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Patent FamiliesA patent only provides protection within the country in which it is granted. Therefore, an inventor must file for a patent in each country where patent protection is desired. Most countries require that nationals file for a patent in their own country before seeking foriegn patent protection. An international treaty, the Paris Convention, allows an applicant to file for a patent on the same invention in other countries and claim the original (priority) filing. When an applicant files on the same invention in multiple countries, these applications and the subsequent publications are collectively known of as a patent family. A patent family will include all of the publications resulting from filings on the invention. This may include multiple filings from a country beacuse of the different laws countries have defining how an invention may be patented. The filings themselves may claim single or multiple priorities. The filing may claim one or more prior filings related to the filing. There are four patent databanks for identifying patent families, and each deals with these families differently.
None of these databases provide a complete patent family. Since there are over 170 countries which grant patent protection and INPADOC, which covers the most countries, only covers 60 countries, these databases do not provide a comprehensive survey of patent protection. Also, these databases do not necessarily provide complete coverage for the countries they do cover.
Patent Families in Derwent's World Patent Index (WPI) databaseAn explanation of the procedures used to generate families which contain patents that do not have priorities which match the Basic Patent in that family. This process is essentially an objective one, and provides useful relationship data which would otherwise be missed. These patents, which do not have common priorities with the Basic, are termed "non-Convention equivalents". each one is a patent which is strictly equivalent to an already-published patent, but which is unable to claim the original priority because it was not filed within the allowed year. These patents are not recognised during the computer search for priorities which generates the patent families. However, Derwent looks out for patents without a foreign priority, but having a patent assignee who is not a resident in the patenting country. These are examined further, and a search by inventor usually identifies those which are non-Convention equivalents. This can then be confirmed by a comparison of claims, disclosure, and drawing figures between the two patents. The non-Convention equivalent should, therefore, cover the exact same invention as the Basic patent in that family. The non-Convention equivalents are identified in DWPI by the presence of a "#" sign following the Derwent week in the patent details. If you want to see an example of this look at the record for patent US5773635, where the following line appears in the patent details:
In a family which only contains non-Convention equivalents, the application numbers of all the patents are now added to the priority field.
Neil Larque
Patent Families in INPADOCThe priority numbers and application numbers are used for establishing the family links. Priority is necessary to determine patent families, so coverage starts with the availability of priority information. The coverage varies from country to country. Documents are linked to a family even when they have only one priority in common. Further iterative searches are conducted for patents with priorities similar to those of any family member of the initially built family. Thus, the family members do not necessarily have a single priority in common with the one you searched for initially. For example: Document A has priority 123, Document Bhas priority 123 and 456, and Document C has priority 456. All three would be included in the family. The application number is necessary as somtimes in follow up publications (divisions, continuations, additions) there is no reference to the priorities given in the basic document. "Technical" families were found by analysis of inventor names and applicant names; the "priority" link is established manually by allocation of a fictitious priority number to the family members. This is done only for those cases investigated by the EPO search team. Compiled from information provided by Peter Paris of the European Patent Organization.
Patent families in EDOCEDOC is the online file distributed by INPI, The French Patent & Trademark Office, which contains patent family information. EDOC is derived from the EPO [European Patent Organization] Search Documentation System. The identification of family members for EDOC is rather complex. When the EPO receives newly published patents (in print or electronic form), they are sent to the appropriate examiner based upon the IPC [International Patent Classification] assignment on the original document. The patent examiner looks at the document and determines the ECLA (the EPO classification system) code for the document. These documents are then entered into the EPO Search Documentation System. At this point, patent families are identified based upon the priority citation from the original documents. These are "conventional" families. When the EPO examiner examines an EPO application (or a French application since the EPO does the patent examination for INPI) a search is done of all documents with the same ECLA classification. Sometimes during this process, the examiner notices that a document has the same title, the same inventor, the same applicant and the same content as other document(s) but is not linked by priority information. The examiner notes this and this document is entered into the system as an intellectual family member. This is then becomes a "complex" family. A third type of family also arises when the examiner identifies documents that have the same technical content but none of the members has a priority link. These are called "intellectual" families. Thus, there are three types of families in EDOC:
Michael P. O'Hara September 28, 1998
Patent families in the CAS DatabasesPatent family data for chemical and chemical engineering patents from 1957 to the present are available in the CAS databases. Patent family information for patents from 1957 to 1966 is available in the CAOLD file on STN. Patent family information for patents from 1967 to the present is available in the CAplus file on STN.For each CA "basic" patent, i.e., the patent document abstracted and indexed by by CAS, CAS has identified other closely related patent family members. Closely related patent family members tend to have simple priority relationships with the basic patent, such as citing the same priority application. While most patent families consist of closely related patents "covered" by the same abstract, there are some cases with more than one abstract associated with a patent family. This may happen when related patents have somewhat different technical content or when family members have more complex relationships such as multiple priorities from different countries or relationships resulting from division, continuation, or continuation-in-part patents. Such extended patent family relationships are also identified in the CAS database.
Eric Shively March 13, 2000 Last edited: November 2000 / Elyse Turner
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