Many people see the pitfalls in the USPTO 21st century strategic plan to be the
sections relating to fees and funding. The plan was discussed at length at the
meeting of the ACS Joint Board-Council Committee on Patents and Related Matters,
and while the proposals relating to outsourcing searches was felt to be
troubling, the financial aspects were of greater concern. There's a report on
the strategic plan, with CPRM input, in the Legislative Action Network
newsletter at
http://chemistry.org/portal/Chemistry?PID=acsdisplay.html&DOC=government\publications\ccsepr2002.html
Edlyn Simmons
Internet Mail Message
Received from host: [193.123.78.40]
[193.123.78.40]
From: "Lucy Akers" <lucyakers@btopenworld.com> on 09/23/2002 11:36 PM GMT
"Lucy Akers" To: piug-l@derwent.co.uk
<lucyakers@btopenworld.com> Cc: "Traci L Halerz"
<Traci.L.Halerz@usa.dupont.com> (bcc: Edlyn
Simmons-ES/PGI)
09/23/2002 07:36 PM Subject: Re: Certification of Searching
Authorities
Below I have provided some extracts from the USPTO 21st century strategic
plan, although, not all of the text that relates to patent information and
searching. The complete plan is available on the USPTO web site at 388
pages (which I downloaded but haven't read). If implemented, this strategic
plan will definitely impact our work in many ways....it is even calling for
the periodic re-certification of patent agents! Please take a read below
and let me know if you would like to contribute to our collective comments
on this.
Thanks.
Lucy Akers, PIUG Chair
-------
Extract from page 224 - Timeline for Certification of Searching Authorities
Task Name, Duration, Start, Finish, Contact, FY 2003 Resources
P- 07- 01 - Certification of Searching Authorities 265 days Mon 6/ 3/ 02 Thu
6/ 19/ 03 H. Goldberg $2,875,000
Develop industry specific criteria for certification and recertification of
searching agencies (P- 07- 01) 90 days Mon 6/ 3/ 02 Tue 10/ 8/ 02
Establish oversight board to conduct certification (P- 07- 01) 10 days Wed
10/ 9/ 02 Tue 10/ 22/ 02
Develop search quality check standards and process (P- 07- 01) 15 days Wed
10/ 23/ 02 Wed 11/ 13/ 02
Develop evaluations and feedback tools (P- 07- 01) 30 days Thu 11/ 14/ 02
Fri 12/ 27/ 02
Announce certification process (P- 07- 01) 30 days Mon 12/ 30/ 02 Tue 2/ 11/
03
Review applications (P- 07- 01) 60 days Wed 2/ 12/ 03 Wed 5/ 7/ 03
Grant certification (P- 07- 01) 30 days Thu 5/ 8/ 03 Thu 6/ 19/ 03
Extract from bottom of page 6
The strategic plan cannot succeed without enactment of the President's
fiscal year 2003 budget,
legislation changing the USPTO's current fee schedule, revisions to current
rules, and legislation for
streamlining the patent and trademark systems to facilitate these changes.
Extract from page 10
Share search results with other intellectual property offices
. Reduce duplication of effort and decrease workload by relying on search
results obtained
via partnerships with other intellectual property offices. [Work Sharing]
Extract from page 12
Improvements in patent and trademark quality assurance techniques
. Incorporate an evaluation of search quality into the patent work product
review
process, and survey practitioners on specific applications. [Quality 4]
. Certify and monitor the quality of newly created searching authorities to
ensure
that patent searches provided by the private sector or other patent offices
are
complete and of high quality. [Quality 6]
Extract from page 13
Transition to market-driven examination options
. Move from a "one-size-fits-all" patent examination process to a four-track
examination
process that leverages search results of other organizations and permits
applicants to have
freedom of choice in the timing of the processing of their applications.
This new process
will eliminate duplication of effort, encourage greater participation by the
applicant
community and public, permitting lapse of applications when examination is
not requested,
and improving the quality of our patents and decreasing processing time.
[Pendency 2]
Extract from page 17
LONG-TERM AGENDA
Patent Cooperation Treaty Activities - We will actively pursue revisions to
Patent Cooperation Treaty search and examination guidelines to achieve an
enhanced level of reliance on International Search Reports and International
Preliminary Examination Reports.
Extract from page 23
The USPTO looks forward to working within the Administration, and with its
partners on Capitol Hill and in the intellectual property community, to
refine
and implement the actions outlined in its 21 st Century Strategic Plan.
Extract from page 215-217
CERTIFICATION OF SEARCHING AUTHORITIES
Action:
The USPTO needs to ensure that patent searches provided by the private
sector and/or by
foreign patent offices are complete and high quality.
Background Information:
Given the current challenges in the patent system, putting the prior art
search in the hands
of private industry would have substantial benefits for the USPTO. Much of
our
"overhead" expense lies in the development and maintenance of search tools
for our
examiners. Substantial savings in automation development and maintenance
costs for
EAST, WEST, ABSS, CDB access, etc., potentially could be realized in
addition to the
savings resulting from the reduced upkeep and maintenance of the
classification systems
for both International Patent Classification (IPC) and United States Patent
Classification
(USPC). Looking at this strategically, the USPTO would be able to
concentrate
resources on the development of TEAM in the short term and could then
reassess the
maintenance and enhancement of search systems once TEAM is successfully
deployed
A substantial saving in examiner resources should result from our examiners
concentrating on patentability determinations rather than spending a
substantial 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.
Options Considered:
1. Certified Private 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.
2. Searches Outsourced to Government Contractors - The USPTO simply forwards
all
applications to a Government search contractor to provide the examiner with
a
complete search of the prior art.
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 outsource the
search to
an external search service.
USPTO Recommended Course of Action - Option 1:
Details: Applicants would use an external search service (ESS) in order to
prepare a
search report. The ESS may be a private or commercial search entity, or a
foreign office
that has expertise and demonstrated search skills. The search process and
preparation of.
the search report are activities between the applicant and the ESS. The
applicant would
initially prepare a proposed "technical search abstract" for guiding the
search. The ESS
would review and improve on the abstract; prepare a search strategy,
including the field
of search, search logic (e.g., where to search, including Non-Patent
Literature Resources)
and terms; and send it back to the applicant for confirmation before
proceeding further.
Using the abstract and discussions with the applicant, the ESS would carry
out the search
and prepare a report similar to the international search report (ISR) using
PCT guidelines
and USPTO search guidelines (see attachment) for NPL. The applicant would
submit
this information to the Office with a request for examination.
The examiner would then review the search report and prior art cited. If the
search were
inadequate, the examiner would contact the applicant and explain the
deficiency and seek
supplemental information (using Rule 105) from the applicant. If the
examiner is
personally aware of other prior art, he or she is permitted to locate the
art in the same way
under the current MPEP.
The USPTO would maintain the authority to certify that a private search
firm, individual,
or a foreign patent office was capable of providing a valid, thorough and
complete search
of the prior art for patent examination processes.
Certification would be done at the USPTO by an oversight board or by an
international
certification board made up by representatives from various patent offices.
Certification
could be given to firms or individuals or a combination thereof.
Certification would be
based on industry specific criteria (ISO 9000), and must 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 (certified) 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 authority 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 I). These guidelines were
developed
by the Quality Action Team and represent a listing of appropriate search
tools and
databases for each technology. These include PCT Minimum Document
requirements;
appropriate text search systems; as well as the pertinent commercially
available
databases. Additionally, a classified search of the USPC, if appropriate,
would also need
to be performed as awareness of such a listing as well as ready access to
all the tools
contained therein would be one of the requirements in order to obtain
certification for a
given technology.
Another requirement would be the technical qualifications of the applicant
for
certification. Just as in examining, varying levels of technical expertise
are required for
searching different technologies.
The third requirement would be proof that the applicant for certification
has a thorough
understanding of the patent examining procedure. This is essential since the
searcher
must be able to read and analyze claims and broadly apply the prior art
thereto in order to
produce a PCT-type search report which would be submitted to USPTO.
Applicants for
certification 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 by
requiring that
applicants for certification be tested.
A certified 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,
- a statement regarding the teachings and applicability of each reference.
The question arose as to whether a patent applicant could be his own "search
authority".
The answer seems to be yes, as long as that person meets the requirements as
stated
above and attests to the fact (as all authorities would have to do) that a
thorough and
complete search has been conducted.
The USPTO would also have to maintain a "search quality review board" in
order to
"sample" the quality of searches submitted by the certified search
authorities. A
component of the In-Process Review is to evaluate the quality of the search
results for
each ESS. 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.
The Office must retain the ability to "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 reexam or post-grant opposition that show clear errors.
Legislation many be
needed to enable the USPTO to de-certify a poorly performing ESS.
It is thought that contractor support will be needed to set up, implement
and maintain the
necessary certification procedures, along with a dedicated staff of search
and examination
experts.
Requiring applicants 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. This would
significantly
reduce the overhead expense of maintaining a bank of on-site translators or
a mechanical
translation system.
Extract from page 303
i. Certification of CSS (Certified Search Service)
All CSSes must be certified by the USPTO, using a process similar to the ISO
9000
certification technique. The criteria would be similar to those utilized to
designate an
International Search Authority (ISA) under PCT, such as number and type of
technical
employees; training provided; claim interpretation; ability to timely
deliver report and
handle 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 databases or
search
engines.
After the initial certification, the CSS would be required to undergo a
regular re-certification
process to ensure that quality standards are continually met.
ii. Quality Assurance
A component of the In-Process review is to evaluate the quality of the
search results for
each CSS. 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,
and acceptability of the results to the examiner based upon specific
findings of
substantive deficiencies.
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