[Federal Register Volume 64, Number 102 (Thursday, May 27, 1999)]
[Notices]
[Pages 28803-28806]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-13440]
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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.
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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,
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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 CFR 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
Sec. 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 Sec. 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
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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 CFR 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 CFR Sec. 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 CFR 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 patent
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;
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(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.
III. 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.
Dated: May 21, 1999.
Robert M. Anderson,
Acting Assistant Secretary of Commerce and Acting Commissioner of
Patents and Trademarks.
[FR Doc. 99-13440 Filed 5-26-99; 8:45 am]
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