Glossary

Case

A case is defined as all applications within the same family represented by the same agent. It is not the same as an application.

Imagine a US agent files a US application and a PCT application afterwards. Then a European law firm takes over for the EP regional phase filing. If we count every application within the same family, then it would appear that the European representative received two applications although he/she would in fact, only received one case.

Figures in the case exchange can be different when comparing the relation of two firms, depending on the perspective of who sends and who received (i.e. the profile you choose). With any of the other years selected, we would put the cases of each side into the year in which it was handled by the selected firm. The “case exchange year” corrects this by using the prosecution year of the receiving case for both, the sending entity as well as the receiving entity. Scroll below for definition of “prosecution year”.

A Domestic Subsequent Filing is filed by the representative who filed the Priority. For example, it may be a PCT filing done after an US priority, or an EP filing following a DE priority.

A Foreign Subsequent Filing gets filed abroad from the applicant’s perspective. It is done by a different representative than the Priority and Domestic Subsequent Filings, usually a partner law firm / subcontractor of the Priority Filing’s representative.

Family

For patents, we use the DOCDB simple family definition. This means, all patents that have the same combination of priority applications form one patent family. However, in a few cases, the priority document(s) itself is/are not part of the family, but in a different family or even a family of their own. This happens, for example, when the priority application itself was never published or the priority filings listed vary slightly. In these cases we add the priority artificially to the family. This is very important for precise case exchange calculations.

In short, our patent family definition is a little broader than the simple family definition, but smaller than the extended family or INPADOC family which includes all patents that share at least one mutual priority application.

In the trademark world, families do not exist. As such, we artificially create families when a combination of similarities, in verbal elements, images, representatives in different jurisdictions, etc, are identified in the raw data.

A filing has gone through an International Filing Route if it is either a PCT itself or has a PCT application as its priority filing.

A filing is a Direct Route if no PCT is involved as priority filing within the same family.

The Prosecution Year is a self-created year that does not exist in the raw filing and prosecution data. We take the filing date for all priority applications, domestic subsequents and direct foreign filings. However, choosing filing dates is problematic for regional/national applications entries of a PCT. For these applications, the raw data artificially set the PCT filing date as filing date of the regional/national application although the regional/national phase applications is usually filed some time later. Recognizing this issue, we take a combination of filing date and earliest publication date to get closest to the actual time when an attorney worked on submitting the application to an office.

Representative vs Attorney vs Law firm vs Agent

By representative, we mean any person or entity who is mentioned as an agent on patent or trademark applications. For some jurisdictions, it can also be listed as a correspondent though this is still the representative in most instances.

Usually, the representatives are law firms or attorneys/lawyers as employees of IP law firms. However, in some countries, there is a distinction made between an agent and an attorney. In others, regular lawyers are also allowed to represent their clients before IP offices. Moreover, the representative is not always an external firm/person. Corporates employ attorneys in their IP department and represent applications internally. Because of all these variations, it would be most accurate to call any listed person or entity as a “representative.” Since we are trying to make the wordings as simple as possible, we indicate “law firm” whenever possible and “representative” whenever a law firm would not be correct or not comprehensive enough.

The classification is based on WIPO’s concept for technology classification (2008).

It is an aggregation of related IPCs and can be generated through a concordance table of IPCs and Technical Fields. A filing is associated with one or more of 35 technological fields, which in term belong to one of 5 technical areas.