This post is one part of a multi-part series on web sites helpful in patent work. It will be updated with links to other parts, as they become available. Quick links to: part one, part two.
Espacenet is a wonderfully versatile site. Among its many features, three are particularly notable:
- field-based queries for patents worldwide, which can help you to search for prior art when evaluating your own inventions, or help you to monitor a competitor’s patent portfolio
- copies of original patent documents, globally, including foreign and US patent documents, downloadable in both plain-text and pdf format
- internal filewrapper documents, known as the “Global Dossier”, as exchanged between the Applicant and each different national patent office, during the course of prosecution in the national patent office
It’s this last feature that’s the focus of part two of this series. With this feature, you can access the basic documents that lead to the issuance of patents in most any country in the world. Interested in a Japanese patent? Espacenet gives you access to all documents exchanged between the Applicant and the JPO, including the specifaction and drawings as originally filed in the JPO, as well as all documents (such as Reasons for Refusals and amendments) exchanged between the Applicant and the JPO. Same for Germany and Korea and China and Spain — most countries of the world. It’s an impressive collection of information.
What’s more, translations of all these documents are also available. The translations are machine-generated, but in general the quality is good.
For What Purpose
Why, you might ask, would anyone be interested in the Global Dossier? Particularly if we see a competitor has an issued patent (or a pending application) here in the US, everything happening at the USPTO can already be accessed at the USPTO PAIR site, as dicussed in Part I. Who cares, therefore, about Japan or Korea?
One answer is that there are often inconsistent positions taken by other patent offices throughout the world, and these inconsistencies can often point to weaknesses. Likewise, the Applicant itself might take inconsistent positions when responding to objections and rejections, and these are also telling and important.
As a hypothetical, let’s say that the Applicant breezed through the application process here in the US, and obtained a patent without any real difficulties. Other countries might be an entirely different story. In Japan, for example, the Japanese Examiner might have found particularly pertinent art, not cited or considered by the US Examiner. The actions taken by the Applicant in Japan could thus have significant impact on the validity and enforceability of the counterpart US patent.
For purposes of explanation, we will look at the same arbitrary patent as that in Part I, Apple’s slide-to-unlock patent, U.S. Patent No. 8,046,721, whose formal title is “Unlocking a device by performing gestures on an unlock image”.
From the Espacenet opening screen, enter the patent number and click “Search”. Espacenet responds with all documents that match the search criteria, which in this case is exactly one single document, as shown below.
Clicking on the document leads to “Bibliographic Data” for the document. All manner of information is listed there, including Inventors and Applicants, filing and issue dates, and priority dates and numbers. There is also a brief Abstract, typically displayed together with a representative image from the drawings.
From this page, the menu at the upper left leads you to different information about the document. You can download plain-text of the specification, or a pdf copy of the original document itself. You could check on legal status, or find all documents cited during prosecution, or all other patents that might have cited this one during their prosecution.
But for purposes of this part two of the series, we are interested in the “INPADOC Patent Family”, highlighted in green above. Click there to see all patents and published applications, worldwide, that are counterparts to Apple’s US patent:
The Global Dossier
Wow, there are a lot of worldwide counterparts: 40 to be exact. Many of them include a “Global Dossier” icon, and for those, we can gain additional insight into what happened at the corresponding national patent office.
Let’s see what happened in the Japanese Patent Office. Scrolling down a bit, to the document listed at #22, we see that on 28 June 2013 the JPO issued a patent, JP 5303699, based on Japanese Application No. 2013-007818. Clicking the Global Dossier link next to this patent — the link looks like –brings up a list of papers exchanged between the Applicant and the JPO.
Again, there are quite a few listings, including the interesting listing from 11 March 2013 (11.03.2013). This listing shows that the JPO issued Reasons For Refusal. We can access a pdf of the Reasons For Refusal just by clicking the link, which gives us the following pdf document:
But of course it’s in Japanese. You can generally understand that the following text is important, but unless you can read Japanese (I can’t) it’s not helpful:
Here, some of the versatility of the Espacenet site demonstrates itself, since there is also a link for a machine-generated translation, in pdf format.
Let’s get it:
Now we see some interesting back-and-forth between the Applicant and the JPO Examiner. In fact, the JPO Examiner issued a rejection for Apple’s slide-to-unlock patent. According to the JPO Examiner, a few pieces of prior art were pertinent, including an intriguingly-titled article by Plaisant and Wallace: “Touchscreen Toggle Design”:
– Claim: 1-7, 11-17, 21-27, 31 – 51
– Cited documents: 1 – 4
[ 2-9, 17-23 26-31, 33 to 38 paragraph and Fig.1 of cited document 1 ]
In the mobile terminal device (device) which has the resistance film type touch panel 1 (touch sensitive display) (18 paragraphs)
While being in the state (the 1st user interface locked state) where Fig.1 and a mobile terminal device have suspended the input of the operation position information 18, (22, 30 paragraphs),
It is the process of identifying gesture by the resistance film type touch panel 1 (perception), Gesture inputs the gesture which validates input operation to a gesture input area by contact with the resistance film type touch panel 1,
The process, and (23, 31 paragraphs) which identify that a process, (23 and 31 paragraphs), and the identified gesture correspond with the gesture pattern which validates input operation memorized by the gesture memory means 9 (fulfill predetermined conditions) (judgment),
According to the identified gesture corresponding with the gesture pattern which validates input operation, the operation (about the 1st application) in each scene of operation is started (31 paragraphs), It has the process (23, 31 paragraphs) of shifting a mobile terminal device to the normal operating state (user interface active state) which can be input from the resistance film type touch panel 1,
In the operating state, the thing (20 paragraphs) ** for which the character and the figure (display user interface object) by the application program 11 are displayed is disclosed.
We can do the same with the Korean counterpart, by clicking the Global Dossier for document #25, corresponding to Korean patent KR 10-0993459. There we also find Reasons for Refusal, the pdf of which is:KR-Reasons-for-Refusal-Korean
Again, a quick click on the translated version provides the following machine-generated translation:KR-Reasons-for-Refusal-Machine-Translation
It seems that the Korean Examiner has only formal objections to issuance.
But how the Applicant responded to the JPO Examiner’s objections, and to the Korean Examiner’s objections, as well as those in other jurisdictions, and the consistency of those responses with others filed around the world and in the US, are points of inquiry in the tool belt of many a patent sleuth.
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Links to other parts
Read Part One here.