2013-31492. Request for Comments Regarding Prior Art Resources for Use in the Examination of Software-Related Patent Applications

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Request for comments.

SUMMARY:

The United States Patent and Trademark Office (USPTO) has formed a partnership with the software community to enhance the quality of software-related patents (Software Partnership). The Software Partnership is an opportunity to bring stakeholders together through a series of roundtable discussions to share ideas, feedback, experiences, and insights on software-related patents. On December 5, 2013, as part of the Software Partnership, the USPTO hosted a roundtable discussion on the USPTO's prior art searching techniques and tools. At the roundtable, the USPTO spoke on the prior art resources currently utilized by examiners and listened to external speakers and the public on additional prior art resources and improved search techniques. In order to receive further feedback from stakeholders, the USPTO is requesting comments on the questions regarding prior art resources and search techniques set forth below.

DATES:

Comment Deadline: To be ensured of consideration, written comments must be received on or before March 14, 2014. No public hearing will be held.

Addresses for Comments: Written comments should be sent by electronic mail addressed to [e-mail]. Comments may also be submitted by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Seema Rao, Director, Technology Center 2100. Although comments may be submitted by mail, the USPTO prefers to receive comments via the Internet.

The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the USPTO Internet Web site at http://www.uspto.gov. Because comments will be 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. 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.

FOR FURTHER INFORMATION CONTACT:

Seema Rao, Director, Technology Center 2100, by telephone at 571-272-0800, or by electronic mail message at [e-mail].

SUPPLEMENTARY INFORMATION:

The USPTO conducted a Software Partnership meeting on December 5, 2013, in Alexandria, Virginia, focused on the topic of prior art resources for use during the examination of software-related applications. The meeting featured both internal and external stakeholders' presentations, along with an open discussion session aimed to collect input on how the agency can enhance prior art searching through the use of search strategies, tools, and databases. Details of the meeting along with all presentation materials can be found on the Prior Art Search micro-site available at http://www.uspto.gov/​patents/​init_​events/​prior_​art_​search.jsp.

Currently, the Office has access to a variety of internal and external resources for searching and accessing prior art. Internally, the Office utilizes the Examiner's Automated Search Tool (EAST), Web Examiner Search Tool (WEST), and a variety of vendor databases to provide examiners with access to U.S. and foreign patents and patent application publications using both classification and textual searching. Externally, the Scientific and Technical Information Center (STIC) provides examiners with access to non-patent literature in several art-specific print collections and electronic resources totaling over 500 databases, 59,000 electronic journals and 175,000 e-books. A listing of the Office's prior art resources may be found at http://www.uspto.gov/​patents/​resources/​priorart.jsp.

As a follow-up to the Prior Art Software Partnership Meeting, the Office is asking stakeholders for further ideas to improve the quality and efficiency of searching software-related inventions. In particular, the Office seeks comments on the following questions:

1. What specific databases, Web sites, tools and other resources do you find useful in searching for software-related inventions? Please indicate strengths and limitations of each resource.

2. What are your concerns regarding the manner in which USPTO examiners formulate and implement search strategies to identify prior art for software related inventions? How should these concerns be addressed?

Date: December 30, 2013.

Margaret A. Focarino,

Commissioner for Patents, Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.