ＷＩＰＯＷＩＰＯ$539 Million
Could you guess how this huge amount of money five hundred thirty nine million dollars was spent? Imagine what you could buy with thisamount. You could definitely buy a couple of private jets, some luxurious cars and a few houses all over the world and many more! If you
guessed right, the money was not spent to buy such nice items. In fact, back in May 2018, this is the amount that a U.S. jury said Samsung
had to pay Apple Inc for infringing intellectual property rights.

Intellectual property (IP) infringement refers to any violation of protected intellectual property rights. For example, piracy is the unauthorized
use of materials protected by IP rights. Infringement can also include copy, reproduction, or distribution of materials protected by IP rights.
This happens when your work protected by IP laws, as for example using the different treaties for patents, trademarks and designs, is copied
or used without your permission.

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How can you make sure that nobody is infringing your IP rights or that your business will not be in a position similar as Samsung infringingsomeone else’s rights? You need to find out if what you have in mind in terms of trademarks, inventions or designs does not already exist. To
do so nothing simpler than a search in a database, like you would search for information in Google. Designs, trademarks and patents areavailable to the public, therefore there are databases for intellectual property content such as those.

WIPO GLOBAL DATABASES

Provided by WIPO. These databases are available online and they are free of charge and very easy to use. Let’s take a look at someconcrete examples.

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If you or you company wanted to include such a house in your trademark, by using WIPO Global Brand Database, you can find out if logos
similar to your already exists. To obtain this information you just need to upload your image into the Global Brand Database in which yourimage is compared to the images contained in the database using artificial intelligence.

Those are the results that are close to the image you uploaded. You see trademark that are similar to your logo.

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The Global Brand Database

This search, by image and many more, can be done in WIPO’s database for trademarks called the global brand database. I show you thisprintscreen so that you have an idea of what the Global Brand Database looks like, do not try to look at all the details as there is a lot ofinformation on this page. A similar database is available for designs.

Global Design Database

Here is the interface that is very similar to the Global Brand Database that we just saw

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Let’s imagine now that we are a chair making company and we don’t want to make the same mistake as Samsung. We need therefore to makesure that we will not infringe anyone’s design. In the Apple versus Samsung trial I mentioned earlier out of the five hundred thirty nine million
dollars, five hundred thirty six million dollars were related to design infringement. This shows how expensive it can be to infringe someone’s
design and should therefore be avoided. To see the designs that belong to one of our potential competitor.

Very easy to use

I just enter the potential competitor’s name in the database, for example the company Okamura.

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And the designs that belong to Okamura appear in the results. You can then open each record for more information. Let’s take a look nowat one last example.

Let’s imagine that after a long trip on a plane, you had a brillant idea to create a very confortable seat. You think that you idea isunique, but is it really the case? To check, you can use the database to find out if anyone else had a similar idea before you..

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To do so, I entered keyword to describe my seat in the database for patents and in the results I will see what already exists including
documents in foreign languages. To help me understand the content, there is an integrated machine translation button

Search for all levels

WIPO’s database for patents is called PATENSTCOPE and offers. many ways to find information. Searching for patent information isavailable to all, no matter what your experience or level of expertise is

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Unique features
Machine translation tool: WIPO Translate
Cross-lingual expansion search
Chemical search (including Markush)

PATENTSCOPE also includes some unique features such as the machine translation tool developed in house specifically for the translationof patent documents and using artificial intelligence. It is called WIPO Translate. In PATENTSCOPE, you will also find a tool developed inhouse for cross-lingual searches that will not only translate your search but also find synonyms of your search, therefore expanding the scopeof your search. You can also perform chemical search in WIPO’s patent database My colleagues Iustin will tell you more about this featureand Magdalena and David will also show you some unique features.

WIPO’s Global DatabasesPATENTSCOPE: Patents
Global Brand Database: Trademarks
Global Design Database: Designs

To summarize: WIPO provides 3 databases, all free of charge: one for patents called PATENTSCOPE, one for trademarks called theGlobal Brand Database and the database for designs is called the Global Design Database

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Free webinars
https://www.wipo.int/meetings

During this very short introduction you couldn’t show you the many great features that will help you find relevant results. If you would like to findout more details about those databases, free webinars are available in the WIPO meetings page. The webinars are free of charge and coverdifferent topics such a the translation tools in PATENTSCOPE, practical cases in the Global Brand Database etc.

By using WIPO’s Global Databases, you will save time: before spending time developing a product, checking if this product already exists will
prevent you from wasting time working on it.

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Databases include rich sources of technical and scientific knowledge nowhere else available and well organized. Using the databases you will
be able to gather information about:competitors 'activities
licensing opportunities
partners identification
latest trends in the patent, trademark and design fields

And finally you will also save money by not investing in research and development and/or IP protection for a product that might already exist.
And it will also prevent you from wasting a lot of money on IP infringement.

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Chemical Search in PATENSCOPE
Iustin Diaconescu – Head Patent Database Section

PATENTSCOPE’s strengths
Access to international Patent Cooperation Treaty (PCT)
applications, 4.5 mil

Extensive international coverage : 100 mil patents from 75
patent offices
Multilinguism (WIPO* Translate, PATENTSCOPE CLIR)
Powerful chemical search, markush capable(17 million
unique chemical compounds mined from the full text of thepatent collections of the IP5 and Russia)

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Chemical Search – IP5 implementation
This allows to get a quick draft patent landscape for drugs and toanswer tough questions like: What is the newest Japanese patent containing “Paracetamol"?

Wikipedia says: Paracetamol, also known as acetaminophen, is amedication used to treat fever and mild to moderate pain.

Chemical Search - Principle
Standardize all the different representations ofchemical structures into Inchikeys
Recognize chemical compounds in patent texts orfrom embedded drawings included in patent texts
Implement search functions for Inchikeysthat can be used by non chemists
Data processed for the IP5 and WO patentcollections

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Chemical Search - Implementation(…) At the moment the surgicalprocedure starts, benzodiazepin, e.g.
diazepam, is administered in a dose of
no more than 5 mg. (…)(…) At the moment the surgical procedure starts,
benzodiazepin, e.g. @AAOVKJBEBIDNHEUHFFFAOYSA-N@, is administered in a dose of
no more than 5 mg. (…)

AAOVKJBEBIDNHEUHFFFAOYSA-N

Chemical Search - Implementation
IUPAC nameN-(4-hydroxyphenyl)acetamide

ZVAJINKPMORJF-UHFFFAOYSA-N

INN
paracetamol

Other names
Acetaminophen, panadol, tylenol, …

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Markush searchMarkush, what is it?
PATENTSCOPE Markush data and coverage
Markush simple searchMarkush advanced search

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Markush: what is it?
Representation of families of chemical compounds with«varying parts», usually with the purpose to specify
patents claimsMarkush structures are named after Eugene A. Markush,founder of the Pharma Chemical Corporation in NewJersey. He was involved in a legal case that set aprecedent for generic chemical structure patent filing.
The patent filing was US Application 611,637, filed
January 9, 1923. Markush was awarded a patent fromthe US Patent Office for “Pyrazolone Dye and Process ofMaking the Same” on August 26, 1924 (Wikipedia)

Markush: an example WO2012064632

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Markush data and coverage
Professionally curated Markush Data (Derwent Markushdata)
Full coverage of organics, organometallics, inorganic
salts and metal oxides, plus partial coverage of alloys,intermetallics and polymers.
Data curated from EP, CN, JP, KR, WO and US patentdocuments with associated links to patent family
members

Markush simple search
Principle: enumerate up to 500 simplest compounds per
Markush formulae
Index the enumerated compounds in a new
PATENTSCOPE search field called ‘ENUM’
search compounds expressed in Markush formulae aseasily as compounds explicitly cited in patents.

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ＷＩＰＯMarkush simple search

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Markush Advanced Search
Uses a simplified, iterative search process designed for
PATENTSCOPE by Infochem
Matches searched structure with all indexed Markushstructures in the system
Finds potentially more matches than with theenumeration search
Still easy to use (but with longer response times)
Shows intermediate results as list of Markush numbers
Works with drawn structures with optionally varying parts(CHK, CHE, CHY, HET, HEA, HEF, CYC, ARY)

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The Whys, The Whats and the Howsof PATENTSCOPE Patent Families
Magdalena Zelenkovska, Senior Patent Data Manager
Patent Database Section, Global Databases Division
Infrastucture and Platforms Sector
Geneva, December 16, 2021
WIPO FOR OFFICIAL USE ONLY

What are Patent Families?
“Simple patent family” means a patent family relating to the sameinvention, each member of which has for the basis of its “priorityright” exactly the same originating application or applications. (WIPOHandbook)
The relationships among the members of the patent family can be ofseveral types: Paris Convention priorities, domestic relationships(continuations and divisionals), PCT national phase entries andtechnical relations.
Types of filing
National RouteRegional Route (EPO, ARIPO,..)International Route (PCT)WIPO FOR OFFICIAL USE ONLY

1

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Why Patent Families?
Complement bibliographic data, establish priority date
Prior art examination
Translation
Economic and statistical use
Prevent double counting, forecast applications
Analyze internationalization of a technology
Estimate patent value
Refined patent indicators

WIPO FOR OFFICIAL USE ONLY

Why PATENTSCOPE PatentFamilies?
Patent families are a function of data available
PATENTSCOPE has unique coverage
PATENTSCOPE has unique way of aggregating
applications
Accountability

WIPO FOR OFFICIAL USE ONLY2ＷＩＰＯ

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What is in a PATENTSCOPE Patent
Family? - The Definition
Groups of unique filings  Families of filings
99.5 million filings translates into 124,5 million
publications

WIPO FOR OFFICIAL USE ONLY

What is in a PATENTSCOPE Patent
Family? - The Definition
Timeline

February 2020

Scope

PCT Patent Families
enriched with US
related documents

PCT Patent families

October 2020

Enriched
PATENTSCOPE
Patent Famillies

PATENTSCOPE
Patent Families

December 2020

OngoingPCT Patent Families• Built on strong links between a PCT application and it national entries• A combination of• national phase entry data as received by participating offices• prior PCT links in the bibliographic data• first and only priority included
PCT Patent Families enriched with US related documents• Provisionals, re-issues, republications, divisionals, continuations and continuations in part considered• Grouping based on the calculation of first parent• all re-issues, republications, divisionals and continuations of an application and the application itself groupedin a single family. The continuations in part are not included in that family
PATENTSCOPE Patent Families• Include families via both PCT and Paris route• based on priority data
Enriched PATENTSCOPE Patent Families• Considers IP office specific practices• DPMA – Divisionals• NZ - Divisionals, Provisional• EG - Divisionals• JPO – Divisionals• PL – Divisionals
WIPO
USEPL
ONLY
• EP national entries fromES,FORDK,OFFICIAL
PT, LT and3

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What is in a PATENTSCOPE PatentFamily? – Inclusion Criteria
InclusionCriteria

IC1 - PCT application from which the family originatedIC2 - National entry of a PCT application
IC3 - National entry of a PCT application not found in
PATENTSCOPE
IC4 - US application related to another US application alreadyincluded in the family
IC5 - Sole priority inside the family
IC6 – Connected by priority fieldIC7 -National application related to another application of thesame national office already included in the family
WIPO FOR OFFICIAL USE ONLY

What is in a PATENTSCOPE Patent
Family? – Inclusion Criteria(firstRelease)
PCT application  IC1
PCT NPE
NPE found in Patentscope  IC2
NPE not found in Patentscope  IC3
National Prior PCT  IC2

PCT priorities, sole priority  IC5

WIPO FOR OFFICIAL USE ONLY4

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What is in a PATENTSCOPE PatentFamily? – Inclusion Criteria (secondRelease)
Treated separately because of complexity
ConsiderProvisional applications for future referencing
Republications & Reissue  IC4
Continuations & Divisionals  IC4, defined as pairsof a parent and a child and attached to an
application in a recursive mannerContinuations-in-part, not part of the same family

WIPO FOR OFFICIAL USE ONLY

What is in a PATENTSCOPE Patent
Family? – Inclusion Criteria (secondRelease) - Example
Enrichment via US related documents – An example

10732326 - priorities=related documents
11367134 - priorities=related documents + application itself
12023431 - no priorities
12023416 - priorities=related documents + application itself
13247241 - no priorities
14601340 - no priorities
WIPO FOR OFFICIAL USE ONLY

5

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What is in a PATENTSCOPE Patent
Family? – Inclusion Criteria (thirdRelease)
ConsiderSole priority (PCT or national)  IC5
Matching priorities (PCT and national)  IC6
Exceptions
US Provisional
JP Withdrawn
Circular priorities

WIPO FOR OFFICIAL USE ONLY

What is in a PATENTSCOPE PatentFamily? – Inclusion Criteria (thirdRelease) – IC7 Example

WIPO FOR OFFICIAL USE ONLY6ＷＩＰＯ

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What is in a PATENTSCOPE Patent
Family? – Inclusion Criteria(continuous enrichment)
US Application with PL priority in
PATENTSCOPE

The PL priority and its divisionals
in the patent search tool of thePolish Patent Office

WIPO FOR OFFICIAL USE ONLY

How can we access PATENTSCOPE
Patent Families? – The Interface

WIPO FOR OFFICIAL USE ONLY

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ON THE TRAILS OF APATENTSCOPE PATENT FAMILY…
WIPO FOR OFFICIAL USE ONLY

On the trails of a PATENTSCOPE
Patent Family…The DomesticApplication

WIPO FOR OFFICIAL USE ONLY8ＷＩＰＯ

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On the trails of a PATENTSCOPE
Patent Family…The Origins
First and sole priority ofboth WO/2014/064868 andWO/2014/064872

JP Domestic Application

International Application

International Application

JP2014083414

WO/2014/064868

WO/2014/064872

23/10/2012

08/07/2013

09/08/2013

Filing dates

Publication dates

01/05/2014

12/05/2014
WIPO FOR OFFICIAL USE ONLYOn the trails of a PATENTSCOPE
Patent Family…Zooming into J-PlatPat

23.10.2012

20.10.2016

22.02.201803.12.2018

11.08.2020• First and sole priority of WO/2014/064868• First and sole priority of WO/2014/064872• Divisional application• Divisional application• Divisional application• Divisional application

WIPO FOR OFFICIAL USE ONLY

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On the trails of a PATENTSCOPE
Patent Family…Zooming into theInternational Applications
AU2013336118

CN
104736210

US
20150258420

SG11201503163R

KR
1020150104083
and sevenothers

WO/2014/064868

MYPI 2015001041
andPI 2018000793

PH
1/2015/500824
and three more

NZ706882

WIPO FOR OFFICIAL USE ONLY

On the trails of a PATENTSCOPE
Patent Family…Zooming into theInternational Applications
AU
2013336122

US20150265908

SG
11201503165U

CN
104736211

KR
1020150105291
and 4 more

WO/2014/064872

PH
1/2015/500876
and two more

MY
PI2015001040

NZ
707157WIPO FOR OFFICIAL USE ONLY

10

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On the trails of a PATENTSCOPE
Patent Family…Zooming into AusPat
2013203298

2016277757

2018236860• Divisional child of2013203298

08/07/2013

Filing dates

09/08/2013 10/04/2015 17/04/2015• Divisional child of
2018236860

10/12/2019

05/09/2017

24/12/2016

10/04/2013

WO2014064868• Divisional child of
2016277757

2020281171

06/12/2020

28/09/2018

2013336118• National Entry Phase of
WO2014064868
WO2014064872

2013336122

2017225030

2019279960• National Entry Phase of
WO2014064872• Divisional child of2013336122• Divisional child of
2017225030

WIPO FOR OFFICIAL USE ONLY
http://pericles.ipaustralia.gov.au/ols/auspat/applicationDetails.do?applicationNo=2017225030&hideNavigation=true

On the trails of a PATENTSCOPE
Patent Family…Summary
8 AU applications
8 CN applications
5 JP applications
13 KR applications
9 MY applications
6 NZ applications
7 PH applications
12 SG applications
8 US applications
2 WO applications

WIPO FOR OFFICIAL USE ONLY11ＷＩＰＯＷＩＰＯ

PATENTSCOPE
with focus on Japanese collection

David Diaz Diaz
Data Administrator

WIPO FOR OFFICIAL USE ONLYPATENTSCOPE with focus on JP collection
Japanese “Standardized data”
Japanese national relations are taken into account for building
PATENTSCOPE families
National Japanese classifications (coming in 2022)
FI (File index)
F-term (File forming terms)
Advanced patent number search

WIPO FOR OFFICIAL USE ONLY

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Patent Classifications
93% Japanese applications classified
IPCFI (coming in 2022)
F-term (coming in 2022)
CPC

WIPO FOR OFFICIAL USE ONLY

Advanced patent number search

WIPO FOR OFFICIAL USE ONLY

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Advanced patent number search

WIPO FOR OFFICIAL USE ONLY

Advanced patent number search

WIPO FOR OFFICIAL USE ONLY

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Advanced patent number search

WIPO FOR OFFICIAL USE ONLY

Advanced patent number search
PatternExample

YYYYNNNNNN

Four-digit Western year + six-digit serial number

1997184946

YYYY-NNNNNN

Four-digit Western year + hyphen (-) + six-digit serial number

1997-184946

yyNNNNNN2-digit Western year + six-digit serial number

97184946

XX-NNNNNN

two-digit Japanese year (Era omitted for applications published
before 2000) + hyphen (-) + six-digit serial number

09-184946

XXNNNNNN

two-digit Japanese year (Era omitted for applications published
before 2000) + six-digit serial number

09184946

xxNNNNNN

two-digit Japanese year (Era omitted for applications published
before 2000) removing leading zeros + six-digit serial number

9184946xx-NNNNNNtwo-digit Japanese year (Era omitted for applications publishedbefore 2000) removing leading zeros + hyphen (-) + six-digit
serial number

9-184946

WIPO FOR OFFICIAL USE ONLY

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Advanced patent number search
Pattern

ExampleeXXNNNNNN

Japanese era sequence number ("5" or "r" for Reiwa, "4" or "h"for Heisei, "3" or "s" for Showa, "2" or "t" for Taisho, or "1" or "m"for Meiji) + two-digit Japanese year zeros + six-digit serial
number409184946

exxNNNNNN

Japanese era sequence number+ two-digit Japanese year
removing leading zeros + six-digit serial number

49184946

EXXNNNNNN

Japanese era name symbol + two-digit Japanese year + six-digit
serial number

H09184946

ExxNNNNNN

Japanese era name symbol + two-digit Japanese year removing
leading zeros + six-digit serial number

H9184946

EXX-NNNNNN

Japanese era name symbol + two-digit Japanese year + hyphen(-) + six-digit serial number

H09-184946

Exx-NNNNNN

Japanese era name symbol + two-digit Japanese year removing
leading zeros + hyphen (-) + six-digit serial number

H9-184946

WIPO FOR OFFICIAL USE ONLYPATENTSCOPE with focus on JP collection
Japanese “Standardized data”
Japanese national relations are taken into account for building
PATENTSCOPE families
National Japanese classifications (coming in 2022)
FI (File index)
F-term (File forming terms)
Advanced patent number search

WIPO FOR OFFICIAL USE ONLY