This is the draft of the input PIUG will give the the USPTO regarding Technical
Documentation Strategy. This was discussed at our recent annual meeting by
Jeff Forman of IBM. You may remember Jeff asked for a volunteer to take
his AIPLA testimony and flavor it to PIUG. What you find below is Jeff's
excellent comments given moderate editing by me. Please give this matter
some of your valuable time. The issues being decided are important to
all members of PIUG. Make any comments you have ASAP as this must be
submitted to the USPTO by Friday June 7.
Also please remember Jeff's comments that the USPTO is very conscious
of numbers of opinions. QUANTITY COUNTS! Please consider sending an edited
version of this under your personal name.
Regards,
Steve Reynolds
DuPont
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STATEMENT BY THE
PATENT INFORMATION USERS GROUP
REGARDING THE
TECHNICAL DOCUMENTATION STRATEGY
OF THE UNITED STATES PATENT AND TRADEMARK OFFICE
The Patent Information Users Group (PIUG) welcomes
the invitation of the United States Patent and Trademark
Office (USPTO) to give input on the Technical
Documentation Strategy and appreciates the opportunity to
submit this statement.
The Patent Information Users Group is a
national association comprising more than 125
professional patent searchers in private and corporate practice.
PIUG represents
a wide and diverse spectrum of individuals and companies providing
information to end users regarding
patents and trademarks, as well as other fields affecting
intellectual property.
The PIUG would like to see the USPTO achieve the benefits
of automation from adding
new search tools to the Examiners repertoire and also
enhancing the overall effectiveness of the U.S. Patent
System by making these available to the public. We have in the past
encouraged the USPTO to look at what other patent
offices are doing to improve search and documentation and
to cooperate with them. We have also encouraged the
USPTO to look to the private sector and not devote its
limited resources to duplicating what the private sector
has already done. Therefore, we are very pleased with
those aspects of the USPTO's plans that state that the
USPTO is going to be working with other patent offices
and trying various private sector tools and systems to
improve its documentation, classification and search
programs.
However, we are very disappointed that last October,
before holding this hearing and before having effective
substitutes in place, the USPTO took the steps of
eliminating non-U.S. Patent documents prospectively from
the Examiners search files and drastically reducing
resources for maintaining and improving the U.S. Patent
Classification System (USPCS).
When these planned actions became known last year, the
PIUG discussed the alternatives and possible consequences. PIUG concluded
that these steps should not be taken until alternatives
had proven themselves to be effective substitutes. The
PIUG USPTO Committee then prepared a resolution which states:
WHEREAS the USPTO has announced an
intention to reduce the classification staff
by nearly half,
AND WHEREAS computerized tools have not
yet proven to perform as well as human
concept-based classification,
RESOLVED that the PIUG favors continuing
to use persons knowledgeable in the art area
to regularly classify and reclassify U.S. and
foreign patent publications to maintain or
reduce the current average subclass size and
to reclassify art areas when any subclass
becomes too large for practical routine manual
searching or no longer accurately reflects the
current state of the art area.
FURTHER RESOLVED that the PIUG favors in
principle cooperation between the USPTO and
other patent offices in classification and
classification studies.
We have been anxiously awaiting this promised opportunity to input our
resolution.
Nothing we have seen or heard from the USPTO in the past year
has changed our position.
Furthermore, the USPTO's own Customer Satisfaction Survey
conducted by the Bureau of the Census under the Federal
Government's National Performance Review supports the
position taken by the PIUG. In the survey section dealing with
Patent Services, the USPTO standard that was rated as the
MOST IMPORTANT by USPTO customers was:
CONDUCT A THOROUGH SEARCH DURING THE PATENT
EXAMINATION PROCESS OF RELEVANT U.S. PATENTS,
FOREIGN PATENT LITERATURE AND NON-PATENT
LITERATURE CONTAINED IN PTO SEARCH FILES AND,
WHERE APPROPRIATE, A REASONABLE SEARCH OF
OTHER NON-PATENT LITERATURE.
The importance value attached to a thorough search was
4.6 on a scale of 5 where 4 is "very important" and 5 is
"extremely important". When asked about the USPTO's
performance in conducting thorough searches, customers
rated that performance as less than satisfactory (2.67 on
a scale of 5 where 3 is "satisfied"). (See attached
extract from the Census report).
The gap between importance and satisfaction for this
standard was a negative 1.93 which was the second largest
negative performance gap in the survey. It was exceeded
only by the negative 1.95 gap for the standard described
as "Set clearly in written communications examiners
technical, procedural and legal position".
Given that the USPTO's Examiners are highly qualified and
dedicated to trying to do the best search and examination
job that they can, it is not from lack of trying that
they are failing to satisfy customers with the quality of
their searches and communications. It is very likely
that the Examiners performance in these two areas is
related. If an Examiner has not been able to find good
prior art and yet feels that certain claims should not be
allowed, the art rejections that the examiner makes by
"stretching" the art found are going to seem strained to
the customer.
The root of this problem is the USPTO search files and
search tools made available to the Examiners. The
January 1995 report by Mathis and Associates entitled
"Automated Patent System - Is it Meeting Examiner's
Needs?" showed that Examiners continue to place their
greatest reliance on manual searching of patent documents
in the shoes. The Mathis survey results showed that 92%
of Examiners feel "the shoes completely, to a large
extent or to some extent fulfill their information
needs." The survey found that 81% of Examiners search
the shoes on virtually every application they examine as
compared to 44% for APS. The Mathis report then
concludes:
However, continued and heavy dependency on the
shoes in inevitable until PTO's automated
search systems are fully implemented. A major
PTO effort will also be required to improve
computer literacy and re-orient examiners
towards electronic search processes.
Reduction in dependency on the shoes is
directly tied to the ability of APS to become
more comprehensive and to include the text of
all patents dating back to 1790, foreign
patents and non-patent literature. APS must
also become more accessible to examiners --
customized text and image search avail-able
right on the desktop. Moreover, examiners
must be thoroughly trained in how to make the
most of PTO's automated search tools. (Mathis
report, page 35)
For further emphasis, this paragraph is footnoted as
follows:
FOR ALL OF THE REASONS DISCUSSED, IT IS
REASONABLE TO EXPECT THAT THE SHOES WILL BE AS
MUCH A 21ST CENTURY ICON AS THEY WERE IN THE
19TH AND 20TH CENTURY. (Mathis report,
footnote, page 35)
This administration at the USPTO has made "Customer
Satisfaction" a cornerstone of its policy, for which it
is to be commended. It has placed great emphasis on
getting input from customers such as Examiners inside the
USPTO and from external customers such as applicants,
attorneys and the patent information user community.
Many of us have quite willingly spent many hours
participating in focus group sessions conducted by the
USPTO, the stated purpose of which was to enable the
USPTO to get input so that it could be more responsive to
our needs. It is therefore very discouraging that, given
the results of the Mathis Examiner survey and the
National Performance Review Customer survey as well as
the PIUG resolution, the USPTO made
the decisions to drastically reduce reclassification and
to cease placing non-U.S. Patent documents in the
classified search file. It would seem that until
Examiners and the public feel as confident with
electronic search tools as they do with the USPTO's U.S.
Patent Classification based search files, the USPTO
should be doing all it can to make its classified search
files as complete and up to date as possible.
Public concern over the possible premature adoption of
unproven search systems and the elimination of the
USPTO's classified paper search files resulted in the
following language being added to 35 USC Section 41 in
1991 (Pub. L. 102-204, Section 5, 105 Stat. 1637-39).
Section 41 (i)(1): The Commissioner shall
maintain, for use by the public, paper or
microform collections of United States
patents, foreign patent documents, and United
States trademark registrations arranged to
permit search for and retrieval of
information.
For the foreseeable future, patent searching will be
largely paper based and a viable and up to date U.S.
Patent Classification System will remain the key to
effective searching. No other classification system is
as detailed in its subdivisions as the USPCS. No other
classification is as thorough in its review of older
patent documents when classifications are updated and
inclusion of placement of these documents in the newly
established classifications. No other classification
system is as rigorous as the USPCS in following
principles of classification in placing documents within
the system. No other classification system provides a
detailed definition for each subdivision to facilitate
the understanding of its content.
In addition, an effective USPCS is also a key to being
able to do reliable and cost-effective text searching
on-line. Inclusion of U.S. classification search terms in
a search strategy establishes the appropriate context for
a keyword search with a higher degree of reliability and
consistency and less time and effort than trying to do so
with additional keyword search terms.
The USPTO's Classified Search and Image Retrieval search
system (CSIR) is also dependent on an effective USPCS.
Among the benefits of CSIR, is the ability to browse the
patents in a set of classifications without having to
spend time viewing the same patent more than once by
combining those classifications in an "ORed" together
set. Another CSIR capability that would be diminished
without an effective and up to date USPCS is the ability
to combine classifications representing multiple concepts
being searched by "ANDing" those classifications together
and then browsing those patents retrieved that should
then contain disclosure of the multiple concepts. In addition
to using the USPCS as a tool for doing prior art searches many
PIUG members use it as the basis for current awareness services.
IT SHOULD BE UNDERSTOOD BY THE USPTO THAT WE IN INDUSTRY DEPEND ON
THE USPCS TO CONDUCT OUR DAILY BUSINESS. IT IS A BASIC TOOL OF THE TRADE.
The elimination, or degradation, of the USPCS will affect our ability
to provide high quality information to our end users.
Not only is it critically important that the classification
system itself be maintained, but it is also important that complete
information be filed in that system. At a minimum U.S. patents, foreign
art and the full Technical Contents Publication should be filed together
according to the USPCS schedule.
The USPTO's plan to utilize a Global first page database
as the basis for searching non-U.S. Patent documents is
not sufficient for a thorough and reliable search.
Patent abstracts alone are not sufficiently detailed to
serve as the basis for comprehensive retrieval based on
keyword searching. This is especially true if the
abstracts are those submitted by applicants or merely
translations of applicants' abstracts. Since there is no
intent to add U.S. Patent Classifications to this
database as an indexing key, it won't be possible to
browse sets of abstracts and representative drawing
figures based on a well understood classification. It is
very unlikely that the abstract will enable
identification of patent documents based on examples,
alternative embodiments or incidental disclosure; all of
which can be the most important aspects of the prior art
value of the document for a particular search. To rely
on an abstract based search would place an excessive
burden on Examiners and the public in terms of time and
cost to then have to separately obtain and review large
numbers of full patent documents that, based on their
abstracts, might be relevant to the search. Furthermore,
a Global first page search system is not yet operational
and is not expected to be available before 1997.
The USPTO's plan to place only the Patent Application
Cover Sheet (PACS) and not the full Technical Contents
Publication (TCP) in the search files would create search
problems and inefficiencies and result in added search
costs in the same manner as the Global first page system.
In considering its overall search file documentation
strategy, we again urge the USPTO to rethink its pre-
Grant Publication plans and to place the TCP in at least
the Examiner search file.
The USPTO's Corps of highly skilled and experienced
Examiners is a national asset and its search files are a
treasure of technical information. The
contributions they make to the issuance of valid and
strong patents is important to our national economy and
the strength of U.S. enterprise and inventiveness. The
AIPLA Information Retrieval Committee fully supports the
USPTO in its continuing efforts to seek out new search
and documentation tools to improve Examiner productivity
and achieve higher quality search and examination.
However, we strongly disagree with the recent actions
taken by the USPTO which have derogated the effectiveness
of the USPCS and the completeness of the Examiner's
search file. These actions have had the effect of
removing the tried and true "hand tools" from the tool
box before the new "power tools" have been fully
developed or have proven themselves safe and effective
for use. For Examiners who are striving to do the best
job they can, this has got to be demoralizing. We in PIUG
may not examine patent applications but our prior art searches
require require the best tools for patent searches as well.
Recent pressure for management in all U.S. companies to cut cost
has prompted increased scrutiny of the subscriptions we pay to value-added
patent database providers. We understand all to well the fear of losing
long trusted tools which provide more accurate retrieval. We know
the investment in these tools is paid back manyfold by superior product.
But those responsible for showing a lower budget may not recognize these
benefit because there is short term savings and the decreased quality
shows up in the long term.
The PIUG respectfully requests that the USPTO reverse the
actions that were taken on October 1, 1995. PIUG
recognizes that continuing the reclassification
program and full placement of U.S. and foreign patent
documents in the search files represents additional costs
to the USPTO as compared to the alternatives adopted or
planned. However, we feel that this is a worthwhile
investment that the USPTO should continue to make until
alternatives are proven effective. We also suspect that these programs
may be cut just prior to the government corporation status the USPTO
may transition to. It would a shame to lose the reclassification personnel, who
would be hard if not impossible to reassemble, when this status will in all
likelihood make their relatively small budget easily supportable.
We welcome the
opportunity to continue to work with USPTO staff in both
developing these alternatives and in restoring the
present search systems and tools in as cost-effective a
manner as possible.
-- =============================================================== Sandra Unger | Mail: ssunger@erenj.com | (908) 474-6605 ===============================================================