DEPARTMENT OF COMMERCE
Patent and Trademark Office
RIN 0651-ZA02
Docket No. 99-0512128-9128-01
Notice of Public Hearing and
Request for Comments on Issues
Related to the Identification of Prior Art
During the Examination of a Patent Application
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of Hearing and Request for Public Comments.
SUMMARY: The United States Patent and Trademark Office (USPTO) is
seeking comments to obtain views of the public on issues associated with
the identification of prior art during the examination of a patent
application. Interested members of the public are invited to testify at
the hearing and to present written comments on any of the topics
outlined in the supplementary information section of this notice.
DATES: Public hearings will be held on Monday, June 28, 1999, and
Wednesday, July 14, 1999, starting each day at 9:00 a.m. and ending no
later than 5:00 p.m. Those wishing to present oral testimony at any of
the hearings must request an opportunity to do so no later than June 21,
1999 for the June 28, 1999 hearing, or July 7, 1999 for the July 14,
1999 hearing. Speakers may provide a written copy of their testimony for
inclusion in the record of the proceedings no later than August 2, 1999.
To ensure consideration, written comments must be received at the
USPTO no later than August 2, 1999. Written comments and transcripts of
the hearing will be available for public inspection on or about August
9, 1999.
ADDRESSES: The June 28, 1999 hearing will be held in the Nob Hill Room
of the San Francisco Marriott Hotel located at 55 Fourth Street, San
Francisco, California. The July 14, 1999 hearing will be held in the
Patent Theater located on the Second Floor of Crystal Park 2, 2121
Crystal Drive, Arlington, Virginia. Those interested in testifying or in
submitting written comments on the topics presented in the supplementary
information, or any other related topics, should send their request or
written comments to the attention of Elizabeth Shaw, addressed to
Commissioner of Patents and Trademarks, Box 4, Patent and Trademark
Office, Washington, DC 20231. Written comments may be submitted by
facsimile transmission to Elizabeth Shaw at (703) 305-8885. Comments may
also be submitted by electronic mail through the Internet to
elizabeth.shaw2@uspto.gov.
Written comments will be maintained for public inspection in Crystal
Park Two, Room 902, 2121 Crystal Drive, Arlington, Virginia. Written
comments in electronic form may be made available via the PTO's World
Wide Web site at http://www.uspto.gov. No requests for presenting oral
testimony will be accepted through electronic mail.
FOR FURTHER INFORMATION CONTACT: Lois Boland by telephone at (703)
305-9300, by facsimile at (703) 305-8885, by electronic mail at
lois.boland@uspto.gov, or by mail addressed to Commissioner of Patents
and Trademarks, Box 4, Washington, DC 20231; or Robert J. Spar by
telephone at (703) 305-9285, by facsimile at (703) 308-6919, by
electronic mail at bob.spar@uspto.gov, or by mail addressed to
Commissioner of Patents and Trademarks, Box Comments--Patents, Assistant
Commissioner for Patents, Washington, DC 20231. Inquiries regarding the
San Francisco Marriott Hotel should be made to the hotel directly at
(415) 896-1600.
SUPPLEMENTARY INFORMATION:
I. Background
One of the key functions of the United States patent examination
system is to determine whether a claimed invention is novel and
nonobvious. According to United States patent law, a claimed invention
is not patentable if prior art teaches or renders obvious the invention.
See 35 U.S.C. 102 & 103 (1996). Although the term "prior art"
generally describes all information that can be used to show that an
invention is not patentable, Section 102 of title 35 of the United
States Code provides a full legal definition of what information
qualifies as prior art. 35 U.S.C. 102(a)-(g).
Locating relevant prior art is one of the most important aspects of the
patent examining process. During the prosecution of a patent
application, such prior art will be evaluated by the examiner to
determine patentability. Moreover, once the patent is issued, the prior
art of record will be closely scrutinized by competitors and potential
licensees to determine the validity and scope of the patent. In the
event of litigation, these prior art documents will be considered by the
courts for determinations of the validity and scope of issued patents.
Patent examiners and applicants share the responsibility of ensuring
that pertinent prior art is being considered during the examination of a
patent application. To this end, the USPTO imposes an obligation on
patent examiners to conduct a thorough search of the prior art and on
applicants to submit information known to them to be material to
patentability. To assist patent examiners in discharging their duty to
conduct a thorough search of the prior art, the USPTO provides patent
examiners with access to a vast collection of patent documents and
nonpatent literature. However, searching prior art in emerging
technologies presents challenges. First, the terminology in such fields
may not be standardized, which makes it difficult to conduct automated
searches based on key terms. Second, prior art information in new
technologies is frequently not categorized or indexed in a fashion that
facilitates searching and accessibility. Lastly, prior art in certain
areas, such as software-related inventions, may not be available through
customary or predictable means.
Recently, USPTO has been criticized for not considering the most
pertinent prior art during the examination of patent applications. In
particular, software-related patents have been criticized for containing
too few references to nonpatent literature related to these inventions.
While many applicants submit a large number of prior art documents in
connection with a filed patent application, the USPTO may not be
receiving the kind of valuable nonpatent literature necessary to
optimize the quality of patent examination. As the agency charged with
issuing valid patents, the USPTO recognizes the importance of obtaining
and analyzing the closest prior art to the proper prosecution of a
patent application and the validity of an issued patent. For this
reason, the USPTO is interested in obtaining public opinion as to
whether patent examiners are identifying and applying the most pertinent
prior art during the examination of a patent application, and if not,
how the USPTO may be equipped to do so.
II. Issues for Public Comment
Interested members of the public are invited to testify and present
written comments on issues they believe to be relevant to the discussion
below. Questions following the discussion are included to identify
specific issues upon which the USPTO is interested in obtaining public
opinion.
A. Current Procedures for Obtaining Prior Art
Recognizing the importance of issuing patents that are properly
searched and examined, USPTO rules and procedures impose specific
requirements on both examiners and applicants for identifying material
prior art. These obligations are designed to furnish patent examiners
with sufficient information to make appropriate novelty and
nonobviousness determinations.
Patent examiners are obligated to conduct "a thorough investigation of
the available prior art relating to the subject matter of the claimed
invention." 37 C.F.R. 1.104(a) (1998). More specifically, the Manual
of Patent Examining Procedure (MPEP) instructs patent examiners that
prior art searches include not only the field in which the invention is
classified, but also analogous arts. See MPEP 904.01(c) (July 1998).
Moreover, patent examiners are instructed to develop a search strategy
that includes United States patents and "other organized systems of
literature," and to implement the search strategy manually and by
machine. MPEP 904.01(d).
To assist examiners in obtaining prior art, the USPTO has invested a
substantial amount of financial resources to the search and retrieval of
a wide variety of prior art documents. Patent examiners can readily
search classified paper files, microfilm, and CD-ROMs, comprising United
States patents, foreign patent documents, Patent Cooperation Treaty
(PCT) publications, as well as a large selection of nonpatent
literature, including technical journals, books, magazines,
encyclopedias, product catalogues, and industry newsletters. In
addition, patent examiners have access to hundreds of in-house and
commercial online databases providing convenient access, from their
desktop, to millions of United States and foreign patent and nonpatent
literature documents.
Emerging technologies, such as telecommunications and the
computer-related arts, present challenges in searching and identifying
the most relevant prior art. This is often because the best prior art
with respect to these new technologies is available as nonpatent
literature months to years before it is available in the form of United
States or foreign patents. Accordingly, searching the nonpatent
literature in blossoming technologies is vital to patentability
determinations. To ensure complete coverage, the USPTO is assembling a
larger, more complete nonpatent literature prior art collection in
emerging technologies and is working on providing patent examiners with
better access to nonpatent literature in new areas of technology.
Concurrent with the examiner's duty to conduct a thorough and complete
search of the prior art, applicants have a duty to submit all
information known to them to be material to patentability. Specifically,
37 C.F.R. 1.56 provides that information is material to patentability
when (1) it establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a claim; or (2) it
refutes, or is inconsistent with, a position the applicant takes in (i)
opposing an argument of unpatentability relied on by the USPTO, or (ii)
asserting an argument of patentability. 37 C.F.R. 1.56 (1998). In
addition, this Rule encourages applicants to examine certain types of
information, e.g., prior art cited in search reports of a foreign patent
office in a counterpart application, to ensure that material information
is disclosed to the USPTO. 37 C.F.R. 1.56 (a)(1) & (2).
Applicant's duty to submit material information is important to high
quality patent examination because inventors are generally in the best
position to be aware of the state of the art and are in possession of,
or have access to, the most pertinent prior art. For this reason, the
quality of patent examination benefits when applicants assist the
examiners in identifying information, particularly nonpatent literature,
material to patentability.
B. Questions
The USPTO is interested in ensuring that patent examiners consider
the most pertinent prior art during the examination of patent
applications. Public comments, including responses to the following
questions, are invited to assist the USPTO in identifying any
improvements that can be made to ensure that patent examiners are
searching and have access to the most relevant prior art in the course
of examination of a patent application. The tenor of the following
questions should not be taken as an indication that the USPTO has taken
a position on or is predisposed to any particular approach to concerns
regarding examiner access to pertinent prior art. Your thoughts on the
following topics would be appreciated.
1. Is the most pertinent prior art being considered by patent examiners
during examination of patent applications? If not, please include the
following in your response:
(a) Provide support for your conclusions and identify the following:
(i) the area(s) of technology most affected; and
(ii) the type(s) of prior art most overlooked by the USPTO, including
but not limited to United States patents, foreign patentšxn documents,
and nonpatent literature.
(b) Identify why you perceive that patent examiners are not considering
the most pertinent prior art.
2. Do applicants submit the most pertinent prior art that they are aware
of in connection with a filed patent application? If not, please include
the following in your response:
(a) Provide support for your conclusions and identify the following:
(i) the area(s) of technology most affected; and
(ii) the type(s) of prior art that is not being submitted by applicants,
including but not limited to United States patents, foreign patents, and
nonpatent literature.
(b) Identify why you perceive that applicants are not submitting the
most pertinent prior art.
3. Are the current rules and procedures for obtaining prior art during
the examination of a patent application adequate and effective? If not,
please include the following in your response:
(a) Identify aspects of the rules and procedures that do not facilitate
the identification of pertinent prior art;
(b) Discuss any proposed changes to the rules or procedures to improve
the identification of pertinent prior art; and
(c) Discuss potential advantages and hardships that patent applicants
and examiners would face if particular changes were adopted.
4. Are prior art searches typically conducted before filing a patent
application with the USPTO? If not, please explain. If so, please
include the following in your response:
(a) An identification of the area(s) of technology where it is most
likely that a prior art search would be conducted;
(b) The scope of a proper prior art search (i.e., United States Patents,
foreign patents, journal articles, corporate bulletins, as well as other
types of nonpatent literature); and
(c) An identification of databases and Internet resources generally
searched or available to applicants and/or the USPTO.
5. Please indicate whether Information Disclosure Statements are
frequently submitted and, if so, which of the following types of prior
art documents are included:
(a) United States patents;
(b) Foreign patent documents and Patent Cooperation Treaty (PCT)
publications; and
(c) Nonpatent literature, including but not limited to journal articles,
conference papers, corporate bulletins, and Internet publications. If
applicable, please explain why any of the aforementioned type(s) of
prior art documents are not normally submitted to the USPTO.
6. Should applicants be required to conduct a prior art search and
submit corresponding search results, including where they searched, to
the USPTO when filing a patent application? If not, should applicants be
required to disclose whether or not a search was conducted? Please
explain your rationale and discuss any potential advantages and
drawbacks.
7. Should applicants be required to submit all prior art relied upon
during the drafting of the claims of a patent application? Please
explain your rationale and discuss any potential advantages and
drawbacks.
8. Should applicants be required to submit all nonpatent literature
directed to the same field of invention attributable to, authored by, or
co-authored by the applicant? Please explain your rationale and discuss
any potential advantages and drawbacks.
9. Please identify any type(s) of nonpatent literature documents
applicants should be required to submit to the USPTO in connection with
any given patent application (e.g., conference reports, corporate
collections, documents relied on in drafting an application, etc.).
Please explain your rationale and discuss any potential advantages and
drawbacks.
10. If you believe that the most relevant prior art is not being
identified during patent examination, please identify any suggestions to
obviate this problem. In your response, please:
(a) Discuss in detail any idea for addressing this problem effectively;
(b) Explain how the proposal(s) should be implemented;
(c) Identify who should bear the cost; and
(d) Indicate any potential advantages and drawbacks for each suggestion
11. Please discuss any related matters not specifically identified in
the above questions. If this is done, parties are requested to:
(a) Label that portion of the response as "Other Issues";
(b) Clearly identify the matter being addressed;
(c) Provide examples, where appropriate, that illustrate the matter
addressed;
(d) Identify any relevant legal authorities applicable to the matter
being addressed; and
(e) Provide suggestions regarding how the matter should be addressed by
the USPTO.
IIl. Guidelines for Oral Testimony
Individuals wishing to testify must adhere to the following
guidelines:
1. Anyone wishing to testify at the hearing(s) must request an
opportunity to do so no later than June 21, 1999 for the June 28, 1999
hearing, or July 7, 1999 for the July 14, 1999 hearing. Requests to
testify may be accepted on the date of the hearing if sufficient time is
available on the schedule. No one will be permitted to testify without
prior approval.
2. Requests to testify must include the speaker's name, affiliation and
title, mailing address, telephone number, and hearing date desired.
Facsimile number and Internet mail address, if available, should also be
provided. Parties may include in their request an indication as to
whether they wish to testify during the morning or afternoon session of
the hearing.
3. Speakers will be given between five and fifteen minutes to present
their remarks. The exact amount of time allocated per speaker will be
determined after the final number of parties testifying has been
determined. All efforts will be made to accommodate requests for
additional time for testimony presented before the day of the hearing.
4. Speakers may provide a written copy of their testimony for inclusion
in the record of the proceedings. These remarks should be provided no
later than August 2, 1999.
5. A schedule providing the approximate starting time for each speaker
will be distributed the morning of the day of the hearing. Speakers are
advised that the schedule for testimony will be subject to change during
the course of the hearings.
IV. Guidelines for Written Comments
Written comments should include the following information:
1. Name and affiliation of the individual responding; and
2. If applicable, indications of whether comments offered represent
views of the respondent's organization or are the respondent's personal
views.
If possible, parties offering testimony or written comments should
provide their comments in machine-readable format. Such submissions may
be provided by electronic mail messages sent over the Internet, or on a
3.5" floppy disk formatted for use in either a Macintosh or MS-DOS based
computer. Machine-readable submissions should be provided as unformatted
text (e.g., ASCII or plain text), or as formatted text in one of the
following file formats: Microsoft Word (Macintosh, DOS, or Windows
versions); or WordPerfect (Macintosh, DOS, or Windows versions).
Information that is provided pursuant to this notice will be made part
of a public record and may be available via the Internet. In view of
this, parties should not submit information that they do not wish to be
publicly disclosed or made electronically accessible. Parties who would
like to rely on confidential information to illustrate a point are
requested to summarize or otherwise submit the information in a way that
will permit its public disclosure.
May 21, 1999 ROBERT M. ANDERSON
Acting Assistant Secretary of Commerce and
Acting Commissioner of Patents and Trademarks
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