Summary of Public Comments Concerning Expansion of Searchable Database Offerings

(Submitted in Response to Federal Register Request for Comments Published on July 27, 1998)

I. Background

In his speech to the American Bar Association on June 25, 1998, Bruce A. Lehman, Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, announced plans to expand the Patent and Trademark Office (PTO) searchable database offerings on the its World-Wide Web (Web) site.

In the Federal Register of July 27, 1998, the PTO published the details of this offering and requested public comments on this decision. As of September 14, 1998, the PTO received 190 comments. Of these, 166 comments supported the PTO's plans to provide patent and trademark data on the PTO Web site. Many offered specific suggestions on how the PTO should proceed. Twenty-four comments expressed serious reservations about the PTO proposed Web offering.

This document will first summarize the comments received which support the PTO's announced plans, and then summarize comments which expressed serious reservations about the PTO proposed Web offering. Where appropriate, examples of specific comments and PTO responses to comments are included.

II. Summary of Comments Supporting the PTO Plans

Public Comment: A majority of the comments were of a general nature. Representative examples of these follow:

Great idea! It would truly help to serve the needs of the public.

As a patent attorney, I wholeheartedly support the PTO's expressed intent to make their government data fully available through the Internet at no access charge. In view of the cooperation of so many other countries governments' on-going efforts to put patent and trademark data on the Web, this move by the PTO seems only fitting for a well deserving world that is hungry for technological innovations. This is the best effort to conveniently disseminate information since the conception of the public library. It truly reflects the generosity of the American public to the world.

I wholeheartedly endorse the Patent and Trademark Office (PTO) plans (1) to expand the searchable database offerings on its World-Wide Web (Web) site by adding additional patent data and by including trademark data, providing Web access to the full text of patents granted since 1976 and to the trademark text data for registered and pending marks; as well as (2) to incorporate patent and trademark image data and trademark data for inactive marks as part of its expanded Web offering. These plans would greatly enhance web-based services available to the PTO's customers, and are reflective of a more customer-focused office.

I firmly support PTO's efforts to make this information freely available through the World Wide Web. In doing so, government is helping to remove some of the obstacles to successful business practices in the US.

The cost of obtaining a patent and searching information is already too high and anything that governments can do to reduce costs would be an advantage to both our company and to society.

Public Comment: Fifty comments stated that the PTO should give permission to the UCSD Supercomputer Center to allow them to connect their version of a full text patent database to the Internet.

PTO Response: The PTO considered several alternatives for development of the patent full-text Web offering, including one which took advantage of the work already done by the University of California, San Diego (UCSD). The PTO selected another solution based on factors which included costs, benefits, time to implement, and overall risk.

The San Diego Supercomputer Center, on site at UCSD, leads the research project supported by the Distributed Object Computation Testbed (DOCT) contract. This contract is cosponsored by the PTO.

In support of the DOCT research project, the PTO provided UCSD with patent full-text files for use during the project. DOCT is an R&D test bed, not a fully implemented network. UCSD would require additional funding and research to implement and maintain a searchable Web database of patent text for anticipated high-demand use by the public.

Because the PTO provided the data only for the purposes of research, UCSD does not have distribution or resale rights in the data. The source data remains the property of the PTO, and will be returned to the PTO at the completion of the research project, scheduled for June 1999.

The PTO sells copies of its public patent and trademark databases, recovering the cost of dissemination. The PTO places no restrictions on reuse, further distribution, or resale of the data. UCSD or any other organization is permitted to buy patent data from the PTO and resell or redistribute that data to the public.

Public Comment: Over 20 comments asked that abstracts be displayed at the top of the page.

PTO Response: In response to this comment, the PTO changed the display page for the patent bibliographic database on the Web so that the abstract data appears in the first display screen. The new patent full text offering includes this feature.

Public Comment: At least 20 comments asked that the patent database include all patents, not just those from 1976 forward.

PTO Response: The PTO decided to include only patents from 1976 to date for several reasons. The 1976 starting date corresponds to the starting date of the PTO patent bibliographic database on the Web, and that time coverage appears to meet the need of many users. Also, prior to 1976, not all of the patents are available as text in the same format as the post-76 documents, if they are available at all. Because of substantial additional costs necessary to include the pre-76 documents, the decision was made to take 1976 as the starting point this offering. However, this decision does not preclude incorporating additional data in the future.

Public Comment: Many comments referred to the need for searchable text and image availability. At least 20 of these requested specific search and user interface capabilities. Representative examples of these follow:

Making complete patent searches possible from the home, I believe, would encourage invention in this country.

Please urge your superiors at the PTO to fulfill their duties and to quickly place ALL patents on the web for full text searching, with images available.

I fully support the effort of the PTO putting a searchable database of US patents on the Web for free.

What good is it to have all the information/knowledge contained in the prior art categorized as residing in the "public domain" if it is not easily and inexpensively accessible?

I work for a small start-up company and we need free and easy access to patent information. We need to be able to search the full patent database as part of our prior art search.

Without searchability, issued patents are buried within tens of millions of issued patents, thereby having the effect of being not publicly disclosed. I strongly support making the full text of all patents fully searchable over the Internet.

As a patent attorney, virtually every person who walks in my office tells me that no one has ever had their idea. If patent attorneys didn't have to spend so much time doing searches that the inventor could easily accomplish, we could concentrate on writing better applications.

It is my belief that the true utility of access to the PTO patent and trademark databases will be highly dependent upon the search capabilities provided with each database. A search interface which is difficult to use or confusing to understand will discourage use of the database. I would encourage your organization to be open to receiving suggestions for improvements or changes after the initial implementation of access to both databases.

Placing U.S. Patents and trademark registrations/applications on an open web site will have a significant impact on the cost and quality of services delivered by the PTO, particularly if text searching can be done. The ability to perform patent searches (at least back to 1976) will benefit inventors and practitioners in determining the best prior art in U.S. Patents to use in patentability opinions as well as the preparation of applications.

As a registered attorney with approximately one hundred pending patent applications representing small and large private sector technology companies as well as state and government institutions, I applaud any and all efforts to expand the patent data freely available over the Internet as a major step in the PTO's charter to promote science and the useful arts. Indeed, that the public presently turns to IBM for the most comprehensive free database of our country's government patent data is an embarrassment to the PTO and all patent practitioners. In fact, present users of IBM's patent server can access through links and without cost, the full text of many patents and figure images. Users of the US PTO's site should be able to access, without cost, full text and complete page images of all US patents.

Expanded on-line searchable databases of patents and trademarks are exactly the kind of applications that belong online.

I think it is WONDERFUL that the Patent Office will make the full-text of U.S. patents available, preferably in searchable form.

Making it easier to search and research trademark information in a standard, easy-to-use format will greatly speed the trademark application process.

The PTO should put the full text of all issued US patents online. Needless to say, this database should be fully searchable.

Public Comment: At least 18 comments containing more specific suggestions were received. Representative examples of these follow:

Ideally the site should be fully text searchable, and must be searchable by title and patentee name.

I would suggest allowing bulk downloads of search results. There have been many times when I have had 30 or 40 hits from my search and would rather download them for off-line review rather than waiting for each hit to load.

As a practicing patent attorney and registered agent, I would benefit greatly from the availability of key word searching that is sophisticated enough not only to permit meaningful iterative refinement of searches, but also to display the portion of the text of the patent document containing the key words, as opposed to merely the title or the abstract. Often, pertinent disclosure is buried in the text of a patent and will be hard to locate unless access is provided to relevant portions of the description, background, etc. Also, it would be very helpful in conducting clearance, or freedom to operate searches, to be able to limit key word searches to claim language. I also find that despite the availability of electronic searching of databases, in many arts there still is no substitute for a search performed through the classification system.

In summary, I want to comment that tools for conducting effective searches are at least equally important as online availability of patent data, and suggest that the PTO dedicate effort and resources to this important aspect of its mission.

Is it planned to provide Boolean search capabilities of at least the same power currently available on the PTO site for bibliographic pages? How about proximity qualifiers, will that capability be provided? In a full text search mode, it is more important that proximity qualifiers be available, in contrast to the situation in bibliographic page searching, where the format itself assures proximity.

There is truly a SIGNIFICANT need to make all of the patent information, starting from patent #1, available on line for AT LEAST front page information AND claim searching and PREFERABLY for full text searching. The technology and data to do so already exist and doing so is certainly very manageable within the PTO's existing budget.

What we really want is searchable text, especially of the claims. I can't wait to use the WWW to reach APS data, especially if you put a decent search engine and user interface with it.

I have a few suggestions: (1) allow user to set date limits to enable prior art searches. For example, one should be able to search for patents that were filed before a certain date (say, all patents before 1982), rather than obtaining patents as is now the case from 1971 to 1985; (2) have graphics capability to enable figures to be shown; and (3) make it simple to either download or order patents.

The claims sections alone--which are sometimes offered independently of the full text of the patent--are not sufficient for me to judge whether (or what) a contemplated technique or method might infringe.

Database should be searchable by patent number, inventor, assignee, and text (preferably full text, but at least text of abstracts) My only request would be to be able to search a class and obtain the patent numbers that pertain to that class, on line.

I suggest the final product include: (1) a robust search engine, with intelligent, natural language search capabilities (2) automatic update capabilities by e-mail for those who visit and choose to subscribe (3) free downloading of information appearing on screen (4) secure system of credit cards or cybercash for payment of any other item that must be purchased

I am concerned that only limited access will be given to patent images, since these images are as important to an initial patent search as the document's text. I would like to see: 1) all active patents fully disclosed, including all text and images; 2) the patent files available in a popular format, such as Adobe Acrobat; 3) an sophisticated search engine for performing patent searches. Without all three of these elements, the database is worthless to those potential inventors who don't employ a patent lawyer and who don't have an unlimited amount of time to do searches.

The image files should be available in multiple formats, including PDF.

APS and TRAM should be made available over the web, as soon as web interface and capacity problems are solved.

I am writing to declare my support for the intended expansion of Internet web-based patent database search and retrieval functionality to the PTO web site. I urge the PTO to follow IBM's lead to make patent information easily available. Please note that an effective search engine should be a part of any good database, and IBM is somewhat lacking in that respect. The current USPTO search engine compares favorably, and should not be traded away for something less effective.

I use the IBM and CNIDR-managed databases regularly. The CNIDR site funded by USPTO has a speedy and excellent search capacity, but lacks claims language and specification language, severely limiting its usefulness. The IBM site contains claims language, a huge improvement, but its search is slower and less flexible, and it also lacks full text of the specification.

I also encourage the PTO give permission to the UCSD Supercomputer Center to connect their patent text database to the Internet. This would enable more full-featured, powerful searching capabilities.

When the PTO images are loaded there must be no "crippling" of the image resolution so that the images are barely readable.

As attorneys who practice in the areas of patent and trademark law, we would offer the following further comments and suggestions for ways to improve the service and its search capabilities:

Move ahead on the incorporation of image data. It would be worthwhile if all public data regarding patents and trademarks, including image data, were accessible on the database to ease review of patents and trademarks without having to resort to multiple databases or information services.

Include trademark data for all trademarks, whether pending or inactive. We have found that information regarding inactive marks is important in its own right and can sometimes be as useful as information regarding marks that are pending or registered.

Make the database as complete as possible. Some information services only go back only about 25 years - for example, LEXIS and the IBM patent server on the World Wide Web only list patents back to the early 1970s. Yet earlier patents are often of great importance in the review of prior art and can be quite important in a search.

Provide both a simple search engine, for the novice user, and a more complete search engine, providing the ability to do more complex searches, for more sophisticated users. Novice users should have the ability to do simple search of all of the basic information that is in a patent or trademark, e.g. do searches by a given keyword, by date, by the name of the applicant (or in the case of a patent, by inventor), and so forth. Sophisticated users should be able to do more complex searches such as:

Boolean logic searches: including and, or, not, etc.

Proximity searches: "keyword a" within a given number of words of "keyword b".

Field searches - i.e., a search only in the assignee field, or in the abstract, etc.

Searches by status - e.g. pending, published marks etc. in the case of trademarks.

Embedded word searches in trademark searches, searches of a word or a suffix or prefix embedded within another word. For example, in a search for the word "America," there should be the ability to pick up a trademark "Crossamerica," even though the word "America" is not present as a word on its own, but is rather a part of a longer single word or unitary mark.

Phonetic searches - i.e. trademark searches for the word "Sticks" which also pick up other phonetic variations such as "Stix".

This type of search potential would make the database of significant value and allow the database to become a significant research tool.

PTO Response: Many of the above suggestions are part of the current full text offering. We will consider others in light of available resources in accordance with our normal budget planning process.

The PTO modeled the new offering on its current Web database offerings of patent bibliographic text and full text and images of AIDS-related patents. This model includes full-text searching and full image retrieval; use of two-term Boolean logic or "command line" searching; the ability to search fields; right-hand truncation; the ability to view and download image pages; 24-hour availability; and free access.

Public Comment: There were at least 14 comments with specific remarks on the trademark offering. Comments asked for the inclusion of "dead" mark data, Trademark Trial and Appeal Board (TTAB) information, and status information.

PTO Response: The PTO plans to expand the content of the trademark database on the Web in FY99, and will consider these suggestions at that time. Status information, similar to the "real time" information currently provided by the Trademark Status (phone) line, is planned as part of another product offering.

Public Comment: Several comments raised concerns about safeguarding privacy of search requests, and about the possibility of the content of search requests being made publicly available through the Freedom of Information Act (FOIA).

PTO Response: For the PTO Home Page and for the searchable databases available from the PTO Web site (Patent Bibliographic Database, AIDS Database, and the Trademark Database), the PTO maintains normal Web server user/access logs. (See the statement at the "Privacy Statement" button on the PTO Home Page.) These access logs contain the IP address, the time of access, and the page requested. The database logs do not contain the content of the search request or the information retrieved during the search. The PTO uses the database logs to generate usage statistics. If a FOIA request is filed, the Office of the Solicitor will determine at that time whether the information requested is releasable under FOIA.

Public Comment: A few comments suggested that the service be supported by maintenance fees, by increased application fees, or by charging for some or all of the data.

PTO Response: The PTO plans to provide free access to patent and trademark data on the Web, and to implement electronic commerce initiatives for electronic ordering and delivery of products for a fee. Since the PTO is fully fee-funded, fees collected from other services, including application fees and maintenance fees, fund public service activities such as the Web offerings.

Public Comment: A few comments expressed concerns that users would not understand the limitations of the service (the limitations of the data coverage, the insufficiency of word searching), and that users lack sufficient knowledge about the patent and trademark systems to conduct effective searches.

>PTO Response: A warning appears on the opening Trademark Search page explaining the limitations of the Web database. A similar statement is included in the Patents database, explaining the limitations of the data and directing users to Patent and Trademark Depository Libraries (PTDLs) for specialized help.

Public Comment: One comment stated that, with patent documents on the Web, the PTO could stop the practice of sending copies of post-1976 patents in connection with office actions and requiring copies of post-1976 patents in information disclosure statements. Another suggested that publication on the Web would serve the issue function.

PTO Response: These suggestions will be considered as part of on-going revision of PTO examination procedures.

III. Summary of Comments Not Supporting PTO Plans

Public Comment: Nearly all of the 24 comments suggested that, at most, the PTO offer a "minimalist search service" by, for example, limiting the search to "two-term" Boolean searching and allowing little or no field searches. There were several suggestions that the PTO either refrain from offering updates on issue day (e.g., with a 72-hour embargo) or to release the data to vendors before issue day. Representative examples of these follow:

I strongly urge the PTO to refrain from offering a full-featured full text online service similar to ours. It is unfair and inconsistent with the intent of relevant federal laws for a government agency to exploit its considerable advantages to compete with the private sector. The PTO should provide basic features to meet its dissemination obligations, not advance search and retrieval capabilities that will undercut our service to the corporate and law firm markets.

When commercial services have already been developed by private industry and are already well-known in the marketplace, is it appropriate for the U.S. Patent and Trademark Office to spend taxpayers' dollars to redevelop similar services and to compete directly, if not control competition, with private industry?

I am opposed to the U. S. Patent and Trademark Office putting U.S. Patent Data on the Internet. The Patent Office should not be using fee generated funds on such unnecessary projects.

Should the PTO decide to duplicate the efforts of private enterprise it will negatively impact upon, shrink and perhaps even suffocate many of these risk taking, competitive businesses.

The USPTO project, as announced, threatens the competitive balance in the market place that has grown over the years. If the USPTO insists on providing advanced and complex search capabilities and provide document delivery (particularly Internet downloads of high resolution images), it will surely succeed in putting businesses out of business by creating a very powerful monopoly with this data.

My tax dollars should not be spent to upgrade your system to make it a viable competitor to other systems available on the market that private dollars were used to develop.

It is inconsistent to ask information service companies to pay enormous amounts for the same data that the PTO proposes to give away for free.

PTO Response: The PTO does not believe that current implementation on the Web endangers the business of commercial vendors who serve professional searchers by providing value-added services. Rather, the PTO sees this offering as part of its obligation to disseminate the information contained in the patents and trademarks it issues.

The PTO will offer a text searching/image retrieval system in a manner common to existing Web offerings. Funding for this effort will be from PTO fee revenue, as we receive no tax-supported appropriations. The PTO does not plan to offer advanced searching functions such as those available in its in-house search systems and common to most commercial services.

With respect to placing a 72-hour embargo on the release of our data, we note that PTO systems already in place offer accesses to data on day of issue/registration. These include not only local PTO Search Facilities, but also 31 Patent and Trademark Depository Libraries (PTDLs) (for patent text), 3 PTDL Partnership Libraries (for patent text and image and trademark text and image), and the PTO's Patent and Trademark Copies Sales Program (for paper patent copies).

Pre-release of PTO databases under an agreement of confidentiality may not be physically possible, and in any case, is not under consideration. However, the PTO plans to explore enhanced delivery mechanisms (FTP or high-density tape) which could allow vendors to receive and process the data in less time.

IV. Summary of Miscellaneous Comments

Public Comment: The PTO received over 30 comments, which not only supported the PTO's plans, but also anticipated that private sector vendors and professional searchers would be opposed to the plans. The following examples, which the PTO neither endorses or opposes, are representative of those comments:

Far from undermining private enterprise, vastly increasing freely available PTO content will provide the better private data vendors myriad new business opportunities for securing revenue through custom search capabilities, contract searches, scheduled searches, non-patent searches, etc., and will allow them to generate revenue based on actual value added, rather than public data.

Having the full text online in a searchable form will be an immense boon to policy analysis and patent-based scholarship, as well as clearly furthering the purpose of the patent system to exchange public information in return for transient private monopoly rights. I fervently hope that the private self-interest of intermediaries who offer high-priced services do not override the public good served by making these public documents freely available on the Internet. Thomas Jefferson and Benjamin Franklin would approve.

When technology was so expensive that only private companies could afford to provide searchable databases, the PTO properly teamed with them to do so. Now that the cost of the technology has dropped (and continues to drop precipitously), the time has come for a change. If the public is willing to acquire computers and Internet access with private funds, the PTO should meet them half way and put the full text of the patent databases on the Internet? Web indexing technology and other tools can assist the public to performing Internet searches of this publicly owned data.

As a patent owner, and one who is continuing to file many patents, I am glad to see that this public database will be made available to the public free of charge, and that there will be hopefully no more profiteering by those who want to sell what should be free to the public.

V. Conclusion

Having considered all public comments, the PTO will implement its expanded Web offering according to announced plans.