9.1.2 "Corresponding documents" 

The search division will often come across "corresponding" documents (see B‑VI, 6.2), i.e. documents which have the same or substantially the same technical content. These are usually either patent documents from the same patent family or abstracts.

(i)Patent documents in the same patent family 

These are patent documents which are from the same country or from different countries and share at least one claimed priority.

If a cited patent document belongs to a patent family, the search division does not cite all the other family members it knows of and can understand, as they are anyway mentioned in the annex to the search report. However, it may choose to mention one or more members in addition to the one cited (see B‑IV, 3.1). These documents are identified by naming the office they originate from, specifying their type and number and placing them after an ampersand sign (&). There are various possible reasons why the search division may wish to draw attention in the search report to more than one document in the same patent family:

(a)One document in the patent family was published before the earliest priority date of the application but in a non‑EPO language, whereas another member of the same patent family was published in an EPO language (see Art. 14(1)) but after the earliest priority date of the application.

Example

A European application claims a priority of 3 September 1999. The search on this application uncovers a relevant document WO 99 12395 A, which was published in Japanese on 11 March 1999 and so in time to qualify as prior art under Art. 54(2). There is also the European family member published as an English translation under Art. 153(4) on 1 March 2000. That is too late for it to be prior art under Art. 54(2), but it can be cited in the search report as an "&" document of the Japanese-language WO publication and made available to the applicant (see B‑X, 11.3). It will then be used to interpret the content of the Japanese WO publication when the application is examined (see G‑IV, 4). In the search report, these documents would be cited as shown below (on the linking of cited documents to the claims they relate to ‒ here: claims 1-10 ‒ see B‑X, 9.3).

(b)There are several different documents in the same patent family and each one contains relevant technical subject-matter not found in the other family members. 

(c)The application cites a family member drafted in a non‑EPO language but there is another family member in an EPO language, and both were published before the application's earliest priority date. 

Example

By citing the relevant SE document, which is a family member of the relevant WO document, in the application, the applicant has already met the requirement that the state of the art be mentioned in the description (Rule 42(1)(b)). It is important to make the examining division aware of this by mentioning it in the search report (see F‑II, 4.3).

(ii)Abstracts (see B‑VI, 6.2)

Abstracts are provided by several database providers (e.g. Chemical Abstracts or Derwent) and cover many different types of disclosure (e.g. patent documents, journal articles, PhD theses, books). They summarise the most important aspects of the original document's technical content. Most abstracts cited are in English. Whenever citing an abstract in the search report, the search division must always enter the original document to which it relates after the "&" sign.

Example

There are various reasons why the search division may choose to cite the abstract rather than the original document (in which case the original document must instead be mentioned as an "&" document). For instance, the original document may not be readily available to it (e.g. a PhD thesis) or it may be in a non‑EPO language (e.g. a journal article in Russian) and there is no corresponding document. The original document is made available to the applicant only if it has been earmarked for this by the search division (see B‑X, 12).

If the search division wants to refer to a published Japanese or Korean patent application (with kind code A), it cites the Japanese or Korean publication in the search report. If an English abstract is available in the EPO databases (Patent Abstracts of Japan or Patent Abstracts of Korea), both the Japanese or Korean publication and the English abstract are made available to the applicant. A machine translation is also made available (see B‑X, 9.1.3 and B-X 12, and G‑IV, 4.1).