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Strategic Plan > Index to Action Papers > Certification of Searching Authorities

Certification of Searching Authorities

Action:


The USPTO needs to ensure that all patent searches provided by USPTO employed contractors are completed in an efficient and effective manner, are reasonably priced, and are of the highest quality.

Background Information:


Given the current workload crisis, obtaining prior art searches from certified search firms would have major benefits for the USPTO.  A substantial saving in examiner resources should result from our examiners concentrating on patentability determinations rather than spending a significant amount of time searching.  The quality of searches should also improve, particularly in emerging technologies, where certified searching authorities will be able to devote more resources to discovering non-patent literature sources of prior art.  Thus, the quality of both search and examination should improve.

Certification


Options Considered:


1.   Searches competitively sourced to Government contractors – The USPTO would forward copies of patent applications to Government search contractors to provide examiners with a search of the prior art. 

2.   Certified search firms – Applicants would provide a certified search with each application filed.  The search would have to have been performed by a private search firm that had been certified by the USPTO.  These searches may have been performed by a competent foreign patent office.

3.   Hybrid of 1 and 2 – Some applicants choose to supply a certified search with their application and some applicants choose to have the USPTO request the search from a qualified external search service.

USPTO Recommended Course of Action:


Implement Option 1.

The USPTO plans to contract with qualified search firms (herein after referred to as “contractor”) to perform a search of the prior art according to the criteria set out in the enhanced Patent Cooperation Treaty (PCT) guidelines augmented by the USPTO’s guidelines for non-patent literature searching.  The contractor’s work product would be monitored by the USPTO to ensure that the contractor was producing searches according to these requirements and of sufficient quality.  The search report would identify on a claim-by-claim basis the most relevant PCT style X and Y references and explain the relevant section of references.  If examination based on the contracted search and any other art submitted by the applicant in an Information Disclosure Statement (IDS) were to lead the examiner to conclude that there was allowable subject matter, the examiner would perform a supplemental search, as appropriate and subject to supervisor approval, to confirm the adequacy of the contractor search.  Additionally, as a matter of course, an update search would be conducted.  

The steps involved in performing a prior art search include: (1) identifying a field of search that would cover the disclosed invention; (2) selecting the proper tools and art collections to perform the search; (3) determining the appropriate search strategy for each of the selected search tools and art collections; (4) searching the art collections using the selected search tools and search strategy, and using any additional strategy suggested by the art that is found; (5) retrieving sufficient information from art that is identified during the search to evaluate the pertinence of the art; (6) selecting the art that is most pertinent to the claimed subject matter; and (7) recording the results of the art that is selected according to the criteria set forth in the guidelines.

The contractor would produce an enhanced international-style search report (ISSR).  The contractor would be required (under the contract requirements) to include a simple characterization of prior art that is found to be relevant (e.g., the X/Y/A document designation) and identify claims to which each reference was considered relevant.  The contractor would also provide a record of the search terms used in the search strategy, art collection sources searched, and a list of the “raw” results, to allow the examiner to review the quality of search if needed.  The “A” document citations listed on the search report (meaning that no claim is unpatentable based upon that document) would be limited in number through guidelines issued for preparation of a search report and it would provide a relevancy description of each citation.  The examiner would then review the search report and prior art cited.  If the search is inadequate, the examiner in his/her discretion might perform a supplemental search as appropriate and subject to supervisory approval to confirm the adequacy of the primary search.  Alternately, the contractor could be required to “correct” the search and search report.

All search contractors would be certified by the USPTO, using a process similar to the ISO 9001 certification technique and/or similar contract provisions.  The certification criteria would be similar to those utilized to designate an International Search Authority (ISA) under PCT, such as the number and type of technical staff; the nature and extent of training provided; the manner of claim interpretation; the ability to timely deliver reports and to handle workload volume; as well as other potential evaluation elements including experience of management and executive staff, competency to perform high quality searches, technical knowledge and organizational infrastructure such as in-house data bases or search engines and access to external prior art databases (commercial data bases).  

After the initial certification, the contractor would be required to undergo a regular review process to ensure that quality standards are continually met.  A component of the In-Process Review (IPR) would be to evaluate the quality of the search results for each contractor.  A statistically valid sample of applications would be reviewed using criteria such as, whether the search was based on what was claimed and reasonably expected to be claimed, and acceptability of the results to the examiner based upon specific findings of substantive deficiencies.

The USPTO would continue to maintain its databases, search systems, and Patent Classification system to conduct in-house searches of applications by USPTO employees.  First, in-house searches would continue largely because the USPTO would need to initially pilot any plan to examine an application primarily on the basis of an ISSR acquired from a contractor.  Such a pilot would be necessary to prove the concept before changing the patent examination process to make examining applications primarily on the basis of the search report acquired from a contractor a routine practice.  Second, once examining applications primarily on the basis of the search report acquired from a contractor is proven to be a success, the process of changing from examining applications on the basis of in-house searches conducted by the examiner to examining applications primarily on the basis of the search report acquired from the contractor would be a gradual migration. 

The patent fee structure would provide that the USPTO would set a search fee under 35 USC § 41(d) to recover the average cost of searching applications.   

Proof of Concept:


The USPTO would pilot the concept of having searches and search reports prepared by contractors in multiple stages.  The first stage of the pilot would utilize PCT Chapter I applications, wherein the USPTO would award to three to six contracts (note Flexibility 2 (P-28) initiative, Support for Patent Cooperation Treaty (PCT) Search Activity).  The USTPO would then perform a thorough evaluation of the submitted search and search report.  Once the pilot is proven successful, the USPTO would expand the number of contractors, the number of technology areas, and the number of cases in a subsequent phase.

The Office would pilot the program as set forth in the Flexibility 2 initiative.

Return on Investment:


Examiner time otherwise spent on search activities can be applied to substantive patentability determination. 
Implementation Schedule
Work Breakdown StructureTask NameStartFinishProject Lead
3Quality 8: P-07-01 - Certification of Searching Authorities06/03/0209/26/08H. Goldberg
3.1OGC Determinations (P-07-01)06/03/0206/05/02 
3.2Determine mechanism to use (P-07-01)06/03/0206/03/02 
3.3Determine contract length (P-07-01)07/01/0207/01/02 
3.4Establish team to develop requirements (P-07-01)07/01/0207/15/02 
3.5Obtain clarification on required legislation and proposed implementation date (P-07-01)07/16/0207/16/02 
3.7Review evaluation of proof of concept for P-28 and determine course of action for (P-07-01)10/01/0412/01/04 
3.8Develop plan and associated schedule to support approved course of action (P-07-01)12/02/0412/31/04 
3.9Begin procurement process (P-07-01)01/03/0501/03/05 
3.10Complete outsourcing (P-07-01)09/26/0809/26/08 
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