The Patent Cooperation Treaty’s “International Search System” is referred to as “IS”: PCT Article 15. Regarding International Search, various issues have been raised at WIPO’s PCT-related meetings, and I have faced several problems relating to IS personally. Before considering this issues, it is necessary to first consider “search in patent examination in general”. We must all be aware of the issues relating to the international patent search system.
Originally, the examination by the PTO is “the search for related prior patent documents” and the comparison / legal evaluation with the present invention based on related patent documents extracted by the search”. Therefore, the basis of enabling a “good examination” depends on carrying out a “highly quality search”.
In order to carry out high quality searches in examinations, the classification of inventions – “International Patent Classification”, referred to as IPC – was established in 1971 by the Strasbourg Agreement by WIPO, and is regulated globally. Therefore, PTOs will classify and conduct the search based on the IPC. In the case of Japan, based on the IPC, the JPO devised a unique search system called FI (file index) and F-term (File Forming Term) for examinations.
However, from a practical point of view, it must be said that the search itself in the examination has many issues to be resolved. Basically, based on the territorial principle, each PTO can conduct its own examination, but regarding the patent requirement of “novelty and inventive step”, the idea of “not known in the public in any country” is adopted, in every country . Therefore, ideally, it is desirable that the PTO should search all patent documents all of countries in the world. This is the principle.
However, this is infeasible / extremely challenging for several reasons. First, there is the issue of language. Since the patent documents of each country are issued in its local language, from the viewpoint of territorial principle, each PTO must first search the patent documents of the home country in that country’s language. When necessary, foreign documents should be examined through translated texts (as long as they are submitted as evidence in the objection or invalidation trial being filed).
Secondly, there is the ability of PTO examiners on the relevant foreign languages: reading and examining the foreign patent documents, interpreting them, etc. Furthermore, there has always existed the issue of sharing the information contained in the databases of patent documents of PTOs between countries. Each PTO has had its own database of patent documents, but from the technical and policy perspective, there have been obstacles on how to share data between countries, including, again, the issue of language barriers.
However, due to the development of machine translation technology and the progress of discussions on sharing examination data among the PTO’s of each country, now the five major PTOs (US, Japan, EPO, China, and Korea) have been involved in sharing the data of their bases.
Again, we must all be aware of the issues relating to the Patent Cooperation Treaty’s International Search system. In Japan, as a result, US patent documents, Chinese patent documents, etc. are now being cited as references for refusal of Japanese patent applications and when official actions are issued. However, cases of such data sharing and / or references in Korean, Latin languages and Russian are still rarely seen. This is the present situation of the sharing of databases between PTOs.