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.
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