United States Patent and Trademark Office OG Notices: 22 November 2005
Executive Summary - Search Template Project
Currently, U.S. patents are sorted into approximately 600
classes based upon technology and subject matter of the claimed
invention. A patent examiner is responsible for reviewing prior patent
documents, both U.S. and foreign, and other printed literature related
to an application's subject matter during the examination process.
This review, called the search, is performed by consulting the
appropriate classes, and their respective subclasses, in the U.S.
classification scheme, other patent document databases, and any other
printed media (also known as "non-patent literature" or NPL), which
might disclose the invention disclosed/claimed in a pending application
for a patent. This search may include the use of various search tools
or methodologies in the process. Once the search is performed, the
examiner determines the patentability of a claimed invention in light
of the prior art uncovered by this search.
When determining the appropriate field of search for an invention,
the examiner must consider three sources of information: domestic patent
documents, foreign patent documents, and NPL. The current requirements
for conducting that search are set forth in the Manual of Patent
Examining Procedure (MPEP) section 904.02. An examiner may not eliminate
any of these resources from consideration unless the examiner can justify
to a reasonable certainty that no more pertinent references will be found
in a further search. Although the general guidance set forth in the MPEP is
accurate, it provides little information on what resources should be
searched, and which of the available search tools or methodologies, for a
particular field of subject matter should be consulted. Detailed guidance
on the choice and use of specific search tools were left to each Technology
Center (see MPEP Sec. 904.02(b)).
The Office is preparing to publish "search templates" for each of
the approximate 600 classified areas of science and technology found in
the USPTO Manual of Classification. A search template will define the
search field and resource areas of general subject matter,
classes/subclasses, patent documents (both US and foreign) and NPL that
an examiner should consider each time a patent application is examined
in that classification area. Additionally, the search template will
indicate what search tools or methodologies should be considered when
performing the search. These search templates are based upon input from
patent examiners and other searchers at the USPTO and represent an
attempt to capture their institutional knowledge of what are the most
relevant prior art searches for determining the patentability of
subject matter in the area of technology.
In an effort to ensure that each art area has an appropriately
structured field of search and search strategy, the Office will begin
publishing each of the search templates at an appropriate Internet
website so as to gather public feedback on their adequacy and
completeness. This website is located at http://www.uspto.gov/web/patents/
searchtemplates/. The website includes means for submitting comments and
the identification of the other resources that could be added to the
described field of search and search methodologies. The website also
includes criteria by which suggestions for additional resources to be
included in the search template will be evaluated. The Office will respond
to any comment or suggestion in writing. Through this mechanism, the Office
will incorporate public comments and will make adjustments on how to refine
each search template. This will not be a one-time event. As
technologies evolve, so too will the search templates; and the public
will have an on-going opportunity to comment on how to improve them.
This process may require several iterations before the contents of
these search templates become more settled and complete.
Through this new tool, the Office anticipates patent examiners will be
able to focus their searches and will be able to locate the most
pertinent prior art in their field when evaluating an application for
obviousness or anticipation. It will give more structure and a better
standard to measure the completeness of any search. It is also believed
the public will benefit because these search templates can be used by
applicants for their own pre-examination searches prior to the filing
of a U.S. patent application or the submission of a petition to make
special based on MPEP Sec. 708.02, subsection VIII. - special examining
procedure for certain new applications - accelerated examination. In
addition, the USPTO plans to use these search templates for a pilot
program to outsource U.S. patent searches for PCT applications.
Prior art searching is a highly unique activity that is dependent upon
the knowledge and skills of the individual performing it or reviewing
it for completeness and accuracy. The creation and use of these search
templates are not intended to limit the professional discretion that
any searcher, including patent examiners at the USPTO, employs in
performing prior art searches. Rather these search templates are
intended to capture the institutional knowledge and expertise of these
searchers for the benefit of others who may desire or be required to
perform prior art searches in any given technology area. A search is
not expected to include a search of all of the listed resources, to use
all of the listed tools, or employ all of the listed search techniques
in every prior art search to be performed. Rather by relying upon the
information contained in the search templates and the expertise of the
individual performing the search, these materials will assist the
individual in finding the most relevant prior art for the search being
conducted in the art area.
A long-term objective of this effort is to generate discussion, and
ultimately consensus, with respect to what should constitute a proper
field of search and use of search tools in conducting a search of
various subject matter for purposes of an initial examination process
in the USPTO. The Office will provide periodic updates on the number of
published search templates and the status of the evaluation of public
comments.
October 26, 2005 JOHN J. DOLL
Commissioner for Patents