The impact of the internet on prior-art searching in a patent environment

WorldPatent Information. Vol. IL). No. 2, pp. 95-107, 1997

0 1997 Elsevier Science Ltd. All rights reserved Printed in Great Britain

0172-2190/97 $17.00 + 0.00

Pergamon

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The Impact of the Internet on Prior-art Searching in a Patent Environment

W Verhulst, Director (Chemistry), EPO, The Hague, Netherlands

Introduction

This paper is based on part of a lecture delivered at the International Chemical Information conference held in Nimes in October 1996 and published in the proceedings of that conference. As such, some of the discussion is biased towards the chemical area.

In addition it should be noted that certain aspects covered in detail in the original paper are not reproduced here, particularly aspects of EPO case law and additional references to the EPOS legal documents (Conventions and Guidelines) for coming to the conclusions of point 1.6, as well as initiatives being taken by the EPO for the possible introduction of e-mail for correspondence with applicants, and the concept of possible combination of the Electronic Applications System (EASY) with Internet transmis- sion features.

Although most of the current Internet “hype” sur- rounds the World Wide Web (WWW), its most common use is for electronic communication or e-mail. The various patent oflices are actively investigating a number of possible uses for e-mail in the patenting procedure. However, there is an increasing interest both in the offices and outside in the use of the WWW for prior-art searching. This paper looks at some of the legal issues involved in the use of electronic data in a patent environment, especially in the area of prior art.

Legal considerations

Permanence of information on the Internet

Anyone with experience of the Internet will surely have discovered that finding something once on the Inter- net can be difficult, but finding it again might just prove impossible! The rapid development of the WWW, which shows no immediate sign of slowing, has brought a continuous avalanche of new ideas, features and possibilities, with the result that, particularly where there is a commercial incentive for attracting visitors to a site, continual efforts have to be made to revise, update and expand offerings, often in line with the latest in browser or related develop-

ments if a site is to become and remain “attractive”. Whist this updating usually involves additions to a site, it can also involve the moving or complete removal of information. Either of these two actions can and often does have the consequence that information that was accessed one day has disappeared without trace the next. Even where a particular Web page does not disappear, its contents may change at any time. Though such changes can also occur between successive editions of a conventionally published book, new editions are released at relatively wide intervals, and copies of earlier editions still remain available for consultation. On the Web, updates can occur weekly, daily, or even more rapidly, with no guarantee that “old” information can be retrieved again.

This lack of permanence has serious implications for the use of the Internet as a source of prior art. Two things must be ascertained about any disclosure that might be considered to be relevant prior art:

(1) what exactly has been disclosed:

(2) when was that disclosure made.

For a traditional printed disclosure, answering these two questions is usually straight forward. Study of a document will reveal its contents, whilst the date of publication is generally easily found. There are cases when finding the actual date of publication of a document is not so simple, or establishing the exact contents of a disclosure is not immediately possible due to the language of the original document, but such cases are rare, and the issues can usually be resolved without too great an effort. For disclosures made on the Inter- net however, it is not this simple for the following reasons:

(1)

(2)

Many Internet disclosures have no apparent “publication date”. Though the situation in this regard is improving, and much of the information now appearing on the WWW has a date associated with it, this is certainly not guaranteed, and for older material (pre-1995). it is more likely that there will be no date present.

Even when there is a date of publication given, there is no guarantee of the exact contents of the

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(3)

disclosure at the given date, and likewise no immediate way of knowing if the same disclosure, perhaps in a slightly modified form, was present before that date.

An Internet disclosure can be easily copied to a local computer and undetectably modified. As such, an apparently genuine copy of an Internet disclosure may in fact be a “fake”.

These problems are however not uniquely linked to prior-art searching, and are seen in many other areas where issues of authentication and non-repudiation of documents are important. Indeed, technical solutions to these problems are already available and have been implemented in some of these other areas. It is possible to “time stamp” a document using for example a one-way “hash” algorithm. Such an algorithm can be used to prove that the document existed at a given point of time, and that the document has not been subsequently modified. The only doubt that can be left is with the authenticity of the stamping procedure. For this reason, where such procedures are currently used, they are often performed by “trusted” third parties, or hashing service providers. Since the technical solutions already exist, what is required in the context of patent prior-art searching is the setting up of some form of hashing service for Internet documents that is likely to be acceptable to patent offices, patent courts, and clients alike. Such a service could perhaps be provided by a single body such as those that already exist for holding and distributing encryption keys, or could be performed at a company level by a “legally acceptable” third party. Such time stamping at a company level is not without precedent, parallels can clearly be drawn with the weekly “legal stamping” of laboratory notebooks performed to satisfy US first-to- invent considerations.

Legal status of Internet disclosure

The possibilities for global dissemination of information offered by the Internet have been widely welcomed, but these same possibilities have also raised a number of interesting legal questions relating to privacy, freedom of information and intellectual property issues. Of particular interest to those working in the area of Intellectual Property is the question of legal validity with respect to patent granting procedures of Internet publication (in its widest sense). Putmore simply, can something disclosed on the Inter- net be used as prior art? The speed with which Inter- net developments have occurred has created a “legal vacuum”, making it impossible to give a definitive answer to all aspects of this question. The European Patent Convention was drawn up before the Internet came into existence, and as such makes no specific provisions for this situation.

Some guidance can be obtained from a study of the Convention, the Guidelines for Examination and the

Guidelines for Opposition. European patents are granted for any invention which is new and involves an inventive step.

Article 54 of the Convention gives a definition of new:

An invention shall be considered to be new if it does not form part of the state of the art.

The definition of the state of the art can be found in Article 54 (2). Thus:

The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

Part C, Chapter IV, Section 5 of the Guidelines repeats this definition and adds the following comment:

The width of this definition should be noted. There are no restrictions whatever as to the geographical location where, or the language or manner in which the relevant information was made available to the public.

Part D, Chapter V, Section 3 of the Guidelines adds the following clarification:

3.1. State of the art made available to the public “by use or in any other way”,

and

3.1.1. Types of use and instances of state of the art made available in any other way.

The state of the art may also be made available to the public in other ways, as for example by demonstrating an object or process in specialist training courses or on television. Availability to the public in any other way also includes allpos- sibilities which technological progress may subsequently offer of making available the aspect of the state of the art concerned.

It is worth noting here that in Part B, Chapter VI of the Guidelines for Examination it is stated:

7. Matters of doubt in the state of the art

and

7.1 . . .the Search Divisions should not discard documents because of doubt as regards for example the exact date of publication or public availability, or the exact contents of an oral disclosure, exhibition, etc. to which such documents may refer. The Search Division should try

The Impact of the Internet on Prior-art Searching 97

to remove any doubt that may exist but should nevertheless always cite the documents concerned in the search report. Additional documents providing evidence in the matters of doubt may be cited.

Internet disclosure and oral disclosure

There are basically two possible types of Internet disclosure that, for some of the aspects under consideration, could be treated in an analogous manner to oral disclosures in the patent granting procedure.

the Internet document, it seems clear that it would be difficult for an applicant to prove that the printed disclosure did not correspond to the information as originally made available on the Internet. Where the applicant still disputed this assertion that the later published disclosure corresponded to the Internet disclosure, recourse could be made to the publishers for confirmation. In those instances where no such confirmation can be found, the Examining Division (or possibly the Board of Appeal) will have to make, on a case-by-case basis, an assessment of where the balance of probabilities lies.

Where the Internet citation is made with a supporting

document. For the Search Division, an oral disclosure is almost without exception uncovered as a result of retrieving an equivalent, often later published written disclosure. Such a written disclosure would normally be cited in its own right, with the oral disclosure generally only being cited in those cases where only the oral disclosure was made in due time, with the subsequent written disclosure being made too late to form part of the state of the art. In the context of an Internet disclosure, an analogous situation could occur for example where a journal is pre-published in electronic form, with an equivalent paper copy being available at a later date, or where the proceedings of an electronic conference are later made available in printed form. In view of what has been said above, it is clear that should the Search Division become aware of such an Internet disclosure, it must be included in the search report for consideration in the examination phase.

Where the Internet citation is made without a support-

ing document. While the PCT regulations relating to the ISA search procedure recognise oral disclosure only when substantiated by written disclosure, this is not the case in the European Patent Convention. It is thus quite possible for the Search Division to cite an oral disclosure with no supporting written or printed document. This situation is however extremely rare as it would basically require the member of the Search Divi- sion to act as witness to the oral disclosure. Where such a situation does occur more commonly is in examination or opposition proceedings, with testimonies of alleged oral disclosure being introduced by third parties. Given a possible future scenario where search examiners have access to the Internet however, it can be seen that the incidence of unsupported Inter- net disclosure will probably be higher than the current incidence of unsupported oral disclosure, and it is possible that the majority of Internet citations will be of this unsupported type.

Part C of the Guidelines in Chapter IV, Section 5.2, (relating to the question of oral disclosure), indicates

It is seen in the Guidelines for Opposition that the

that: crucial questions that must be answered for an Inter- net disclosure are the following:

In such cases, the examiner should start with the assumption that the (written) document gives a true account of the earlier lecture, display or other event and should therefore regard the earlier event as forming part of the “state of the art”. If however, the applicant gives sound reasons for contesting the truth of the account given in the document then again the examiner should not pursue the matter further.

(1) when the disclosure took place;

(2) what was disclosed; and

(3) was the disclosure made available to the public.

Though this section relates primarily to oral disclosure. an Internet citation could be considered to be either completely analogous to oral disclosure, or to be encompassed by the general terms display or other event. In either case, it is clear that the emphasis is placed on the applicant to show in some way that it is doubtful whether the later published written disclosure corresponds to information made available at the earlier date.

Taking the issues (I) and (2) together, it is clear that in light of the problems of permanence and consistency of the contents of Internet documents, proving exactly what was disclosed and on what date could be extremely difficult, particularly where the information is no longer available on the Internet. or where it might have been amended in the course of time. For an Inter- net disclosure not further confirmed by written disclosure, the Examining or Opposition Division or where appropriate the Board of Appeal will have to make a decision on these issues. Until some form of mutually agreeable solution to the problems of permanence and consistency is put in place, it seems inevitable that each case will have to be dealt with on its own merits.

Should the Examining Division have copies of both an Internet publication and a later published printed document having the same content and referring to

With issue (3) it is likely that there will also arise some cases of dispute as to whether or not an Internet

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disclosure was “made available to the public”. In light of the difficulties involved in retrieving information from the Internet, public availability might well be questioned on the grounds that there is no way of knowing a priori that a piece of information is likely to be, or is, actually available on the Internet.

It can be foreseen that at some stage, an applicant will argue that the fact that information was disclosed on the Internet, on for example a personal or university Web page as opposed to in a recognised electronic journal, does not necessarily mean that that information was made available to the public. Such argumenta- tion would likely be based upon the premise that in the lack of any centralised index system such information could only be retrieved in a fortuitous manner and as such should not be considered to form part of the state of the art. The same could be said however of publications such as sales brochures, specification sheets, operating manuals, and of prior use, all of which are considered to form part of the state of the art.

Though neither the convention, the implementing Rules nor the Guidelines appear to give a sufficiently explicit interpretation of this matter, some case law exists which gives a good indication that in this context an Internet disclosure should, for the time being, be considered to be publicly available.

Non-prejudicial disclosure

Under very exceptional circumstances it is possible that a disclosure that would normally form part of the state of the art, made within a period of six months prior to the date of filing of an application, can be considered according to Article 55 EPC to be non- prejudicial, i.e. not forming part of the state of the art. This article is intended amongst other things to address those instances where such a disclosure is made arising from an evident abuse in relation to the applicant. With widespread disquiet being felt regard- ing Internet security, or the lack thereof, the applicabil- ity of such a “safety clause” would seem to be increasingly important if a company is going to establish a presence on the Internet. It would appear however to be doubtful whether information stolen (hacked) from an applicants computer system or from communication across the Internet (using “sniffer” programmes for example), and either subsequently publicly disclosed within this six month time period, or introduced directly in Opposition or Appeal proceedings could be deemed non-prejudicial.

Evident abuse. The reason why disclosure of such information might not be deemed non-prejudicial can be found in the interpretation given to the phrase evident abuse as it appears in Article 55(l)(a). It should be noted when considering such issues, that no direct reference is made to the question of computer theft or hacking, or in fact to the theft and subsequent

disclosure of information generally, in either the Convention, the Guidelines or any existing Case Law (other than for the specific case where “theft” relates to the disclosure of information by parties having a specific relationship to the applicant).

The case law that does exist relating to this Article indicates that the state of mind of the abuser is crucial when considering if an evident abuse has occurred (though further case law however also indicates that even where there is no deliberate intention to harm, an evident abuse could have taken place).

As yet, there is no case law from which we can draw definitive conclusions relating to the question of evident abuse and how this phrase might be interpreted with regard to Internet-related cases. Factors other than the state of mind of the abuser may well also be taken into account, including for example the legisla- tion in the relevant state (is “hacking” a criminal act?), and the accessibility of the computer system from which the data came. Moreover, the inclusion of the six month proviso in Article 55(l)(a), means that even if for a particular case it was decided that there was an evident abuse, only those disclosures occurring within the prescribed time limit would be considered non-prejudicial and therefore not forming part of the state of the art, and only in respect to a patent application from the same (legal) person whose information has been disclosed without explicit consent (e.g. stolen).

Irrespective of the way that future case law might develop, it is clear that companies would be well advised to do all that they can to ensure the protec- tion of their own information, not only with a view to preventing the creation of prior art by which the pat- entability of their own application would be destroyed, but also in view of the fact that a third party could itself file an application based on such stolen information, in which case Article 61 EPC would become relevant.

Can e-mail constitute a disclosure?

Whilst the present discussion relates to Internet disclosure generally, the widespread use of the Inter- net for e-mail poses further questions.

The risks associated with the use of e-mail have been highly publicised. Whilst the vast majority of communications remain confidential throughout their pas- sage from sender to recipient, the apparent ease with which e-mail can be intercepted and read has prompted a number of authors to use a postcard analogy when considering its risks. Worse still, though trying to find useful information in a mailbag full of postcards would be a laborious and time consuming task for a human, collection and processing of information from e-mail communications would be a trivial and rapid task for a computer. Given the ease then with which e-mail

The Impact of the Internet on Prior-art Searching

can be read by third parties, does the mere action of sending an e-mail to a small targeted group of one or more recipients inherently make any information contained within that communication part of the state of the art?

Where such communication takes place between persons bound to secrecy (e.g. all working for the same company), then the information would not be considered to be publicly available and as such would not form part of the state of the art. Should, however, such an e-mail be intercepted and passed to third parties, then at this moment it would be considered publicly available and thus part of the state of the art.

Summary of the legal considerations

Whilst it is clear that there is increasing interest in legal aspects relating to the Internet generally, and to the validity of Internet disclosures in particular, it must be accepted that at present no complete and unequivo- cal answers can be given. The following conclusions can, however, be drawn relating to the situation as it stands today.

(1) There appears to be no reason why an Internet disclosure should be expressly excluded from the state of the art.

(2) Where such a disclosure is made with a supporting written document (published too late to be relevant in itself), the Internet disclosure will be taken into consideration as such unless the applicant can show it is likely that the written document does not correspond to the Internet document.

(3) Where such a disclosure is made with no supporting written document, establishing the exact content of the disclosure on a particular date will be crucial to its acceptance as belonging to the state of the art. This will be decided case by case on its merits, taking into account where the’bal- ante of probabilities lies.

(4) Any information available on or via the Internet (or otherwise) prior to six months before the filing of a European Patent cannot under any circumstances be considered to be non-prejudicial.

(5) Disclosure of information (on the Internet or otherwise) within the six month period prior to the European filing can only be deemed non- prejudicial where it is proven that evident abuse took place. Though there is as yet no case law relating specifically to the Internet, the standards developed by existing case law relating to “evident abuse” will also be applicable in this context.

(6) If no specific measures are taken to ensure the security and confidentiality of information being

either communicated over the Internet or acces- sible from the Internet, then it is likely that this information, should it be intercepted and passed to third parties, will be considered as a disclosure forming part of the state of the art.

(7) Furthermore, even where such security measures are in place, should they be defeated and the information be subsequently disclosed by whatever means, then this information will also be considered to form part of the state of the art.

The Internet as a prior-art source

There is no doubt that, if nothing else, there is a large amount of information available on the Internet. The mere presence of that information however is not in itself enough to make the Internet a useful resource for prior-art searching. If an assessment is to be made of the value of the Internet as an information resource in prior-art searching, account should be taken not simply of the amount of information that is present there, but also of the tools and techniques available for retrieving this information. Indeed, when considering whether or not to use a new information source of any kind for performing prior-art searches from one as general as the Internet to one as specific as a database relating, for example, solely to liquid crystals, there are a number of aspects to be assessed. These include both the quantity and quality of the information, and the efficiency and efficacy with which it can be retrieved and used, which must be considered not simply in isolation, but in comparison with information sources already in use in order to come to a definitive decision as to the value of the new source.

Before any assessment is attempted however. the exact nature of the search that has to be performed should be clarified. The primary objective of a prior-art search as performed at the EPO is to discover that state of the art which is relevant for the purpose of determining whether, and if so to what extent, the invention to which an application relates is new (or was so at the date of filing) and involves an inventive step. The search is required to be of high quality and all- embracing. with 100% completeness always being the goal, though in practice some consideration must be paid to the costs (particularly in terms of the time spent searching) of attaining this completeness, and their economic justification. As such, the searches performed are very specifically targeted, with effort and time being organised so as to ensure the discovery of almost all existing highly relevant prior art without incurring economically unacceptable costs.

There has been general acknowledgement in the past of the high quality of the prior-art searches performed at the EPO. This quality stems on the one hand from the huge investment made in the paper documentation and in the provision and use of electronic search

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tools, and on the other from the particular skills of the examiners themselves, acquired through a continuous process of learning and training, and focused on the execution of prior-art searches in a narrow technical field.

Quantity and quality

A major consideration must be whether a new information source provides additional information not available through any existing search means, or whether it merely provides information that is already available in some form. Although information that is already available should not be excluded without further consideration, additional information is of more interest with respect to the goal of achieving 100% completeness. In those cases where additional information is available, some assessment should be made of the amount of this additional information, before considering the remaining aspects.

The quality of the information that is available must also be considered, and this can be done from different perspectives.

Relevancy. When using a particular information source, it is import for that source to be relevant not just for the appropriate technical field, but also to the nature of the search being performed. For example, though a database on drug marketing, development and licensing is clearly of great relevance to pharmaceutical companies, its relevance in the context of a patent prior-art search, even in the field of organic chemistry or medical applications is very low and thus the quality of the information in this context is also low

Absolute quality. Scientists and engineers are typically used to working with information that has been published in reputable, peer-reviewed journals. Though this does not necessarily guarantee that the findings of any article will be reproducible in all other laboratories around the world, it does give at least some general consistency in style and manner of reporting such findings, and a certain amount of credibility to the information found therein.

Added value. Quality is also dependent on the amount of value-added material that is present (e.g. intellectually ascribed abstracts, indexing codes, keywords etc.). Generally speaking, the more added value the better, particularly when considering an alternative source for information that is already available. In this case, the presence of some extra added-value content may be crucial in deciding which source is best suited (i.e. gives the highest retrieval chances) for performing prior-art searches. It should be noted however, that for the following discussion, simple indexing of text is not considered to be added value, but is seen as a prerequisite for performing electronic searches.

Efficiency of retrieval and use

Where search and retrieval capabilities exist, their efficiency can also be considered from a number of different perspectives.

Efficiency of retrieval. If the quality of information from a particular source is low (either in terms of relevancy or absolute quality), it is likely that the efficiency of using that source will also be low in terms of retrieving ultimately useful information, irrespective of the quality of the indexing or search tools. Where the quality is of a sufficient degree, efficiency will be for the most part dependent on the quality and suitability for the task of the indexing and searching tools. An efficient system will give comprehensive retrieval with a high degree of relevancy, with less efficient systems performing worse in either or both of these respects. Given the importance of comprehensiveness in performing a prior-art search, it is perhaps more acceptable to compromise if necessary on relevancy than on completeness.

Efficiency of use. Once “hits” have been retrieved, the documents must be analysed to assess their relevance. In this respect, browsing of abstracts, preferably with drawings can be a very efficient method. The ability to view images (chemical structures, engineering drawings and the like) is often essential for understanding the contents of a technical document such as a patent. Analysis of full text, though less efficient as a first step, is also very important, though this should ideally be allied with the ability to move rapidly within such text to the most relevant passages with simultaneous display of drawings and embedded images. Ranking of results can also help to find the most relevant documents more quickly, but again it should be remembered that the search must be comprehensive, and as such all “hits” retrieved should in principle be investigated whatever their ranking. Efficiency of use is thus determined for the most part by the viewing and analysing tools, although it should be noted that particularly with reference to online searches, efficiency of both retrieval and use can also be adversely affected by “external” factors such as reli- ability and speed of communication, and hardware or software inadequacies.

Efficiency in terms of real cost. Efficiency of use and retrieval will both have a major influence on the real “cost” of a search, since this is determined to a large degree by the time taken for an examiner to perform a search. Other factors must however also be taken into account. These will vary depending on the nature of the information source, and include such things as the cost of providing access to the information source (initial set-up costs, maintenance costs, access costs etc.), the cost of the information itself, and the cost of training and support.


Efficiency in terms of real costs will always be the major factor in determining whether or not a new information source should be used, since this incorporates aspects of all the above considerations. No matter how much new information may be available from a particular source, if the quality of the information is so low that it prevents efficient retrieval, or if the tools available are not adequate for enabling efficient analysis of relevant information, then the time taken to perform what might ultimately be a high quality prior-art search will be too great to be justified in terms of real cost.

Current situation (with no Internet access)

For those not familiar with the search tools and data currently available to examiners working in the field of chemistry at the EPO, a very brief overview of what is available on the desk of each examiner follows.

Each examiner’s workstation is equipped with the full suite of EPOQUE applications, consisting basically of one search module and two display modules. For further information about EPOQUE, please refer to World Patent Information, 1996,18, 141-148 and World Patent Information, 1994, 16, 137-139, and to earlier articles cited therein.

Although the system provides a large amount of flex- ibility, a typical electronic search will begin with initial document selection (search) in EPOQUE Retrieval, resulting in anything from a few to hundreds of records. Documents retrieved can then be displayed, along with any available drawings in the EPOQUE Viewer for both rapid elimination of less relevant documents, and deeper study of, and navigation within, the full text of the more relevant ones, with the aim of reducing the number of documents that need to be viewed in full (facsimile) mode to a minimum (preferably below about 30).

Quantity of information (coverage). To give some idea of the coverage already available to examiners at the EPO, the following are the major databases used by examiners working in chemical fields:

Internal (in-house)

EPODOC 24 million patents WPI 7.5 million records PAJ 4 million patents Beilstein XFIRE Text 2.5 million patents

Erternal (commercial hosts)

Chemical Abstracts patent + non-patent Biosis non-patent Medline non-patent Embase non-patent

Other major in-house databases include INSPEC and IBM TDB (IBM Technical Disclosure Bulletins, 80,000 documents in full-text form). In addition to these major databases, there are a number of other generally smaller more specialised databases available both in-house and on the commercial hosts, which are used extensively, but each only by a small group of people.

As can be seen above, the coverage of patent information is close to comprehensive. The three patent abstract databases (EPODOC, WPI and PAJ) cover patents issued by all the major industrial countries, with further countries (falling outside the coverage of the EPO’s paper collection) and additional information (titles and abstracts) being continually added. The full-text databases should, once complete, provide comprehensive coverage (one patent per family) for the period from 1970 onwards, with complimentary drawings, and the BNS collection already contains full facsimile copies of over 24 million patents dating back in some areas to the 19th century. Additional, more chemically orientated coverage of patent literature is provided by the text and structure searching possibilities offered by both Beilstein XFIRE, which gives in particular good coverage of older patent (pre 1970) documents, and Chemical Abstracts.

Coverage of non-patent literature for those working in chemical fields is currently provided for the most part by use of the external online databases shown in the table above. For the organic chemist, Chemical Abstracts is the single most useful source of information, whereas for those working in areas such as applied chemistry, pharmaceuticals or biotechnology, some of the other databases listed above, and a number of other more specialised databases see more use. In addition, the in-house XFIRE database once again gives coverage that is supplementary to Chemical Abstracts for the period post 1967. and perhaps more importantly complementary, before that time. More extensive in-house coverage of non-patent literature is likely to be seen in the near future. In addition to the existing IBM TDB full-text database, a database containing the full text of 130 journals published by Elsevier has recently been made available to all examiners, this being just the first of a number of similar full- text databases to follow soon covering journals produced by other publishing houses, with whom agreements have already been concluded.

Although the present coverage already far exceeds the PCT minimum documentation, the EPO is constantly investigating new possibilities for increasing the comprehensiveness of its coverage, with a view to better serving the industrial property world. In this context, it is hoped that appropriate use of the Inter- net may conceivably increase the scope (and thus the quality) of searches to include at least some part of the literature, such as university theses, newspaper articles, company advertisements and chemical catalogues not currently covered.

Quality of information. The relevancy of all the currently used information sources is very high. The patent databases are by their very nature highly relevant, and the non-patent databases, though containing some information for example of a purely theoretical nature, contain much information relevant to prior-art patent searches. The absolute quality of the information from

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these sources is also very high. Finally, with the exception of the in-house full-text databases, all the databases offer a large amount of added-value material, in the form of intellectual assigned codes and classification symbols, abstracts, keywords, index terms and so on. This value-added material is crucial to the quality of the searches performed at the EPO, and further intellectually assigned classes, codes, indexing terms and free text are continually being added to new and existing documents in the in-house databases. Likewise, the use of indexing terms, codes and in particular of course Chemical Abstract Registry numbers is also an integral part of many searches performed by those working in chemistry and related fields.


Efficiency of retrieval. The sophisticated query language used by EPOQUE, including such features as simultaneous left- and right-hand truncation, proximity operators, numerical range searching and multiple memories, in combination with the value- added material outlined above enables comprehensive retrieval of documents having a high degree of relevancy. Even when searching in the full-text databases, where relevancy tends generally to be reduced, the ability to crossfile between the different databases means that a broad answer set can first be created in one or more of the abstract databases, and then transferred to the full-text databases for further limita- tion using any number of keywords.

Efficiency of use. Results obtained by a search in EPOQUE Retrieval can subsequently be analysed in a number of ways. EPOQUE Retrieval itself offers various text-based display possibilities, ranging from simple listing of all results, to a result-by-result in-context display of the terms used for retrieval. Results can be sorted or ranked in an attempt to see the most relevant documents first. Where such text- based display is inadequate for assessing the potential value of the documents, it is possible to transfer the results of an Internal search to the EPOQUE Viewer, where any combination of one or more abstracts, parts of the full text, the first-page figure or all the figures of a document can be viewed. Sophisticated navigation tools provided by the Viewer facilitate direct access to selected parts of the full text (e.g. the description of a figure). Study of these selected text parts, in conjunction with the images, enables rapid identification of potentially relevant documents, particularly in mechanically orientated fields. Although until now it has not been possible to view embedded images in the Viewer, this facility (which is of great value to those working in fields where chemical structures are important) is currently in a test phase and will be added to a future version of the Viewer. In the meantime, documents having such embedded images can also be displayed as facsimile copies of the original document in the BNS Viewer where pages can be rapidly “flipped”. As all non-patent literature cur-

rently being ordered by examiners is routinely scanned before being forwarded to the examiner, the BNS Viewer can also be used to view non-patent literature documents retrieved and ordered (for example after a search in Chemical Abstracts), and in the future it will also be used to view any documents from journals that are available in-house in facsimile form.

Efficiency in terms of real cost. The high quality of the information, combined with tools specifically developed and optimised for the performance of prior- art searches, has inevitably resulted in a cost-effective system. In some particular areas the introduction of this system has resulted in a marked increase in productivity. Even in those areas once believed to be less suited to searching online, productivity increases have also been observed, whilst still maintaining at least the quality of the “pure paper” search.

Situation as it might be with Internet access

Having set the above situation as a baseline, some consideration can now be given as to what access to the Internet could offer.

Quantity of information (coverage). For non-patent literature, the main sources of information currently available to examiners offer coverage of a wide range of conventionally published scientific literature. Since it is unlikely that there will be much direct overlap between the information that is available on the Inter- net and that which is available in these publications, it is clear that access to the Internet will provide, at least for non-patent literature, mostly additional information. The situation for patent literature is rather different. Although the last year has seen an increase in the availability of patent information on the Internet, all of this information is already available to examiners either in-house or in commercially available databases, and as such it does not represent additional information, but rather an alternative way to access the same information.

The additional information can come from a number of sources, some of which are given below. This separa- tion of sources serves to highlight the diverse nature of both the information and the manner of its presentation on the Internet. Such diversity precludes a simple global assessment being made of quality and efficiency, and as such some specific attention will be paid to the following areas:

electronic journals; electronic conferences; specialised databases; mailing lists; news groups; and general WWW pages.

Quality of information

Relevancy. In general, the relevancy of information on the Internet is very low. Only a small percentage of


the information has any scientific content, and even here, much of the information is likely to be of little relevance to patent prior-art searches. There are however, some discrete “areas” that can be identified as offering the chance of greater relevancy.

There are a number of electronic journals and conferences which in isolation can be considered to be highly relevant. Examples of these are the journal Molecules (published by Springer Electronic Media) covering synthetic and natural product chemistry, and the Electronic Glycoscience Conference which was held on the Web for the second time in September 1996. Other electronic journals such as the Journal of Molecular

Modelling, though they may be highly reputable Inter- net publications, will be of less relevance to patent prior-art searching due to the highly theoretical bias of their content. Some of the specialised databases, such as the fullerenes database could prove to be highly relevant to an examiner working in a particular narrow technical field, whilst other specialised databases such as those relating to materials safety, whilst perhaps being very valuable in other contexts, are again of low relevance for a patent prior-art search.

Mailing lists and news groups, though not having perhaps the highest relevancy associated with the specific journals and databases exemplified above, generally focus on a specific topic, and thus may in cases such as the sci.chem news groups offer a high degree of relevancy. Web pages generally represent a source of low relevance. The vast majority of information freely published on Web pages has no relevance whatsoever for patent prior-art searching, and there is no inherent mechanism (subject grouping, pre-defined sections etc.) for isolating more relevant information.

Absolute quality. Generally there is little guarantee as to the quality of information that is published. That is not to say that quality material is not present, simply that it can be difficult to know in advance what the quality of a particular source might be.

With electronic journals, it seems from current experi- ences that the quality can be expected to be high. Ultimately, the quality of electronic journals might even become higher than that of traditionally published journals due to the extra possibilities offered by electronic publishing. These include for example the pre-publishing of articles for comment or criti- cism (peer review taken to the extreme), or the ability to include large amounts of supporting data that would not be present in a traditionally published journal. Similarly, the quality of an electronic conference might also be expected to be as high if not higher than that of a conventional conference. Discussion can take place over a more extended period of time (as there are no hotel bills to pay) and there is no limit to the number of “attendees”. It is difticult to make any general observations about specialised databases. Clearly the quality of the existing patent databases on

the Internet should be the same as that of the equivalent databases available on the commercial online hosts or in the EPO’s own in-house databases. The quality of other databases might however be expected to be rather lower, particularly if they are made freely available on the Internet for no extra cost.

It is possible that some of the information disclosed in the mailing lists and News groups could be of a very high quality. Though the way the information is presented is not very amenable to searching, there will likely be discussions taking place in such groups between highly qualified academics that could not or would not take place under any other circumstances. For general Web pages, the quality is again very vari- able and difficult to predict, though it might be expected that a page put up and maintained by a renowned university chemistry department for example would contain information of a higher quality than unsolicited publications by a single individual.

Added value. This is perhaps where the Internet is at its weakest. Although most of the information that is currently used has high added-value content, this is either added in-house (classification symbols, indexing codes etc.) or is added, at a price, by an information provider. Such added value is unlikely to be found on the Internet, particularly for information for which no extra charge is being made.

Since electronic journals and conferences represent primary information sources, there will be little or no value-added content, just as there is little or none in the conventionally published equivalents. Specialised databases on the other hand may contain some added value content, as can be seen from the STN’s Chemi- cal Patents Plus. However, this database is more likely to be an exception than the rule, since it is basically a copy of a database that is commercially available on the STN host (it should also be noted that only search and initial display in this Internet version of the database are available at no cost, display of full text and images is charged for). It is unlikely that databases with such a high added-value content will become available on the Internet where there is no such equivalent available on the commercial hosts. With both mailing lists and news groups, and general Web pages. there will be again be little or no added- value content, since these are effectively primary publications.


When considering efficiency with respect to prior-art searching on the Internet, there are a number of global considerations to take into account, before looking at the specifics relating to the various information sources.

Problems related to the speed of communication that can be achieved using the Internet, and apparent or

104 W. Verhulst

actual lack of availability of sites are well known. Communication speed on the Internet is a classic example of a chain only being as strong as its weakest link - no matter how fast your local access might be, there can be times when the actual communication speed falls to unacceptably low levels. It must be hoped that in the medium to long term, developments such as increases in the capacity of the phone lines that form the backbone of the Internet outpacing the increase in the amount of traffic passing along those lines, will lead to an improvement in this aspect of the Internet. In the meantime however, this lack of speed represents a serious impediment to the use of the Inter- net in performing prior-art searches.

In the absence of any comprehensive indexing system (i.e. more than a simple table of contents, author index or the like) electronic journals and conferences should be considered in the same light as their conventional equivalents, i.e. performing prior-art searches in them would be so inefficient that it is no longer efficacious. For specialised databases, the very fact that this information is available in the form of a database, should certainly make retrieval possible. The efficiency of a search will, however, vary from database to database, within the general constraints outlined above. As such, it is difficult to make any assessment of efficiency in these cases. Some of the search engines discussed below in the context of general Web pages also index mailing lists and news groups, so reference should also be made to this section. However, as they stand, in the absence of this “generalised indexing”, these groups again suffer from the problem of lack of indexing, and thus though they may well contain relevant information, cannot as such be considered to be useful in the performance of a prior-art search.

Although the “searching by browsing” approach of the Web has probably been the single most important factor in the explosive growth of Internet use, this technique is clearly unsuitable for performing targeted searches. This fact has not gone unnoticed, and a number of companies now seem to be making a very good living out of “indexing the Web”, thereby turn- ing the vast number of disparate pages of information into a massive pseudo- or perhaps virtual database, making it possible to really search for information on the Web rather than relying purely on serendipitous browsing. Search engines such as Lycos, Znfoseek and Alta Vista enable the user to perform searches in an index of words drawn from millions of Web pages. Such a search generally yields a set of hypertext links, ranked in order of relevance, which point to the original source documents. Whilst such searches may be fine for retrieving some documents on a broad topic such as patent law, results are disappointing when trying to perform a prior-art search relating to the contents of a particular patent application. The presence of these search engines however, necessitates some more detailed discussion of their efficiency.

Efficiency of retrieval. Searching Web pages using one of these engines has the same problems as searching in any other full-text database: answer sets tend to be large, and relevancy is low. Given that the search is necessarily limited to those Web pages that the service provider has chosen or been able to index, it is also advisable to perform the same search using as many of the search engines as possible. Even then, it should be realised that the indexing is text based, and the querying possibilities are certainly not as flexible (truncation, proximity operators, complicated Boolean logic) as those of the commercial online hosts with which most information specialists are familiar.

Efficiency of use. Results from these searches are given as a set of hypertext links, from which it is often not possible to assess the real value of the document. To make any further assessment of the value of the document, it is necessary to use the hypertext link to go to the original source. Only at this stage can it be established how relevant (or irrelevant) the document is, with this operation necessarily being repeated individually for each of the often large number) of retrieved results. Some of these problems can be overcome with a certain amount of patience, and increasing experience of the search system. It is sometimes possible, for example, to specify that searches should only be performed on main pages of a Web site rather than the whole site, thereby potentially increasing the relevancy (at the expense of comprehensiveness). Fuzzy proximity operators such as near can increase the relevancy, and searching in pre-defined subject areas (such as the chemistry section of Yahoo!) can also serve as a useful initial filter to increase relevancy. Finally, applications such as Quarterdeck’s Web Compass are designed to simplify the process of searching using multiple search engines, enabling one query to be searched using multiple search engines, to produce one composite result list.

Efficiency in terms of real cost. Given all the problems outlined above, relating to quality of information, and efficiency of retrieval and use, it is clear that the apparently “free” information on the Web may not be so cheap after all. Taking into account the time required for even an experienced Internet user to perform any form of comprehensive search, the real cost of performing prior-art searches on the Web is currently unacceptably high. This fact is further highlighted by balancing the costs of performing such a search with the chances that a more relevant document will be found during an Internet search than with the currently used highly optimised search, retrieval and display tools.

Summary of the Internet as prior-art source

In light of all that is said above, it would seem that the following conclusions can be drawn.

The Impact of the Internet on Prior-art Searching I05

(I) Currently the value of the Internet and access thereto, in relation to its cost effectiveness for contributing to state-of-the-art searches does not warrant the general introduction of Internet access for search examiners working at the EPO.

(2) The major problem appears to lie not so much with the quantity or quality of the information itself, but rather with the tools and methods that are currently available for retrieving that information.

(3) Though these opinions are drawn from the perspective of the EPO, we believe that the same conclusions will almost certainly be drawn in any other environment where prior-art searches are being performed. Far from being an information source of choice, the Internet would appear to be suitable only as a supplement, or even a last resow t for this type of search.

With the exception of some of the specific databases mentioned above, the only possible way of performing a state-of-the-art search of information stored on the Internet, is through the use of one (or more) of the services offering Web searches, which are clearly far from optimised for the task of retrieving chemical information generally, let alone chemical information in the context of a prior-art search.

Present conclusions and future prospects

From the previous sections, it would be tempting to come to the following, rather negative, conclusions about the value of the Internet in the context of the requirements of a patent office, and simply dismiss its use u priori:

l it is a poor resource for prior-art searching;

0 even if a relevant disclosure is found there today. it may not be there tomorrow;

0 even if the disclosure is “permanent”, there may still be difficulties in proving its legal validity;

0 e-mail seems like a good idea - but not if everyone else is reading it too; and

l being on the Internet is like keeping your secrets in a safe with the door open.

Whilst all these facts might currently be true to a greater or lesser extent, what is beyond doubt is that the Internet contains valuable information, is still growing rapidly, and its advanced communication protocols and facilities will define the face of computing in the 21st century. The Internet is here to stay, and nobody can afford to ignore it.

Addressing the problems

With this in mind, rather than focusing on the negative aspects of the Internet as it is now, I wish to conclude by offering a proposal for positive and crea- tive approaches for improving the situation in the future, and by considering what the role of the EPO might be in this improvement process.

Making the Internet suitable for prior-art searching: c( chemistry home page. An ideal solution to most if not all of the problems that have been discussed at length in this document, would see the setting up by a central body of a single definitive Chemistry Home Page, with links to other chemically relevant sites (roughly equivalent to the subject coverage currently seen for conventional literature in Chemical Abstracts and Bio- sis) preferably with some sort of hierarchy or structure facilitating direct access to the most relevant sites. [The Internet: A Guide for Chemists. edited by S. Bachrach, represents. at least in paper form, a very complete collection of chemistry resources on the Internet. and also illustrates an in-house chemistry home page provided for chemists at Rohm and Haas.] New sites with chemical content could “register” for inclusion on this home page, and all users could also be encour- aged to submit the uniform resource locators (URLs) of any such sites not yet registered. In conjunction with this chemistry homepage, a standard forum could be provided for pre-publication, review and final publication of chemical literature on the Internet. By “centralising” the electronic publication of literature in this way, formal standards could be set up and maintained and quality could be assured, thus providing a single reputable source of chemical literature on the Internet.

Setting up such a system will certainly require cooperation on a large scale between chemical companies, universities, patent offices and the other information providers, and require substantial finances. Failing to Set up such a SySteIII Will greatly retard the progress of dissemination of chemistry information on the Inter- net, and may well prevent it from ever being a useful resource for prior-art searching. Searching for chemical information on the Internet in the 21st century without such a system in place will be rather like searching for chemical information in 1997 without the existence of Chemical Abstracts.

The permanence problem. Preventing a disclosure from “disappearing” would be quite simple if there was a central body overseeing chemistry on the Internet, since such a body could ensure the permanent storage of any new chemical information appearing on the Inter- net (at least on the recognised chemistry sites), thus providing a central archive, or electronic library. Time stamping could also be performed by this body, thus overcoming all the problems.

An early attempt to implement some of these ideas based on a proposal originating at the EPO and called

106 W. Verhulst

Internet Watch was announced by Derwent at their European Subscribers Meeting in 1995. The aim of this project was to investigate the possibilities (initially in a small part of the telecommunications field) of retrieving relevant documents from the Internet, providing a permanent archive and time-stamping facility for these documents, and making their contents searchable in a conventional value-added database. Whilst initial developments seemed promising, we are aware from a personal communication that the project has been cancelled. Should, however, such a project be backed by a wider consortium representing all the interested parties, it is likely that the problems encountered could be overcome.

The legal problem. Assuming that the permanence/ authenticity problem can be solved (see above) it is our firm belief that there is no reason why an Internet disclosure should be treated any differently than a paper document with respect to considerations relating to the state of the art.

The security problem. Internet security, be it relating to e-mail or to information stored on computer systems linked to the Internet, is not a problem exclusive to chemists or patent searchers. What should be stressed though is the importance of awareness of the potential problems in relation to intellectual property, not just at a corporate or information services level, but at the level of individual users. In this respect, the USPTO’s Office Automation Services Guide appears to set a good example, keeping individual users informed of their responsibilities and giving clear and explicit instructions and advice as to what is and what is not considered acceptable behaviour when using automated systems that connect with the Internet.

Is future cooperation realistic?

Is it realistic to expect that the level of cooperation that would be required to set up such a central body and structure will ever exist, either for chemistry or indeed for any other technical fields?

We are aware of a number of initiatives suggesting that such cooperation might be possible. For example:

The BIOSCI home page, maintaining an archive and index of all BlOSCIlbionet news-group post- ings.

Trilateral Project 14.6 (EPO, JPO and USPTO) examining all aspects of the potential benefits of the Internet for the three offices.

The IDC was founded by a consortium of companies in the chemical industry in response to the increase in chemical literature that had to be dealt with by in-house information services. Its aim was to collect, evaluate and distribute

specialised chemical information amongst the participating companies.

l EAGLE (the European Cooperation for Access to Grey Literature) manages a database (SIGLE, System for Information on Grey Literature in Europe), which was created by libraries and documentation centres throughout Europe to help solve the problem of obtaining hard-to-acquire literature such as reports and doctoral theses. Through cooperation in 13 European countries, this otherwise “unknown” literature is now systematically available worldwide.

l The “Studie Commissie”, a working platform on Intellectual Property for Dutch Industry has set up an ad hoc working group to investigate the consequences of the Internet in the field of intellectual property in general, and patents in particular.

What can the EPO do now and in the future?

In the current absence of any such cooperation on the Internet, the EPO could unilaterally take a construc- tive first step: some of above proposals for a chemistry homepage could be executed locally on a smaller scale. With presently available software, it would be possible for an examiner having Internet access to set up his own local chemistry homepage as a starting point for prior-art searches with links to sites offering information relevant to his own particular specialisation. An index of all the information on these sites could be created, and storing copies of the original information on a local server would both guarantee permanent access to that information and provide an opportunity for electronic time stamping, at least in terms of the date that it was captured and was stored locally.

Setting up and maintaining such a system would, however, be a very time-consuming exercise, and it is unlikely that such efforts by individual examiners could be economically justified. Making the results of these efforts available not just to a single examiner, but to a number of examiners working in the same or related technical fields, by converting the information to a form suitable for use with our current EPOQUE/BNS tools could reduce the economic drawbacks, but this step would again require additional work and thus it is still unlikely that such actions could prove to be economically viable across all technological fields.

A further avenue for cooperation

Although it might not be economically feasible for the EPO, or indeed any other single organisation, to try and index all the chemistry on the Internet, cooperation could redress this economic imbalance. A number of interested parties working together could share the work involved, thereby making indexing chemistry on


the Internet a viable proposition. Towards this end, given that the information has come from the Internet and is inherently in a form suited to access via an Intranet as opposed to the EPO’s proprietary systems, the captured information could be stored on a Web server, making it available across such an Intranet to anyone equipped with a suitable browser, with the added advantage that it could be accessed using any browser running on any operating system. This platform independence would also make ,it easier to make available and to exchange information with our partners in the various common projects.

Even with, for example, the trilateral partners (EPO, USPTO and JPO) working together, the amount of work involved would probably still make selection and indexing of relevant information on the Internet for all technological areas too costly. However, if chemical companies, patent offices and any other interested parties could come to an agreement on distribution of the work involved, and the standards of selection, indexing, abstracting and value-adding required, the desired result could perhaps be achieved with little or no duplication of effort. Information stored on any number of local Intranets could be linked via the Inter- net while appearing to searchers as one single homogenous resource. And such cooperation could go even further. Currently most companies and patent offices have proprietary systems for search, retrieval and storage of information. If this vision of a future InterneNntranet-based world proves to be realistic, then while information might remain proprietary, access to it could be through use of a common, completely platform independent browser, familiar to anyone who has used a computer-containing appli- ance.

To some, the above scenario might seem unrealistic, but it is clear that computers, communication and information dissemination are now inextricably linked with the Internet. Whether using network computers (Web PCs) or a future browser-based operating system on a normal PC, quick and easy access to information, regardless of its origin, using one common user interface is the goal, and the Internet, with its various standards and protocols could make this attainable. If

we accept this picture as being realistic. then it is prudent for the EPO to prepare itself for this future. In this sense, setting up a prototype Intranet offering capture, time stamping, further processing and searching of information coming from the Internet, would provide invaluable experience for both examiners and information-systems staff alike and could represent a first step in preparing for future cooperation.

The question remains however - will the spirit of cooperation extend as far as exchanging and sharing if not all then much proprietary information, in the same way that information and resources are freely shared across the Internet in many academic areas today?

Since finalising the original document three interesting developments have been announced in the chemistry home page area:

(1)

(2)

(3)

ChemCenter from the American Chemical Society;

ChemWeb from MDL Information Systems and the Current Science Group; and

ScienceDirect from Elsevier Science.

Though each of the three developments incorporates some of the features of the “ideal” home page, it is clear that the companies involved are each approach- ing the same problem with solutions coming from their own respective areas of expertise, and with a view to the business opportunities and profit that could be made from setting up the definitive Internet chemistry resource.

A&nuwtledg~~~~entS - Far from being the work of one single person. this document is the result of many hours of interesting and thought- provoking discussion. debate and consultation with colleagues both in Munich and The Hague. I am therefore deeply indebted to all those who have given advice and assistance. particularly on legal matters and on some of the more technical aspects of the Internet without whom it could not have been written. The opinions expressed in this document should, however, in no way be taken as representing the position of the European Patent Office, or of DG I. the Principal Directorate for Search. These opinions. though influenced by discussions with others within the EPO, ultimately represent my own views, and any advice or conclusions found here should be read in this context.