Coverage & Updates chart. Date range searching isn't permitted in this field.

EP Licensee Data

This data is limited to EP collections only. It provides the name of any company who subsequently licensed the patented technology, along with the license date (date range searching isn't permitted). This collection is unusual among comparable search engines, and represents one more advantage to Innovation. The source of this data, as well as the update schedule and publication delay for this information is not known.

EP Opposition Data

The opposition data is limited to the EP collections only. In the European patent system, for certain period of time after a patent has been granted, third parties are able to file “oppositions” to show that they believe that the patent should not be granted. Innovation displays opposition data, including the date filed (date range searching isn't permitted), the opposing party, and the opposition attorney.^[1] The source for this data is the European Patent Office, and the data is also available (in more detail) via the EPO's Patent Register service, including the addresses of the opposed parties and the future dates when the opposition hearing will be held. Data about the content or basis for opposition is not given. Updates to this information are not known, but should be consistent with updates to EP procedural status information.

US Litigation

The litigation data in Innovation is limited to US patents only. It comes from Westlaw®, another Thomson Reuters-owned database.^[1] According to the Thomson Innovation help file, the information is derived and compiled from the electronic filings of the federal district courts and updated on Thomson Innovation weekly. The time from informational availability from the courts to information availability on Thomson Innovation can be from 1-6 days.^[1] It provides information about subsequent court cases that have been filed relating to the subject patent. Users can search this field by plaintiff, defendant, court, litigation filing date, litigation docket number, or subsequent action.^[1] Date range searching is not possible in this field.

US Maintenance Status Data

US maintenance fee status data is provided for the US collection. The source for this data is the US patent office, although this information is not as timely as the data loaded in the USPTO Patent Application Information Retrieval system (PAIR); for any important maintenance fee status investigations, PAIR should always be consulted. There is no link to PAIR from the Innovation website, probably because security practices at the USPTO would not permit Thomson Reuters to develop an automatic-query system like the one it has established for users to check EP procedural status. This data is updated on a weekly basis (usually Tuesdays), and the latest updates for US maintenance status information are listed in the Collection Coverage & Updates chart.^[1]

US Post-Issuance

Post issuance activity data is available for the US collection. The data is received from the USPTO on a weekly basis.^[1] f This field provides details of any activity that occurred on this patent after it was issued, and the following entries may be displayed in the US post-issuance data:^[1]

• Adverse decision
• Certificate of correction
• Delayed maintenance fee
• Disclaimer Filed (Terminal Disclaimer)
• Expiration
• Notices of litigation
• Reexamination request
• Reissue statement

This field is not a default record view field, and users must select to see the data on the record view through the record view Preferences.

US Reassignment Data

These fields show data related to the re-assignment or new ownership of US patents after they are issued. When patents change hands, reporting this event to the USPTO is voluntary. Therefore, re-assignment records kept by the USPTO cannot be complete, but are still a valuable resource despite this limitation. This collection is provided by the USPTO, and the data is updated on a weekly basis (usually Fridays).^[1] The Collection Coverage & Updates chart lists the earliest and most current record dates, as well as the most recent update and next scheduled update for US reassignment data.^[1] The Reel-Frame term refers to the reel and frame number of the microfiche these files were originally kept on. Newer reassignments are not actually transferred to microfiche, but they are still given reel-frame numbers as accession numbers, to keep the collection standardized. It should be noted that date range searching is not permitted for ths field.^[1]

Japanese Examination Information

This information is available only in the native-language Japanese collection on Thomson Innovation, and is part of a separate subscription package than the other legal status fields described on this page. This field contains broad information relative to the examination of a Japanese patent application, and it can be searched by sub-field, including:^[1]

• Kind of Examination
• Examination Request Date
• Kind of Final Decision
• Final Decision Dispatch Date
• Kind of Disposition in Exam
• Disposition in Exam Date
• Examination Additional Information

Searching the primary field (Examination) automatically searches all sub fields.^[1]

Japanese Registration and Post Registration Legal Status

This information is available only in the native-language Japanese collection on Thomson Innovation, and is part of a separate subscription package than the other legal status fields described on this page. It contains "information relative to the registration and post-registration of patent/utilities applications" and can be searched by subfield, including:^[1]

• Registration Number
• Registration Date
• Final Date of Duration
• Cancelation Classification
• Date of Cancelation of Rights
• Register Closing Date
• Registration/Post-Registration Additional Information

Searching the primary field (Registration) automatically searches all sub fields.^[1]

Japanese Trial and Appeal

This information is available only in the native-language Japanese collection on Thomson Innovation, and is part of a separate subscription package than the other legal status fields described on this page. It contains "information on any trials and appeals processes involving a patent" in Japan and can be searched by subfield, including:^[1]

• Trial/Appeal Number
• Date of Demand
• Trial/Appeal Type
• Demandant
• Defendant
• Opponent
• Trial/Appeal Decision
• Trial/Appeal Decision Date
• Final Disposition
• Final Disposition Date

Searching the primary field (Trial and Appeal) automatically searches all sub fields.^[1]

Editor's Note:

Thomson Innovation has greatly improved the search options for legal status information within the native-language Japanese collection. Users are now able to search legal status fields and subfields ((Examination, Registration and Post Registration, Trial and Appeal) within the collection. The fields can be searched in two ways, according to the Thomson Innovation help file:^[2]

• Selecting a checkbox on the fielded search
• Using the “has=XX” syntax in the Query Previewer or expert search form, where XX is the field tag

Selecting this checkbox (or using the has= syntax) returns all records that have any data entered in the searched field.

Editor's Note:

Especially with regard to US litigation data, these collections show the advantage of using a product from an established information provider like Thomson Reuters for patent searching: data from other products such as Westlaw can be incorporated for the user at little inconvenience to the provider. The inclusion of native Japanese collections with examination, registration, post-registration, trial, and appeal data is another notable advantage.

For the purposes of “Watched Records” (discussed in the Alerts, section, below), users should note that the INPADOC legal status data in this system is not as timely or reliable as the data accessible through USPTO PAIR website or the EPO's European Patent Register service.

In addition, users should be aware that Westlaw is only one of multiple industry-wide litigation databases, and thus placing a watch through Innovation may not be the most reliable way to monitor a patent for subsequent litigation.

Sources

1. ↑ ^{1.00 1.01 1.02 1.03 1.04 1.05 1.06 1.07 1.08 1.09 1.10 1.11 1.12 1.13 1.14 1.15 1.16 1.17 1.18} "Patent Fields (and Tags)." Thomson Innovation website, http://www.thomsoninnovation.com/tip-innovation/support/help/patent_fields.htm#translation_of. Accessed September 4, 2012.
2. ↑ "Release Notes." Thomson Innovation website, http://www.thomsoninnovation.com/tip-innovation/support/help/release_notes.htm. Accessed September 6, 2012.