This document discusses patent families and how they are defined at the European Patent Office (EPO). It explains that the EPO supports two concepts of patent families: the simple patent family in DOCDB and the extended patent family in INPADOC. The simple patent family covers one invention, while the extended family covers a broader technology. It also describes what constitutes a priority and how priorities differ between the two concepts.

1. PATENT FAMILIES
in ESPACENET
LATIPAT - 6 November 2012

2. FULLTEXT FACSIMILE
EPO PATENT
INFORMATION
RESOURCE
DOCDB/XML
EPODOC EXTENDED WORLD WIDE EPO
FAMILIES LEGAL STATUS Patent
Information
Resource
EPO
Open REGISTER
Patent
Services
Commercial Global PATSTAT
Hosts Patent
Index
YO
U INPADOC
Worldwide
Legal Status
ESPACEne Fenny Versloot-Spoelstra

3. BIBLIO ENGLISH
ABSTRACTS
data abstracts
External
Contractors
CITED
REFERENCES
PATENT SIMPLE
publications patent families
National IPC/8 classes
Office
CPCNO CPC
Classifier
s
FI+ Fterm
USPC
 80.000.000 publications FULLTEXT
 120.000.000 cited references
EXTENDED LEGAL STATUS
 190.000.000 IPC/8 patent families
 385.000.000 classification allocations
FACSIMILE
 100.000.000 legal events
 100.000.000 facsimile images

4. PATENT FAMILIES in
ESPACENET
 What is a patent family
 What is a patent family at the EPO
 "Brains in gear"
Fenny Versloot-Spoelstra

5. Imagine

6. Wouldn't
that ...

7. PATENT FAMILIES HELP
 reduce work-load
 overcome language barriers
 find related inventions
 define geographical coverage
 identify technological trends
Fenny Versloot-Spoelstra

8. PEOPLE
Families of people
are related through bloodlines
Families of inventions
are related through priorities

9. PEOPLE
EXTENDED FAMILY SIMPLE FAMILY

10. PATENTS
PRIORITY PRIORITY PRIORITY
P1 P2 P3
DOCUMENT DOCUMENT DOCUMENT DOCUMENT
D1 D2 D3 D4
EXTENDED FAMILY SIMPLE FAMILY

11. WHAT IS A "PATENT FAMILY" ?
A set of patents taken in various countries
to protect one single invention.
Where the "priority right" of the first filing is
extended to subsequent filings in other countries"
Fenny Versloot-Spoelstra

12. WHAT IS A "PRIORITY" ?
"Right of priority" is a time-limited right triggered
by the first filing of an application for a patent.
To make use of the right of priority the applicant
must "claim the priority" of the first application
when filing a subsequent application.
Fenny Versloot-Spoelstra

13. WHAT IS A "PATENT FAMILY" @
EPO
EPO is supporting two patent family concepts
 DOCDB Simple Patent Family
 INPADOC Extended Patent Family
DOCDB SIMPLE
versus
INPADOC EXTENDED
Fenny Versloot-Spoelstra

14. WHAT IS A "PRIORITY" @ EPO
Every possible link is a "priority" at the EPO
 applications claimed under the Paris Convention
 US provisional applications claimed for priority
 previous applications claimed for :
 continuation
 continuation in part
 division
 references to an earlier PCT filing
Fenny Versloot-Spoelstra

15. DOCDB Simple versus INPADOC Extended
 DOCDB Simple Patent Family
 is covering one invention
 technical content covered is identical
 members have to have ALL priorities in common
with ALL other members
 INPADOC Extended Family
 is covering a technology
 might be slight differences in technical content
 members do not have to share more than ONE priority
with at least ONE other member, directly or indirectly
Fenny Versloot-Spoelstra

16. DOCDB Simple versus INPADOC Extended
 DOCDB Simple Patent Family
 most restrained definition of a patent family
 particularly suited for prior art search
 tailored to the needs of EPO examiners
 INPADOC Extended Family
 broadest definition of a patent family
 supports identification technological trends
 supports definition of geographical coverage
Fenny Versloot-Spoelstra

17. DOCDB Simple Patent Family
 Most restrained definition of a patent family
 Group of applications that cover ONE invention
 Only want to take significant links into account
 Only consider priorities that claim "first filing"
that claim first filing of new technical detail
Fenny Versloot-Spoelstra

18. ONLY THE SIGNIFICANT LINKS !!
Consider only those priorities that claim
 an application that is "first filing"
 an application that is equivalent to a "first filing"
 an application that is standing in for a "first filing"
That means : only priorities that claim
 under the Paris Convention [ INID 30 ]
 a US continuation in part [ INID 63 ]
 a US provisional application [ INID 30 ]
Fenny Versloot-Spoelstra

19. INPADOC Extended Patent Family
 Broadest definition of a patent family
 Group of applications that are related inventions
 Do not want to miss ONE single link
 Consider every possible link to be a "priority"
every application to application reference
Fenny Versloot-Spoelstra

20. EVERY LINK POSSIBLE !!
The usual suspects :
 applications claimed under the Paris Convention
 US provisional applications
But also ...
 domestic applications claimed for a continuation,
for a continuation in part, for a division
 reference to an earlier PCT filing [ INID 86 ]
Fenny Versloot-Spoelstra

21. BRAINS in GEAR !!
 First Filing
 Extended Patent Family
 US Continuation in Part
Fenny Versloot-Spoelstra

22. The "First Filing" is the mother of the invention
It discloses
new technical content
for the first time
Exercise [1] : US2008311819

23. Q.1 Q.2
first filing
Paris Convention
reference to earlier PCT

24. Q.3
"first filing"
DOCDB simple patent family

25. Q.4
NO references
to other applications

26. Q.5
NO priority on the first page
ONE priority in the bibliography
This is an artificial priority ...
... generated in anticipation of
subsequent filings in other countries
that claim the first filing
for right of priority

27. Q.6
... in order to
group applications
that cover one single invention
in one simple patent family
only consider significant links ...

28. artificial priority in anticipation
of subsequent filings in other
DK countries
that claim the first filing
20050000192 for right of priority
WO DK CA CN EP JP
2007065494 200500192 KR NO US
PCT route first filing national phase
not "significant"
within scope of
simple family EXTENDED FAMILY = SIMPLE FAMILY

29. EXTENDED PATENT FAMILY
A revolution in swimwear
by SPEEDO
Exercise [2] : GB2444804

30. Q.7
first publication formally
disclosing new technical detail
claiming TWO applications
for right of priority
so not THE first filing
these are THE first filings
announced in the gazette never
formally published

31. Q.8
Q.9
GB 20060025102 GB 20070006766 GB 20070006769
GB 2444804 GB 2444803 GB 2456682
Division of
[ claims divided out ]
SPORTS
SPORTS GARMENT SWIM CAP
GARMENT
AU AT AU
BR BR
CN CN
EP DK EP
JP KR ES JP
US EXTENDED FAMILY KR US
is a collection of
SIMPLE FAMILIES

32. GB 2444804
GB 2444803 A
NO new technical detail
"swim cap" already present in original filing
new technical detail only the claims have been "divided out"
GB 2456682

33. A "Continuation in Part" is like a first filing
It adds new technical detail
on top of an existing invention
Only in the U.S. of A !!
Exercise [3] : US20070011914

34. Q.10
references to
domestic applications
first filing

35. Q.11
artificial priority
in anticipation of
future domestic filings
referring to this application
every reference to
a domestic application
is a priority link

36. the first filing
is a
continuation in part of
is a
continuation in part of
is a
continuation in part of

37. Q.12
parent
grand-parent
great-grand-parent

38. US 11/182970 A US 11/195219 US 11/328593
in g s
L ac ge
d v itie
nd Ri s Ca
d r ed
r ou ise mbe s
pa Ra Me c es
ra Re
W
US 11/448967
r
e cto
o t
l Pr
ca
mi
a to
An

39. Fenny Versloot-Spoelstra
fversloot@epo.org
Patent Data Services
Support Team
patentdata@epo.org