Action:
In order to maximize examining resources available to support examination
of U.S. applications, another means of performing the PCT search activity
needs to be instituted.
Background Information:
As an International Searching Authority
under Chapter I of the PCT, the USPTO receives international applications
that require the performance of an international search to discover relevant
prior art. This international search is made on the basis of the application's
claims and results in the preparation of an international search report. The
substance of a current search report
consists of the most pertinent prior art cited against the claims of the
Chapter I application according to PCT convention. The
proposed new PCT
reform measures consist of
a search and written opinion performed at the same time.
Chapter I applications
filed with the USPTO are initially reviewed and processed in PCT Operations. Following
completion of the initial processing, each application is forwarded to the
appropriate Technology Center (TC) where its contents are reviewed and analyzed
and the appropriate action is taken. For a Chapter I application, a complete
and comprehensive search of pertinent art is conducted, and an international
search report (ISR) is prepared. The search report is reviewed for completeness
and quality after which it, along with the application file, is returned
to PCT Operations.
Options Considered:
The Office recognizes that as a signatory to the PCT performance
of Chapter I activity is mandatory. Performance of this work requires technical
knowledge sufficient to understand and analyze the technical patent application,
knowledge and understanding of the U.S. Patent Classification (USPC) and
International Patent Classification (IPC) systems, and the ability to conduct
in-depth searches using a variety of electronic databases. Additionally,
this work requires the ability to generally associate prior art with claims
and identify if the prior art is related to the novelty, inventive step,
or merely the general state-of-the-art of the claims.
Option 1: Employ retired Patent Examiners and Supervisory
Patent Examiners to perform the work.
Option 2: Hire more examiners.
Option 3: Competitively source the work.
USPTO Recommended Course of Action:
Option 3 - To meet the
requests of our applicants and to ensure the success and viability
of competitively sourcing search functions, the Office would implement a
pilot program for
competitively sourcing the search and/or opinion process for PCT patent
applications. This program would permit the Office
to use qualified private search contractors to assist in carrying out
prior art reports in PCT applications.
Proof of Concept:
To meet the requirements of our customers and to determine
the feasibility of competitively sourcing search functions, the decision
has been made to implement a proof of concept through a pilot program. The
Office would assure quality of contractor performance through evaluations
and continuous monitoring of the pilot.
The USPTO would use the contractors
to prepare complete and accurate reports for patent applications. One
or more contracts would be awarded. It is anticipated that there will
be at least one contract specializing in each discipline. The contractor
may be a private or commercial search entity with demonstrated expertise
and search skills. The request for a search and the resulting search
report are activities between the USPTO and the contractor.
The USPTO would administer
the same preliminary processing procedures currently established for
new application filings. A copy of the application would be forwarded to the
contractor approximately three months prior to the examination. The
contractor would perform a prior art search and prepare a report using
PCT guidelines
and USPTO search guidelines (see attachment for examples) for additional
non-patent literature (NPL) resources as stated above.
Upon completion of the report,
the application would be forwarded to the TC to await review by the examiner. The examiner would
then review the report and prior art cited. If the report was inadequate
or if the examiner was personally aware of other prior art, the examiner
could request time to search them, or have the report sent back to the
contractor with an explanation of the deficiency and a request for supplemental
information.
The USPTO would maintain
the authority to certify that a private firm, individual, or commercial
entity was capable of providing a valid, thorough and complete search of
the prior art for patent examination processes.
A certification process would
be done at the USPTO. The process could be given to firms or individuals
or a combination thereof. The certification process may be based on industry
specific criteria (such as ISO 9001), and to be given on an individual
basis based on the firm's or individual's qualifications. Similar to the
Primary Examiner at the USPTO, a senior member of the firm could
sign off on an "assistant's" search. Thus, while there are multiple
options available, a preferred one would be to certify the "firm" which,
in turn,
would be responsible for certifying their individual searchers.
The critical measures of
success would be determined based on the contractors' ability to: (1) determine if disclosed invention is subject to an
international search; (2) identify a field of search
that would cover the disclosed invention; (3) select the proper tools and art collections to
perform the search; (4) determine the appropriate search strategy for each
of the selected search tools and art collections; (5) search the art collections
using the selected search tools and search strategy, and using any additional
strategy suggested by the art that is found; (6) retrieve sufficient information
from art that is identified during the search to evaluate the pertinence
of the art; (7) select the prior art that is most pertinent to
the claimed subject matter; (8) record the results of the art that is selected
according to the criteria set forth in the guidelines; and (9) determine
if certain claims are found to be searchable subject matter and/or lack of clarity or distinctness.
The contractor would have
to prove that it has ready access to the appropriate industry specific
search tools. Much of the work in developing industry specific search
tools is either in the process of being done or has already been published
on the USPTO intranet in the form of Search Guidelines (see attachment
as an example). These guidelines were developed by Quality Action Teams
and represent a listing of appropriate search tools and databases for
each technology. The guidelines include PCT Minimum Document requirements,
appropriate text search systems, as well as the pertinent commercially
available databases. In addition to using the established guidelines,
a classified search using the USPC system would also need to be performed,
if appropriate.
Another
requirement would be the technical qualifications of the contractor's
staff. Just
as in examining, varying levels of technical expertise are required
for searching different technologies.
In addition, the contractor would have to provide
proof of a thorough understanding of the patent examining procedures
and patent statutes. It is essential that any contractor have the ability
to read and analyze claims, as well as broadly apply the prior art to
produce a PCT-type search report, which would be submitted to USPTO. The
contractor would need to be aware of patent law and practice and be able
to understand such concepts as "motivation" for example. This could
be ensured through testing requirements.
Finally,
the contractors' ability to provide timely reports would be essential
to the program's success. Special attention would be paid to ensure treaty
deadlines were enforced.
For proper examination and
quality comparisons, a search submission would be expected to include,
at a minimum, a listing for every search including:
- text
search systems,
- commercial data bases,
- USPC
classified search, if appropriate,
- the
complete search statement and logic, and
- a
statement regarding the teachings and applicability of each reference
against each claim.
The USPTO would also have
to maintain a "search quality review process" in order to "sample" the
quality of searches submitted by the certified search authorities. A component
of the IPR is to evaluate the quality of the search results for each contractor. A
statistically valid sample of cases would be reviewed using criteria such
as whether the search was based on what is claimed and reasonably expected
to be claimed. Additionally, an experienced examiner will conduct a
separate search on the same application, to ensure the contractor used
the proper
search procedures.
The Office would retain the
ability to terminate any contract and "de-certify" authorities that
submit a number of poor searches from either the test sample or from other
sources
such as examiner reports, requests for re-examination or post-grant
opposition that show clear errors.
It is possible that separate
contractor support would be needed to set up, implement, and maintain the
necessary certification procedures, along with a dedicated staff of search
and examination experts.
Contractors may be required
to supply certified translations or English language equivalents, with
valid dates, for any non-English language prior art references cited
would also eliminate the need for examiners requesting certified translations,
partial translations and/or on-the-spot translations of non-English documents.
The USPTO recognizes that
the use of contractors to provide prior art search and/or opinion reports
for patent applications is a major change to current patent examination
processes. The USPTO also understands customer concerns for excellence
in a prior art search. To ensure quality art searches are maintained and
that there is uninterrupted service to all USPTO customers, the Office
would use the results of the PCT pilot as its foundation for competitively sourcing
all other search activities within the Office. By using the pilot study,
the USPTO will be able to accurately assess the feasibility of competitively
sourcing prior art searches. Performance and product will be reviewed
to ensure the highest quality is maintained, using both an in-process
review procedure and separate searches performed by experienced examiners.
The PCT competitive sourcing pilot will be implemented
in multiple arts to ensure the contractors can provide a quality search
report for any technology. Between three and six different art areas,
all with generally high backlogs, would be selected as pilot areas.
The results of the PCT pilot
will provide the Office with the information necessary to implement the
best possible transition from examiner searches to contractor searches. Prior
to full-scale implementation, a final report would be developed that identifies
the strengths, weaknesses, costs and benefits. This report would be
published and made available for general review prior to a decision on
whether to
further implement outsourcing in other areas of the Office.
There would be multiple evaluations
of the search and reports prepared by the contractors. Examiners would
complete an evaluation every time a contracted search is used in the examination
of a US application. There would also be independent evaluations both
during in-process reviews (IPR), and by independent third parties (similar
to a quality review of the examination). Failure of a contractor to
maintain the high quality expectations could result in the "forfeit"
of the contract
to the contractor.
Return on Investment:
Examiner time otherwise spent on PCT search activities would
be available for substantive examination-related activities.
Example Guidelines
Patent and NPL Resources for Class:
=online
business system 
=fees 
=forms
=help 
=laws/regulations 