| Issue: Fees, Notifications, Applicant Submissions |
Referenced Items (214, 215, 216, 217, 218, 219, 220, 221, 222, 223) |
(215) Revised Procedure for Recording Search and
Information Printed on the Face of
Patent under the Heading "Field of Search"
The procedure for recording search data in an application file
currently set forth in MPEP Sec. 719.05 does not accurately reflect what
was searched by the examiner since the current procedure makes no
distinction between a classified search and a classified search limited
by text query(ies). Furthermore, when an electronic search is
performed, the current procedure for recording search data does not
require a complete search history (i.e., a printout) identifying all
the search logic used in the database query, the name of the file
searched, the database service and the date the search was performed,
to be included in the application file. Examiners may instead provide
such information in the "SEARCH NOTE" box in the application file,
which may or may not be as complete as a printout. In most instances
the recorded annotations in the "SEARCH NOTE" box are far less
complete than the associated search history printout. A proper
recordation of the search in an application file will improve the
quality of the application file record by accurately reflecting what
was searched by the examiner and will permit any person reviewing the
application file to reproduce the search performed by the examiner and
evaluate the adequacy of the search. A revised procedure for recording
search (a summary of which is set forth below) has recently been
implemented in the patent examining corps. MPEP Sec. 719.05 will be
revised in the next revision of the MPEP to incorporate the revised
procedure for recording search.
Revised Procedure for Recording Search in the Application File:
If a classified search was performed, the class and subclass
must be recorded. A classified search is defined as a complete search
of all the documents in a particular subclass, whether filed by U.S. or
IPC classification and is not limited by any text query or other means.
Examiners may not just record a class and subclass when a limited
classified search was performed. A limited classified search is defined
as a search of a classified patent document database limited by a text
query or a set of text queries or other means. If a limited classified
search was performed, an appropriate annotation must be included that
explains the limitation made in performing the search (e.g., text
search only). Any time that a limited electronic search was performed,
a complete search history in the form of a printout must be included in
the application file. The USPTO believes that this change is necessary
for any meaningful quality review of the search, in examiner work
products, work-sharing efforts under our Trilateral working group
efforts, and any competitive outsourcing of the search.
Information to be Printed on the Face of Patent under the Heading
"Field of Search:"
In view of the revised procedure for recording search, it is
not practical to record the various formats of the many types of text
or other searches on the face of the printed patent grant. The USPTO
will replace the current printed US Classes and subclasses under the
heading "Field of Search" on the face of a patent with a section
listing the "Classified Field of Search" and the following
statement: "See application file for the complete search history."
June 21, 2005 JOSEPH J. ROLLA
Deputy Commissioner for
Patent Examination Policy
[1296 OG 118]
Top of Notices (215) December 29, 2009