Doesn't Option 1 pose a conflict-of-interest?
Lucy Akers wrote:
I think my previous note about this was too long since I haven't
received much feedback from the membership. BELOW IS A SHORTER E-MAIL
WHICH EXTRACTS SOME INFO FROM THE USPTO 21st century plan. IT APPEARS
THIS REPORT WILL IMPACT ALL OF US DOING NOVELTY / PATENTABILITY
SEARCHCES FOR U.S. PATENT APPLICATIONS. The full impact of these
proposed changes on corporate patent searchers and other search firms is
not understood/known at this point. THE USPTO is apparently looking to
eliminate patent searching from the USPTO so that examiners can focus on
examination. Please send comments asap! The timeline is very short.
Thanks.
Lucy Akers, PIUG Chair
--------
Extract from USPTO 21st century plan, pages 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.
Lucy Akers, PIUG Chair
Akers & Co.
Grey Friars, Spring Road
Harpenden, Hertfordshire AL5 3PP
England
tel: +44 (0) 1582 467699
fax: +44 (0) 1582 467615
email: <email: > lucyakers@btopenworld.com
<mailto:lucyakers@btopenworld.com>
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