Patent Quality at the USPTO: Focus on the Prior Art Search

There has been a lot of discussion recently, via GAO reporting (http://www.gao.gov/products/GAO-16-490) on the USPTO and various Patent Quality Conferences, that bring into question and discussion a number of issues at the USPTO, from logistical and procedural improvements, to broad patent quality, etc. One aspect that caught our attention was prior art searching at the recent Santa Clara–Duke Law Patent Quality Conference:

Santa Clara – Duke Law Patent Quality Conference: Patent Quality – It’s Time

Of note: “Assistant GAO director Robert Marek next discussed highlights from the agency’s studies of patent quality and prior art search. These studies relied heavily on a survey that produced 2669 USPTO examiner respondents. The survey found that 70% of examiners reported having insufficient time to examine applications; the majority reported wanting more time for prior art search…”

…”On the issue of search, the GAO recommends that the PTO develop guidance of what constitutes a good prior art search; identify key sources of NPL; monitor search quality; and assess the time examiners need for search…”

We found the foregoing excerpts to be profoundly on point. A lot of our team came from the USPTO at one point or another. We all conclude that prior art searching at the USPTO was not generally emphasized. Search best practices were taught in a piecemeal fashion, if at all. The idea in many cases was to find workable prior art in the quickest manner possible. Of course, the goal was to find the strongest prior art, but with time constraints, and the lack of professional search training, this goal was not consistently achievable. Patent examination at the USPTO is substantially more condensed and efficient when the strongest prior art is found and applied during prosecution.

In general: Professional and comprehensive prior art searching ==> Strongest prior art ==> More efficient patent examination process ==> Stronger patents issued

From our standpoint, as professional searchers, we have seen the difference between how we searched as Examiners, to how we search professionally here at SPSG. The difference is substantial. For example, a large component of our work comprises invalidity searching. One of the first steps when tackling an invalidity study is to examine the prosecution history of the patent in question. The first section we typically read is the Examiner’s search history – where did they search, how extensive was their prior art search? More often than not, the Examiner’s search is lacking, and appears to be “quick and dirty” rather than indicating an effort to locate the best prior art with a comprehensive search strategy. As a result, we typically find substantially relevant prior art, missed by the USPTO during prosecution, in most of our invalidity searching. A less-than-desirable search by the Examiner during prosecution thus impacts the validity and strength of the patent.

From the same patent quality conference, we could not agree more with the EPO, per below. Searching should be the cornerstone of patent examination. Effective and professional searching will help to streamline examination and ultimately improve patent quality.

“EPO Patent Quality Director Alfred Spigarelli’s presentation was titled: “Patent Quality: Get it Right the First Time.” He emphasized the human resources component of the patent quality equation, from the hiring standards the EPO applies (e.g. examiners must be able to actively work in three languages), to the training each EPO examiner receives, to the low turnover rate. Search is viewed as the cornerstone of the patent examination process, with 60% of time dedicated to search.”

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