Non-Patent Literature (NPL) in the Patent Prior-Art Search

USPTO Patents Search Templates, WIPO Requirement & EPO Resources

Connie Wu

Engineering and Patent Resource Librarian

Rutgers University, New Jersey, USA

March 21, 2007

Concerned Issue

A study sponsored by the Great Britain Office of Scientific and Technical Information in 1974 revealed that only 5.77% of the patent studied were published as other forms of literature;

A 1977 study conducted by the United States Patent and Trademark Office (USPTO) also concluded that eight out of ten patents contain technology not disclosed in the non-patent literature.

However, the situation could be changed during the past decade. The Internet speeds up information dissemination. A large amount of related information has been published in non-patent literature forms.

The rapidly new technology development, such as telecommunications and biotechnology also present challenges in searching and identifying the most relevant prior-art. This is often because the best and vital prior-art with respect to these emerging technologies is available as non-patent literature.

In other words, non-patent references may harbor most of the important prior-art. That is why the analysis of non-patent references has received considerable attention recently.

Non Patent Literatures (NPL)

USPTO NPL scope:

Includes electronic databases, journals and other serial publications, monographs, conference proceedings, technical disclosure bulletins and other research materials.

Importance of Non-Patent Literature

• One of five searches cites NPL

• NPL contains more prior art than patents in new technology (biochem…)

• Internet speeds up the information dissemination

• NPL offers more deep indexing for search

Technical Field Search Reports Citations % NPL

Mechanics 14309 68454 1.79

Transporting 18148 85799 2.8

HumanNecessities

15635 79079 12.07

Electricity /Physics

34862 154656 12.73

Chemistry 17579 90215 26.94

Total 100533 478203 11.95

Citations Per Technical Field 1999

Most Cited Journals EPO/JPO/USPTO

Office->Journal / periodical title

EPO JPO USPTO

1. Chemical Abstracts 1 1 7

2. Proceedings of the National Academy ofSciences (USA)

2 2 2

3. Journal of Biological Chemistry 3 4 4

4. Journal of Medicinal Chemistry 4 8 -

5. Nature 5 5 1

6. Science 6 6 3

7. Journal of the American Chemical Society 7 20 9

8. Applied Physics Letters 8 3 -

Evolution of Proportion of NPL Citations

11.79

11.88

11.95

11.7

11.75

11.8

11.85

11.9

11.95

1997 1998 1999

% NPL Citations

USPTO/JPO/EPO Efforts

Recognizing the increasing importance of non-patent literature, the Trilateral Office agrees to begin an efforts to share data related to their non-patent literature databases.

USPTO Practice

USPTO searches a large selection of non-patent literature, including technical journals, books, magazines, encyclopedias, product catalogues, and industry newsletters. In addition, patent examiners have access to hundreds of in-house and commercial online databases

Emerging technologies, such as telecommunications and the computer-related arts, present challenges in searching and identifying the most relevant prior art. This is often because the best prior art with respect to these new technologies is available as non-patent literature.

Background

• Currently, patent applications filed in the USPTO, the United States patent application publications and United States patents are classified into approximately 600 classes based upon technology and subject matter of the claimed invention.

Background

The prior art search is performed by consulting the appropriate classes and their respective subclasses in the United States classification system, other patent document databases, and any other printed media (also known as "non-patent literature" or "NPL" )

USPTO Solution

The USPTO has published "search templates" for each of the classes found in the USPTO's Manual of Classification. A search template will define the search field and resource areas of general subject matter, classes/subclasses, patent documents (both domestic and foreign) and NPL that an examiner should consider each time a patent application is examined in a particular classification.

USPTO Solution

• The search template will indicate what search tools or methodologies should be considered when performing the search. These search templates are based upon input from patent examiners and other searchers at the USPTO.

USPTO Search Templates

http://www.uspto.gov/web/patents/searchtemplates

WIPO Requirement Online

• PCT Minimum Documentation:

Non-Patent Literature

• http://www.wipo.int/scit/en/standards/

WIPO JOPLA

Journal of Patent Associated Literature (JOPAL)

http://www.wipo.int/scit/en/jopal/jopal.htm

EPO Resources Online

XP document: NPL at EPOhttp://gb.espacenet.com/gb/en/helpV3/npl.html

Access to NPL at EPO

http://www.european-patent-office.org/dg1/searchseminar/2005/_pdf/sfa_2005_ws_02_verbandt.pdf

http://www.wipo.int/edocs/mdocs/scit/en/scit_6/scit_6_www_31685.pdf

Thank You for Your Attention