Patent Examination and Prior Art Searching

by Michael Goltry, Registered Patent Attorney (480-991-3537; mg@pgpct.com)

Patent examination is a complex fact-finding mission for providing predictable and reliable intellectual property rights. The prior art search is the foundation of this objective. A patent examiner’s ability to find the best prior art at the earliest possible time during the patent examination process ensures both quality and timeliness.

To enhance examiners’ ability to efficiently find the most relevant prior art in a body of references expanding numerically and globally, the U.S. Patent and Trademark Office (USPTO) has improved prior art searching processes and tools that leverage the abilities of USPTO personnel. Recent endeavors implemented by the USPTO include:

-The new Patents End-to-End (PE2E) Search Tool for patent examiners on a web-based platform. The PE2E enables a flexible development of search functionality and access to over 70 million foreign documents.

-New search capabilities that utilize artificial intelligence (AI), including an AI-based prototype search system that enables examiners to find relevant prior art and machine learning to classify patent documents using the Cooperative Patent Classification system.

-The Peer Search Collaboration Pilot for learning and collaboration in which paired examiners independently search the same case and exchanged results and strategies.

-A Search and Classification Examiner position that provides examiner’s with searching expertise and training.

-Continuing education classes on search techniques and strategies, database searching, and non-patent literature searching using discipline-specific examples.

-Examiner training examiners on Global Dossier, which provides access to an entire patent family in one location, English machine translations, and the ability to view all citations in a single list.

-Updating examiner performance appraisals to increase the emphasis on searching at the planning and conducting stages, and providing the most relevant prior art as early as possible in prosecution.