Analyze, visualize and understand patent families

© 2014 WissensWert Seminare Dr. Kirch-Verfuß
WissensWert Tutorial
How to analyze, visualize and understand patent families

Soft top
Hard top
Roof structure for convertible vehicle
Daimler-Benz AG DE 196 39 567 A1 26.09.1996

Transparent rear part
Roof structure for convertible vehicle
Daimler-Benz AG DE 196 39 567 A1 26.09.1996

Agenda
•What is a patent family?
•A simple patent family, priorities and different routes to patents
•What is all this for?
•A somewhat tricky simple patent family and the national familiy
•A complex family, multiple priorities and phantom family members
•An extended patent family, INPADOC and black sheeps
•The patent searcher‘s view

What is a patent family?

What is a Patent family?
•There is no definition of the patent family by intellectual property law.
•There is no ultimate definition of the patent family at all.
•Database producers define patent families for their own convenience. Steven Adams, Information Sources in Patents, 2006

Patent family – a definition
World Intellectual Property Organisation – WIPO A collection of published patent documents relating to the same invention, or to several inventions sharing a common aspect, that are published at different times in the same country or in different countries or regions. Each patent document in such a collection is normally based on the data for the application(s) on which the basis for its „priority right“ has been claimed. WIPO Handbook on industrial property information and documentation 2013 – Glossary of terms

Patent family – another definition
European Patent Office – EPO
A patent family is a collection of related patent applications covering the same or similar technical content.
EPO Virtual Classroom „Understanding Patent families at the EPO“ 10 October 2014

Patent family – the basis
Terms used to define patent families:
•Priority
•Patent application
•Patent publication
•Invention
•Technical content

A simple patent family, the concept of priority and different routes to patents

Example EP 0 832 774 First page
Application data
Priority data
Designated contracting states

Simple patent family – Definition
The set of patent documents protecting the (most likely) same invention filed in several countries which are related to each other by one common priority filing.
Within 12 months one or
more multinational filings
First filing of an invention = priority filing
Priority date
18 months
Publication of applications
Publication of granted patents

EPO Espacenet Bibliographic data EP 0 832 774
Equivalents or Simple patent family

EPO Espacenet INPADOC Patent family EP0832774

Simple Patent family EP 0 832 774
Publication number
Publication date
Application date
Type of document
EP 0832774 A1
01.04.1998
15.09.1997
Published application
EP 0832774 B1
26.04.2000
15.09.1997
Granted patent
DE 19639567 A1
16.04.1998
26.09.1996
Priority application
DE 19639567 C2
26.11.1998
26.09.1996
Granted patent
JP H10175448 AA
30.06.1998
26.09.1997
US 5988729 A
23.11.1999
26.09.1997
Granted patent
First publication
First application

Proquest – Derwent World Patent Index

Minesoft – Patbase Family Information

Simple Patent family EP 0 832 774
EP
97116015
Subseq. App.
US
93831297
Subseq. App.
JP
27798797
Subseq. App.
DE19639567A1
Published Appl.
EP832774A1 Published Appl.
US5988729A
Granted Patent
JPH10175448A
Published Appl.
DE19639567C1
Granted Patent
EP832774B1
Granted Patent
???
No Published
US Appl.
DE
19639567
Priority App.

Minesoft – Patbase Priority Relationship Diagramm

Simple Patent Family EP 0 832 774
DE Prio
EP
US
JP
DE A1
EP A1
US A
JP A
DE C1
EP B1
1996
2000
1997
1998
1999
Patent Family Timeline
…

Relecura Priority Map
Application Year

Questel Orbit Family Graph
Year of event

DE Prio
EP
US
JP
DE A1
EP A1
US A
JP A
DE C1
EP B1
1996
2000
1997
1998
1999
…
Dead
or
alive?
Registry information

DE Prio
EP
US
JP
DE A1
EP A1
US A
JP A
DE C1
EP B1
1996
2000
1997
1998
1999
JP ?
Rejected
Lapsed
Ceased
???
…

Minesoft – Patbase Legal Status Timeline
Event date

Patent
application
at the UK IPO
UK-Patent
Different routes to patent protection
Patent
application
at the DPMA
DE-Patent
Patent
application
at the USPTO
US-Patent
UK-Patent (EP)
Patent
application
at the INPI
FR-Patent
FR-Patent (EP)
Götting, Schwipps 2004
DE-Patent (EP)
Patent
application
at the EPO
Granted by DPMA
Granted by INPI
Granted by UK IPO
Granted by USPTO
EP-Patent
Granted by EPO
Validation by applicant in each of 38 member states
No national documents
are published – in general!
National
Regional

DE Prio
EP
US
JP
DE A1
EP A1
US A
JP A
DE C1
1996
2000
1997
1998
1999
JP ?
Rejected
Lapsed
Ceased
FR
GB
IT
SE
EP B1
…

New STN Family table
Designated states

DE Prio
EP
US
JP
DE A1
EP A1
US A
JP A
DE C1
1996
2000
1997
1998
1999
JP ?
Rejected
Lapsed
Ceased
FR
GB
IT
SE
?
?
?
?
EP B1
…

Patbase Legal Status Timeline

SIP – Invention Navigator Family Chart

DE Prio
EP
US
JP
DE A1
EP A1
US A
JP A
DE C1
1996
2000
1997
1998
1999
JP ?
Rejected
Lapsed
Ceased
FR
GB
IT
SE
EP B1
All dead!
…
Lapsed
Lapsed
Lapsed
Lapsed

What is all this for?

The applicant‘s viewpoint:
Within 12 months one or
more multinational filings
First filing of an invention = priority filing
Priority date
18 months
Publication of applications
Publication of granted patents
Prior Art

Patent offices‘ viewpoint:
•Simple patent family members can get joint IPC symbols in case reclassification has to be applied.
•Simple patent family members are automatically assigned the CPC symbol of the document that is first classified in CPC.
•Worksharing is under development between patent offices to reduce duplication of search and / or examination work. PPH – patent posecution highway

Patent database producers‘ viewpoint:
As long as all patent family members protect the (most likely) same invention, i.e. have one common priority,
the effort for abstracting and indexing can be reduced to one member of the family.

Competitive intelligence analyst‘s viewpoint:
•Competitor‘s patent portfolio
–the overall number of patents
–the international scope
•On a family bases
–the value as given by size of family, duration etc.
–the invention as claimed and as finally protected

Patent statistician‘s viewpoint:
•In general for economic and statistical studies inventions are counted.
•This is why counting of patent families is preferred over counting of single patent applications. Catalina Martinez, Insight into Different Types of Patent Families, 2010 http://dx.doi.org/10.1787/5kml97dr6ptl-en

Patent searcher‘s viewpoint:

A somewhat tricky simple patent family and the national patent family

Example WO 2006/039890 First page

Patent application at the CPO
UK-Patent
Different routes to patent protection
Patent
application
at the EPO
EP-Patent
Patent
application
at the USPTO
US-Patent
Patent
application
at the INPI
FR-Patent
Götting, Schwipps 2004
Granted by EPO
Granted by INPI
Granted by CPO
Granted by USPTO
International
National
PCT application at the WIPO
International search
Passed by WIPO to 140+ member states

EPO Espacenet Bibliographic data
www.thefabricator.com

EPO Espacenet INPADOC Patent family

?
?

Additional information in the Espacenet Priority data field

National patent family

National patent family – Definition
Patent family whose members are associated by coming from the same patent office and not necessarily sharing priorities.
Background:
Divisional applications, utility models, continuations, continuations in part or provisionals

SIP Invention Navigator Family Chart

Divisional application
•contains matter from a previously filed application (parent application),
•claims a smaller part of the parent invention,
•is filed later than the parent application,
•retains the parent's filing date and priority.
•Reason: Lack of unity of the parent

Minesoft – Patbase Legal Status Timeline
EPO Registry information: Observations by third parties
Oppositions filed

The plasma torch case
A somewhat tricky simple patent family
DE
WO
EP
DE U
DE div
National patent
family

Patent family statistics
An OECD study was published in 2010 with calculations on the distribution of the different patent families types in a given sample of about 45.000 patent families:
75 % of this sample were simple families.
Catalina Martinez, Insight into Different Types of Patent Families, 2010 http://dx.doi.org/10.1787/5kml97dr6ptl-en

A complex family, multiple priorities and phantom family members

A complex patent family

5 JP-Priorities
EPO Espacenet Bibliographic data

Background – Unity of invention
A patent application must relate to
•one invention only or to
•a group of inventions linked by a single inventive concept.

Complex patent family – Definition
Each member of the complex patent family has at least one priority in common with at least one other member.

5 JP-Priorities
A complex patent family
Simple patent family

5 JP-Priorities

EPO Espacenet INPADOC Patent family
4 JP Applications

Questel Orbit Timeline
4 JP Applications

Phantom family members
Phantom family members are patent applications that have never been published.
Background:
Provisional applications or withdrawn priority applications
Edlyn S. Simmons, “Black sheep” in the patent family, World Patent Information 31 (2009) 11-18

A/D Converter case
Complex patent family.
JP1
JP2
JP3
EP
JP4
JP5
US
DET
National patent family
Phantom family member

Extended patent family, INPADOC and black sheeps

Example
US 5 402 857 First page
Application data

Espacenet Bibliographic data US 5 402 857

EPO Espacenet INPADOC Patent family US 5 402 857

Extended patent family – Definition
•All the documents of an extended patent family are directly or indirectly linked via a priority document.
•The patents of an extended family can protect one or several somehow related inventions. The INPADOC patent family is a patent family based on this definition.

INPADOC Patent family US 5 402 857
US6
US2
US3
US4
US5
US1
US7
US8
US9
US10
US11
CA1
NL1
NO1
GB1
Simple
family 1
Sequence of US Continuations in Part

US Continuation in Part C-I-P
•Filed in case the inventor improved or expanded the original invention
•Contains new matter that was not present in the parent application
•With an additional priority date for the new matter that is the filing date of the C-I-P

US6
US2
US3
US4
US5
US1
US7
US8
US9
US10
US11
CA1
NL1
NO1
GB1
Simple
family 1
Sequence of US Continuations in Part
Sequence of improvements of the first invention

07/14 WissensWert Dr. Gabriele Kirch-Verfuß - 75 -
© by WissensWert Seminare ● Beratung – 2014 – Alle Rechte vorbehalten. Vervielfältigung, Aufführung und Verbreitung nur mit schriftlicher Genehmigung der WissensWert Unternehmensberatung
INPADOC Patent family US 5 402 857 in Espacenet

Black sheep in the patent family
Any patent that disrupts the construction of a patent family, e.g., with
•Typographical errors
•… Edlyn S. Simmons, “Black sheep” in the patent family, World Patent Information 31 (2009) 11-18

9
10

US6
US2
US3
US4
US5
US1
US7
US8
US9
US10
US11
CA1
NL1
NO1
GB1
Simple family 1
USX
Split the extended family into simple families

Espacenet US 5 839 251 – Bibliographic data
4

US6
US2
US3
US4
US5
US1
US7
US8
US9
US10
US11
CA1
NL1
NO1
GB1
Simple
family 1
USX
CA4
EP4
GB4
NO4
AU4
WO4
Simple
family 4

1
2
3
4
5
6
7
8
9
10
11

MaxVal
1
2
3
4
6
7
8
9
10
11
5
MaxVal Patent Family Tree

SIP Invention Navigator Family Chart
1
2
3
4
6
7
8
9
10
11
5

US6
US2
US3
US4
US5
US1
US7
US8
US9
US10
US11
CA1
GB1
NL1
NO1
Simple
family 1
USX
CA4
EP4
GB4
NO4
AU4
WO4
CA6
EP6
GB6
NO6
AU6
WO6
CA8
EP8
NO8
AU8
CA9
CA10
EP10
NO10
AU10
Simple
family 4
Simple
family 6
Simple
family 8
Simple
family 10

Total Patent Authority Analysis

Total Patent Authority + Kind Code Analysis
C2
A
B
C
T
T3
T2
T8
D1
A1
B1
A1
A4
A2
A3
D0
B
A
B2
B1
D0
A
A
A1
C
A
B1

Derwent World Patent Index DWPI Family
The Derwent patent family structure can be described as a "technical" or "artificial" patent family (WIPO guidelines).
One database record in Derwent WPI represents one invention and shows all the patent documents which Derwent has collected relating to that invention.
At Derwent patents are allocated to families on an individual basis.
 No 

Proquest Derwent World Patent Index
1

CCD Viewer Common Citation Document http://ccd.trilateral.net/20111223/
1

The patent searcher‘s view

•Less effort for keyword collection in different languages by analysing keywords across family members
•Less effort for collection of appropriate classification symbols by analysing classes across family members This works as long as the members of a patent family protect the same invention.

Some database providers allow for keyword and / or classification searching across family members data
Sometimes results might be suprising.

•One record per patent family in the results list  Less effort for relevance checking
•One member per relevant family for deeper analysis  Best language selection and less effort for reading This works as long as the members of a patent family protect the same invention.

•Citation analysis across all family members
•Get deeper insight into the technology
•Quality check when compared with search results

The Lens – Patent family data – Graphical analysis

TotalPatent Citation Map

If I could make three wishes …
•Do not confuse family trees by non-priority linking of family members.
•Reduce the amount of „Black sheeps“ for less falsification of patent families.
•Support splitting of extended families into simple families.

Summary
Cabriolet case
•Simple patent family
•European patents in families
•Legal status
DE Prio
EP
US
JP

Summary
The plasma torch case
DE
WO
EP
DE U
DE div
•Somehow tricky simple patent family
•Divisional application
•National patent family

Summary
US6
US2
US3
US4
US5
US1
US7
US8
US9
US10
US11
CA1
NL1
NO1
GB1
Simple family 1
USX
CA4
EP4
GB4
NO4
AU4
WO4
Simple family 4
Extended Patent family
Drill cuttings case

The worst case
PIUG web page: Global Record Breaking Patents
Category: Most family members
US20030060406 got
5402 family members
Source: STN
http://wiki.piug.org/display/PIUG/Global+Record+Breaking+Patents

Acknowledgements
Stephen Adams Edlyn S. Simmons Catalina Martinez
EPO FIZ Karlsruhe LexisNexis Minesoft Proquest Questel Relecura

Thank you for listening!
Contact:
WissensWert Seminare – Beratung
Dr. Gabriele Kirch-Verfuß
g.kirch-verfuss@wissenswert-wm.de
T: +49-2361-9040-273
www.wissenswert-wm.de
Subscribe to our newsletter: info@wissenswert-wm.de

Analyze, visualize and understand patent families

Recommended

Recommended

More Related Content

Similar to Analyze, visualize and understand patent families

Similar to Analyze, visualize and understand patent families (20)

More from Dr. Haxel Consult

More from Dr. Haxel Consult (20)

Recently uploaded

Recently uploaded (20)

Analyze, visualize and understand patent families