Improved Tools for IP Practitioners and Inventors

davidreedDavid Reed - December 2010

One of the more daunting tasks for any patent practitioner is to conduct a thorough search of the prior art. There are databases available that can help; some are available at no charge, while others are fee based. One of the more useful data services is that provided by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. WIPO is a specialized agency of the United Nations and is charged with administering many of the international IP treaties, including the Paris Convention, the Patent Cooperation Treaty, the Hague Treaty on Designs, the Madrid Protocol on trademarks, the Berne Convention on copyrights, the Budapest Treaty on deposits of microorganisms, etc. Visiting the WIPO website one will find an expanding array of information that is very helpful. The recently inaugurated WIPO Gold service (http://www.wipo.int/wipogold/) provides a one-stop site where interested parties can link to information on patents, trademarks, domain names, designs, WIPO statistics relating to patents, trademarks, utility models, designs, plant varieties and microorganisms. Additionally, there are links to the individual IP laws in most countries of the world. WIPO Gold should be the first stop for anyone searching IP issues around the world.

 

One link is particularly useful for patent practitioners and inventors, PATENTSCOPE®. PATENTSCOPE® has been in existence for some time and has traditionally been the search engine for the PCT publication database. Through PATENTSCOPE® someone searching for information on published PCT applications had the ability to quickly find the publications of interest through the logical search engine. Additionally, searchers had the ability to browse through the PCT publications on a weekly basis just to see "what's new." As useful as PATENTSCOPE® was, until recently it was limited to searching PCT publications. Over the past months, WIPO has completely revamped the PATENTSCOPE® site and added some very useful new features.   The older PATENTSCOPE® search page is still available, although it is being phased out. Searchers looking for the traditional PCT database search can still go to www.wipo.int/pctdb/ and find the familiar site. However, by "clicking" the link at the top of the traditional page or by going through WIPO Gold or directly to www.wipo.int/patentscope/search/en/search.jsf, the new (and soon to be only) PATENTSCOPE® search page will open. The first thing a visitor will note is that the search service now goes way beyond published PCT applications. A growing list of national patent collections can now be searched via PATENTSCOPE®, including ARIPO, Cuba, Argentina, Republic of Korea, Mexico, Singapore, Vietnam, South Africa, Israel, Morocco, Spain and Brazil. The searcher can select one or all of these countries and have the search engine look at all these relevant databases.

 

The new search facility can search these collections for a wide range of bibliographic information as well as a full text search for key words of interest. If you have used or are familiar with the old version of PATENTSCOPE®, please be aware that the field identifiers for the new version are different from the old identifiers. Be sure to review the "HELP" tab for instruction on how to use the new system and formulate your search.

 

The newest feature of PATENTSCOPE® is multi-language searching. If one goes to the SEARCH tab and clicks on "Cross Lingual Expansion" in the drop-down menu, the system gives the searcher the option of entering the search query in one language (currently only available for queries in English, French, German, Spanish and Japanese) and having the system do a machine translation of the query and search the available national databases in the appropriate language. The cross-lingual feature is new and continues to be tested and expanded. The announcement of this feature and helpful links can be found in the PCT Newsletters for May, 2010 (www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_05.pdf).Further announcements on expansion of WIPO's search services can be found on the WIPO website as well as in future issues of the PCT Newsletter.

 

The information and searching needs of the IP community continue to grow and WIPO is responding to those needs with new services such as WIPO Gold and expanded and enhanced services such as PATENTSCOPE®. Any inventor or IP practitioner not familiar with the information available on the WIPO website, including those discussed above, would do themselves a favor by exploring the website and learning of all the valuable information available and all free of charge.

 

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RANDALL MARUSYK

Partner


Randall is a partner of the firm and has been certified as a specialist in all areas of Canadian IP Law.
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