Q: What automated search tools are available to patent examiners?

According to MPEP 902.03(e) , patent examiners have access to several automated search tools on their desktop computers: Examiner's Automated Search Tool (EAST) Web-Based Examiner Search Tool (WEST) Patents End-to-End Search tool (SEARCH) Foreign Patent Access System (FPAS) The MPEP states: "EAST, WEST, and SEARCH provide examiners with access to the: (A) full text of U.S. published applications since 2001; (B) full text of U.S. patents granted since 1970; and (C) optically scanned full text of U.S. patents granted 1920-1970." These tools offer comprehensive access to patent documents, classification information, and images for U.S. published applications and patents. They also provide access to foreign patent documents and English language abstracts for many foreign patent documents published since 1978. To learn more: Patent Examiner Tools EAST WEST SEARCH FPAS Patent Search

Question 1

What automated search tools are available to patent examiners?

Accepted Answer

According to MPEP 902.03(e), patent examiners have access to several automated search tools on their desktop computers:

Examiner's Automated Search Tool (EAST)
Web-Based Examiner Search Tool (WEST)
Patents End-to-End Search tool (SEARCH)
Foreign Patent Access System (FPAS)

The MPEP states:

"EAST, WEST, and SEARCH provide examiners with access to the: (A) full text of U.S. published applications since 2001; (B) full text of U.S. patents granted since 1970; and (C) optically scanned full text of U.S. patents granted 1920-1970."

These tools offer comprehensive access to patent documents, classification information, and images for U.S. published applications and patents. They also provide access to foreign patent documents and English language abstracts for many foreign patent documents published since 1978.

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Question 2

Do patent examiners need to conduct a second search after the first Office action?

Accepted Answer

Generally, patent examiners do not need to conduct a second search after the first Office action, unless specific circumstances arise. The MPEP states: Following the first Office action, the examiner need not ordinarily make a second search of the prior art, unless necessitated by amendments to the claims by the applicant in a reply to the first Office action, except to check to determine whether any reference which would appear to be substantially more pertinent than the prior art cited in the first Office action has become available subsequent to the initial prior art search.

However, if the examiner does update the search, they must document this in the IFW search notes form, as mentioned in MPEP § 719.05.

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Question 3

Are there any exceptions to submitting copies of earlier search results or applications?

Accepted Answer

Yes, there are several exceptions to the requirement of submitting copies of earlier search results or applications when requesting consideration of an earlier search in a PCT application. According to MPEP 1819, which cites PCT Rule 12bis.1, the following exceptions apply:

Same Office Exception:
"Where the earlier search was carried out by the same Office as that which is acting as the receiving Office, the applicant may, instead of submitting the copies referred to in paragraphs (a) and (b)(i) and (iv), indicate the wish that the receiving Office prepare and transmit them to the International Searching Authority."
Same ISA Exception:
"Where the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, no copy or translation referred to in paragraphs (a) and (b) shall be required to be submitted under those paragraphs."
Substantially Same Application Exception:
"Where the request contains a statement under Rule 4.12(ii) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language, no copy or translation referred to in paragraphs (b)(i) and (ii) shall be required to be submitted under those paragraphs."
Availability Exception:
"Where a copy or translation referred to in paragraphs (a) and (b) is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library or in the form of the priority document, and the applicant so indicates in the request, no copy or translation shall be required to be submitted under those paragraphs."

These exceptions can simplify the process for applicants and reduce redundant document submissions in certain situations.

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Question 4

When is it necessary to search outside the proper classification in patent examination?

Accepted Answer

While patent examiners typically focus on the proper classification for their searches, there are instances where searching outside this classification is necessary. The MPEP 904.02(a) provides guidance on this:

"However, if the above proper classification does not correspond to the subject matter found in the claims (e.g., a situation where the proper classification corresponds to a disclosed, but unclaimed, embodiment), it is not necessary to search areas in which it could reasonably have been determined that there was a low probability of finding the best reference(s)."

This means that examiners should focus their search on areas most likely to contain relevant prior art, even if that means looking beyond the proper classification. The key is to ensure a thorough search while maintaining efficiency.

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Question 5

What constitutes a serious search and/or examination burden in an Election of Species requirement?

Accepted Answer

In an Election of Species requirement, the examiner must establish that there is a serious search and/or examination burden if all species were to be examined together. According to the MPEP 809.02, a serious search and/or examination burden can be demonstrated by one or more of the following reasons:

The species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
The species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
The species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries)

The MPEP provides specific guidance for examiners in form paragraph 8.01: "There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4]." In this paragraph, the examiner is required to insert the applicable reasons for the search and/or examination burden.

Additionally, for examination burdens, the MPEP notes that non-prior art issues, such as those under 35 U.S.C. 101, 35 U.S.C. 112(a), or pre-AIA 35 U.S.C. 112, first paragraph, that are relevant to one species but not to others can constitute a serious examination burden.

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Question 6

What is the significance of the one-way test in suggesting an interference?

Accepted Answer

The one-way test is a crucial concept in determining whether to suggest an interference. According to MPEP 2304:

"The examiner should apply the one-way test. That is, the examiner should determine whether the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa."

The significance of the one-way test lies in its ability to:

Identify potential interferences: It helps examiners determine if there's a substantial overlap between claims that warrants an interference proceeding.
Assess claim scope: By applying this test, examiners can evaluate the relative breadth and specificity of the claims in question.
Ensure fairness: The test is applied in both directions to ensure a comprehensive comparison of the claims.

If the one-way test reveals that the claims of one party would anticipate or render obvious the claims of the other party (in either direction), it suggests that an interference might be necessary to determine priority of invention.

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Question 7

How can a policy question be certified to the Chief Administrative Patent Judge?

Accepted Answer

A policy question can be certified to the Chief Administrative Patent Judge for decision according to 37 CFR 41.3(a). As mentioned in MPEP 1002.02(g), this is one of the petitions decided by Administrative Patent Judges:

"1. Certification of a question of policy to the Chief Administrative Patent Judge for decision. 37 CFR 41.3(a)."

This process allows for important policy matters to be addressed at a high level within the Patent Trial and Appeal Board.

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Question 8

How can I search for specific patents or trademarks in the Official Gazette?

Accepted Answer

The Official Gazette provides several ways to search for specific patents or trademarks. According to MPEP 1703, for patents, you can use the Electronic Official Gazette — for Patents (eOG:P) to:

Browse by CPC or USPC classification
Access patents by class/subclass or patentee name
Browse granted patents by patent number or type
Use the Index of Patentees to search by inventor or assignee names
Use the Geographical Index of Inventors to find patents by the inventor's location

For trademarks, the Official Gazette – Trademarks includes:

An alphabetical list of registered trademarks
A classified list of registered trademarks
An index of registrants

The MPEP also notes, "The information in the Official Gazette pertaining to each issued patent and each trademark registration can be obtained from the Patent Grants Database and the U.S. Trademark Electronic Search System (TESS) respectively, both also available on the USPTO website." These databases provide additional search capabilities for more detailed research.

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Question 9

What is a Supplementary International Search (SIS)?

Accepted Answer

A Supplementary International Search (SIS) is an optional service in the Patent Cooperation Treaty (PCT) process that allows additional searches to be performed by a Supplementary International Searching Authority (SISA) during the international phase, in addition to the search performed by the main International Searching Authority (ISA).

According to the MPEP, Requesting supplementary international search reduces the risk of new prior art being cited in the national phase. This is particularly useful because The increasing diversity of prior art in different languages and different technical fields means that the Authority carrying out the main international search is not always capable of discovering all of the relevant prior art.

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The Importance of Patent Searches

What automated search tools are available to patent examiners?

Do patent examiners need to conduct a second search after the first Office action?

Are there any exceptions to submitting copies of earlier search results or applications?

When is it necessary to search outside the proper classification in patent examination?

What constitutes a serious search and/or examination burden in an Election of Species requirement?

What is the significance of the one-way test in suggesting an interference?

How can a policy question be certified to the Chief Administrative Patent Judge?

How can I search for specific patents or trademarks in the Official Gazette?

What is a Supplementary International Search (SIS)?