a very important highligth helping to understand citation process
taken from
Webb, C. et al. (2005), “Analysing European and International Patent Citations: A Set of EPO Patent
Database Building Blocks”, OECD Science, Technology and Industry Working Papers, 2005/09, OECD Publishing.
http://dx.doi.org/10.1787/883002633010
ANNEX 2. EPO SEARCH PROCEDURES
The search process seeks to identify patent and non-patent documents constituting the relevant prior
art to be taken into account in determining whether the underlying invention is new and involves an
inventive step. The objective of the substantive examination is to decide whether the invention meets the requirements for patentability: novelty, inventive step, and commercial applicability. The search is
especially important for citation analysis because European citation analyses use references to patent and non-patent literature derived from the EPO search report. In order to enable appropriate use and
interpretation of citation data, the European search and citation procedure underlying the EP search reports is described in the following paragraphs.
Until recently, overall responsibility for searches lay with the Directorate General (DG) for Searching, located in The Hague, while examinations were carried out at the DG for Examination at the EPO’s headquarters in Munich. However, since 2005, these DGs have been merged so that search and substantive examination are carried out by the same examiner (the implementation process enjoying the motto BEST - bringing search and examination together). European searches are carried out by the EPO but may also take place in the national patent offices of certain contracting states.
The search should be directed to the most important characteristics of the invention and is, therefore, conducted on the basis of the claims. The patent claims describe the scope of protection for which patent protection is designated. According to the guidelines, the examiner should carry out the search focusing primarily on novelty. At the same time he should pay attention to any document that may be important for the inventive step requirement as well as for other reasons, such as conflicting applications or documents facilitating the understanding of the underlying invention. The prior art search should be continued until the probability of discovering further relevant documents is very low in relation to the effort needed.
The search may also be terminated when documents have been discovered which doubtlessly demonstrate a violation of novelty of the claimed invention. Note that the prospective value (private or social) of an invention is not taken into account in determining the search effort.
After completion of the search, the examiner has to select the documents to be cited in the search report. The report should only include the most important documents. If the search results in several documents of equal relevance, the search report should normally contain no more than one of them. The decision on which one to use for citation, is made according to the expert knowledge of the examiner.
In case of two documents which are of equal relevance, one document published before the date of priority and the other published between priority date and filing date, the search examiner should choose the earlier one.
Michel and Bettels (2001) state that “ (...) according to the EPO philosophy a good search report
contains all the technical relevant information within a minimum number of citations.” Basically, the
relevant information is obtained from one to two documents (Michel and Bettels 2001). Citing no more than what is absolutely necessary can lead to an understatement of certain documents. Additionally, the examiner is obliged to favour early documents over later ones. This could also result in a lack of relevant references for economic analyses.
If an invention is protected in more than one country and, therefore, several documents exist
belonging to the same patent family, the examiner should preferably cite the patent document in the language of the application - patent documents belonging to the same family being listed in the annex of the search report. This language convenience on the part of the examiner may lead researchers to overestimate the influence of the applicant’s home country.
In this regard, Michel and Bettels (2001) show that 90% of the total number of patent citations made by the EPO refer to EP, DE, GB, WO, or US documents.
At the USPTO and the JPO, 90% or more of the references in the search reports refer to
national documents.
EPO search reports cite only documents to which EPO examiners have access so that no doubt exists
about the contents of the documents cited. However, this procedure may result in an understatement of the documents relevant to prior art. In particular, non-patent literature which is not accessible in databases or arranged in the library of the EPO is likely to be missing in the search report.
The Search Division does not determine the verification of a claimed priority date. Therefore, the date of filing of the EP patent application is used as a reference date for the search. Exceptionally, documents published after the filing date may be cited. Examples are a later document containing the principle of a theory underlying the invention, which is instrumental in better understanding the invention, or a later document showing that matters of the invention are incorrect. These documents could also be chosen for citation in the search report. Cited documents that were published after the filing date explain negative citation lags. Using the priority date instead of the filing date as a reference date in citation analysis can even increase the number of negative citation lags.
Documents cited by the applicant should be considered in the search report only if they are crucial in defining the state of the art, or when they are necessary for the understanding of the application. Citations which do not fulfil these requirements may be disregarded.
Verbeek et al. (2003) describe the difference between examiner and applicant citations as follows: Whereas the examiner has to ensure the novelty of an invention, the inventor aims at identifying work “either related to, but significantly different from, or else a useful step towards, the new invention or a use of the invention” (Collins and Wyatt 1988). “Examiner citations, as a result, usually complement, rather than duplicate, the citations given by the inventor”
(Verbeek et al. 2002). Nevertheless, both examiner and inventor could refer to the same publications.
