Nerac Interview:
We spoke with Nerac’s Intellectual Property (IP) Advisor, Lucy Akers, about the proposed U.S. legislation that may require organizations to submit a patentability search report with every patent application. This is a big shift from past policy where patent examiners from the US Patent and Trademark Office (USPTO) have been responsible for performing most patentability research themselves. However, a search report has been required in very limited circumstances when applicants file a request for accelerated examination (“petitions to make special”).

Recently the USPTO also announced many changes to the procedures for filing “petitions to make special”. Lucy explores some of the implications of these changes and how they may have the potential to affect all patent applicants, not just those requiring accelerated examination.

Nerac: What do you think the USPTO is trying to accomplish by requiring applicants to provide a search report with the initial filing of every patent application?

Akers: The USPTO is encumbered with a tremendous backlog of nearly a million pending patent applications. The proposed mandatory submission of patentability search results for each application may be one part of the solution to the backlog problem. This would be accomplished by reducing the amount of examiner time spent on searching and increasing the amount of time spent on patent examination. Since the policy would also require applicants to provide a detailed discussion of the prior art relative to the disclosed invention, this could also decrease the amount of time that examiners need to process each patent application, thereby further reducing the backlog.

Nerac: What has already been done that is perhaps leading up to the potential implementation of this policy?

Akers: The 2002/2003 USPTO’s 21st Century Strategic Plan provided an initial call for outsourcing patentability research to commercial search firms. The proposal, within the context of the overall strategic plan, was confusing to a lot of people, including corporate patent searchers. This proposal was also apparently not very popular with the USPTO patent examiners union, which argued that searching was an integral part of the examination process.

Then Congress passed legislation severely restricting the program and effectively delayed implementation for about 3-5 years. Despite this, in 2005 the USPTO launched a small-scale pilot international application (PCT) searching project with contracts awarded to two U.S.-based firms. The pilot was to determine whether searches by commercial firms could provide sufficient accuracy and quality while remaining cost effective.

The USPTO also developed and recently published patent search templates. Search templates define the field of search, search tools, and search methodologies that should be considered each time a patent application is examined in a particular patent classification and subclass. The USPTO is currently inviting public comment on the adequacy and completeness of the search templates.

I recently took a look at the search templates and it is clear they were developed by staff within the USPTO! In my opinion, many USPTO customers will find the templates somewhat difficult use. The templates require that the customer (or commercial search firm) be aware of the proper classification for the invention in question. Identifying the most pertinent class and subclass can sometimes be a challenging task, even for experienced information professionals.

Finally, and most recently, the USPTO has radically revised and published new procedures under which the examination of a patent application may be accelerated. The change in practice applies to all “petitions to make special” filed on or after August 25, 2006.

Under this new USPTO accelerated examination procedure, applicants will be required to conduct a search of the prior art (and to disclose their search term strategies and patent classes), to identify and submit all prior art that is closest to their invention, and to explain what the prior art teaches and how their invention is different. The applicant must identify where in each of the most relevant references each and every claim limitation can be found.

In the accelerated examination cases, in addition to providing and explaining any prior art references, applicants must state how their invention is useful and must show how the written description supports the claimed invention. The applicant must provide a claim support map to show support in the specification for all elements of the claims. The proposal also limits the number of claims allowed in each application and shortens the time periods for responding to most USPTO communications.

In essence the outsourcing of patent research and the changes to the procedures for “petitions to make special” seem to be providing the patent office with a practice (small-scale) run for eventual implementation of these (or very similar) procedures and requirements to all patent applications!

Nerac: What are some of implications of this policy?

Akers: Some think the revisions to requirements for “petitions to make special” and the legislation to require a patent search report with every patent application will greatly increase the overall cost and risk associated with patent practice by shifting the burden of these activities from the patent office to applicants. These include litigation risk, attorney and search firm risk (for example, when key references are missed in prior art searches that are later used to invalidate the patent in litigation), and prosecution costs.

Applicants currently pay a $500 search fee to the USPTO. However, this fee is highly subsidized from other funds coming into the PTO. It will be interesting to see whether the USPTO eventually drops the search fee? Because of the subsidy and for many other reasons, it is important for people to understand that a patentability search can often cost more than the basic fee currently charged by the USPTO.

Unfortunately, the policy could also lead to the further proliferation of inexperienced patent research firms since it seems there are not enough search firms (in the USA) to meet the expected demand while maintaining a reasonable quality level.

Finally, these requirements seem to be contrary to what is happening in other countries. For example, when the USPTO originally published information about splitting patent searching from patent examination, the European Patent Office was doing the reverse! In other countries, the burden or prior art searching (if any) falls entirely on patent examiners. These current efforts, therefore, seem to be contrary to the overall efforts at the USPTO to harmonize their practice with other major patent offices, like Japan and Europe.

For more information, please visit the USPTO web site. Public comments are invited.