>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
>-----------------------------------------------------------------------
>
>
>
>
>
> 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 ===============================================================