United States Patent and Trademark Office OG Notices: 06 June 2006

                            DEPARTMENT OF COMMERCE
                          Patent and Trademark Office
                        [Docket No.: PTO-P-2006-0026]
                           Request for Comments on
                           Patents Search Templates


AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

SUMMARY: The United States Patent and Trademark Office (USPTO) has
developed and 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
classification. The USPTO is inviting public comment on the search
templates.

ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to STIC-SearchTemplate@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Patents Search Template Comments,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
Although comments may be submitted by mail, the USPTO prefers to receive
comments via the Internet.
   The comments will be available for public inspection via the USPTO's
Internet Web site (address: http://www.uspto.gov). Because comments will
be made available for public inspection, information that is not desired
to be made public, such as an address or phone number, should not be
included in the comments.

FOR FURTHER INFORMATION CONTACT: Kristin Vajs, Manager, Scientific and
Technical Information Center (STIC), Office of the Deputy Commissioner for
Patent Resources and Planning, by telephone at (571) 272-3512.

SUPPLEMENTARY INFORMATION: Currently, patent applications filed in the
USPTO, and the resulting United States patent application publications
and United States patents, are classified into approximately 600 classes
based upon technology and subject matter of the claimed invention. A patent
examiner is responsible for reviewing prior patent documents, both domestic
and foreign, and other printed literature related to an application's
subject matter during the examination process. This review, called the
search, is performed by consulting the appropriate classes, and their
respective subclasses, in the United States classification system, other
patent document databases, and any other printed media (also known as
"non-patent literature" or "NPL"), which might disclose the invention
disclosed/claimed in a patent application under examination. 
   In determining the appropriate field of search for an invention, the
examiner must consider three sources of information: (1) Domestic patent
documents; (2) foreign patent documents; and (3) NPL. The current
requirements for conducting that search are set forth in section 904.02
of the Manual of Patent Examining Procedure (MPEP). See MPEP Sec. 904.02
(8th ed. 2001) (Rev. 3, August 2005). An examiner may not eliminate any
of these resources from consideration unless the examiner can justify to
a reasonable certainty that no more pertinent references will be found in
a further search. See MPEP Sec. 904.02. Although the general guidance set
forth in the MPEP is accurate, it provides little information on what
resources should be searched, and which of the available search tools
or methodologies, for a particular field of subject matter should be
consulted. Detailed guidance on the choice and use of specific search
tools were left to each Technology Center. See MPEP Sec. 904.02(b)).
   The USPTO has published "search templates" for each of the classes
found in the USPTO's Manual of Classification. A search template will
define the search field and resource areas of general subject matter,
classes/subclasses, patent documents (both domestic and foreign) and NPL
that an examiner should consider each time a patent application is examined
in a particular classification. Additionally, the search template will
indicate what search tools or methodologies should be considered when
performing the search. These search templates are based upon input from
patent examiners and other searchers at the USPTO and represent an attempt
to capture their institutional knowledge of what are the most relevant
prior art searches for determining the patentability of subject matter
in the area of technology.
   In an effort to ensure that each classification has an appropriately
structured field of search and search strategy, the USPTO has published
the search templates on the USPTO's Internet Web site at
http://www.uspto.gov/web/patents/searchtemplates/. The USPTO
is publishing this request for comments to gather public feedback on
the adequacy and completeness of the search templates. 

May 10, 2006                                                      JOHN DOLL
                                                   Commissioner for Patents