Intellectual Property:

Patent Office Should Strengthen Search Capabilities and Better Monitor Examiners' Work

GAO-16-479: Published: Jun 30, 2016. Publicly Released: Jul 20, 2016.

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What GAO Found

Experts and U.S. Patent and Trademark Office (USPTO) examiners described a variety of challenges in identifying information relevant to a claimed invention—or “prior art”—that can affect examiners' ability to complete a thorough prior art search in the time allotted and their confidence in their search efforts. These challenges include, among others, the quantity and availability of prior art, the clarity of patent applications, and USPTO's policies and search tools.

Selected Challenges Experts and Examiners Cited in Identifying Relevant Prior Art

The European Patent Office and Japan Patent Office face similar challenges to USPTO in identifying prior art and use various approaches to help address them, such as leveraging work of other patent offices on related patent applications and integrating nonpatent literature into their search tools. In some cases, these approaches are coordinated with, similar to, or could inform USPTO actions.

USPTO has taken actions to address challenges in identifying prior art, but some actions have limitations. For example, USPTO is in the process of upgrading its search tools. However, examiners will still need to access a variety of external sources to meet USPTO's requirement to consider nonpatent literature. Federal internal control standards call for controls to evolve to remain effective and USPTO officials noted that the new search system can be expanded to include more nonpatent literature as the European and Japan patent offices have done. However, USPTO does not have a documented strategy for identifying additional sources. Without such a strategy, USPTO cannot be assured that its information technology investment will improve examiners' searches. USPTO is also taking steps to augment the number of, and consistency with which, reviews of examiners' work are conducted and documented, which could improve USPTO's monitoring of examiners' work. However, USPTO still faces limitations in assessing the thoroughness of examiners' prior art searches, because, for example, the agency has not established goals or indicators for search quality and may not be collecting sufficient information on examiners' searches to assess prior art search quality. Without monitoring examiners' prior art searches, the agency cannot be assured that examiners are searching all relevant sources of prior art and may not be able to develop appropriate responses as called for by federal internal control standards.

Why GAO Did This Study

USPTO examines patent applications to ensure that inventions are, among other requirements, novel and not obvious. USPTO patent examiners accomplish this by comparing applications to “prior art”—existing patents and applications in the United States and abroad, and nonpatent literature, such as scientific articles. Thorough prior art searches help ensure the validity of granted patents.

GAO was asked to identify ways to improve patent quality through use of the best available prior art. This report (1) describes the challenges examiners face in identifying relevant prior art, (2) describes how selected foreign patent offices have addressed challenges in identifying relevant prior art, and (3) assesses the extent to which USPTO has taken steps to address challenges in identifying relevant prior art. GAO surveyed a generalizable stratified random sample of USPTO examiners with an 80 percent response rate; interviewed experts active in the field, including patent holders, attorneys, and academics; interviewed officials from USPTO and similarly sized foreign patent offices, and other knowledgeable stakeholders; and reviewed USPTO documents and relevant laws.

What GAO Recommends

GAO is making seven recommendations, among them, that USPTO develop a strategy to identify key sources of nonpatent literature, establish goals and indicators for prior art search quality, and collect sufficient information to assess prior art search quality. USPTO concurred with GAO's recommendations.

To view an e-supplement with data from a survey of patent examiners, see GAO-16-478SP. For more information, contact John Neumann at (202) 512-3841 or neumannj@gao.gov.

Recommendations for Executive Action

  1. Status: Open

    Comments: As of May 2018, USPTO has begun meeting with EPO to discuss quality assurance issues with Cooperative Patent Classification decisions. Following an initial meeting with EPO to discuss quality metrics, USPTO has engaged in ongoing meetings with EPO to further discuss classification quality assurance issues. For example, according to information provided by USPTO, USPTO and EPO discussed varying quality assurance proposals at a September 2016 Cooperative Patent Classification Joint Governance Board Meeting. USPTO and EPO agreed to continue discussing these issues. According to USPTO's action plan for implementing GAO's recommendation, USPTO tentatively plans to reach agreement with EPO on Cooperative Patent Classification consistency target levels and determine, develop, and deploy any IT systems needed to monitor these targets by the end of fiscal year 2018. USPTO also indicated that, by the end of the first quarter of fiscal year 2019, it plans to use the results of consistency target level reviews to implement and monitor corrective actions for classification activities.

    Recommendation: To ensure that USPTO's collaborative efforts on classification help examiners find relevant prior art, USPTO should work with the European Patent Office (EPO) to identify a target level of consistency of Cooperative Patent Classification decisions between USPTO and EPO and develop a plan to monitor consistency to achieve the target.

    Agency Affected: Department of Commerce: Patent and Trademark Office

  2. Status: Open

    Comments: According to the agency's action plan, USPTO planned to assess nonpatent literature usage and develop a strategy for optimizing its usage by November 2017. In November 2017, USPTO provided information on its efforts to provide examiners with access to nonpatent literature; however, it was not clear from the information provided whether this recommendation has been fully implemented. As of May 2018, GAO plans to request additional information in follow-up to USPTO's November 2017 update, and will subsequently re-evaluate the status of implementing this recommendation.

    Recommendation: To ensure that USPTO is able to take full advantage of its investment in new information technology tools and capabilities, USPTO should develop and periodically update a documented strategy to identify key sources of nonpatent literature for individual technology centers and to assess the optimal means of providing access to these sources, such as including them in USPTO's search system.

    Agency Affected: Department of Commerce: Patent and Trademark Office

  3. Status: Open

    Comments: According to information provided by USPTO in March 2018, the agency has begun measuring examination quality overall, a component of which may include search quality. Further, USPTO has continued to update guidance to examiners on use of the new Cooperative Patent Classification scheme that may be used to search patent literature. According to USPTO, examiners have access to training that provides additional guidance on what constitutes a thorough prior art search within each technology field. However, based on the information provided, as of May 2018, it is not clear whether USPTO has fully implemented this recommendation. GAO plans to request additional information from USPTO, and will subsequently re-evaluate the status of implementing this recommendation.

    Recommendation: To improve its monitoring of prior art searches and provide USPTO the ability to examine and address trends in prior art search quality at the technology center level, USPTO should develop written guidance on what constitutes a thorough prior art search within each technology field (i.e., mechanical, chemical, electrical), technology center, art area, or art unit, as appropriate, and establish goals and indicators for improving prior art searches.

    Agency Affected: Department of Commerce: Patent and Trademark Office

  4. Status: Open

    Comments: USPTO provided information in June 2017 demonstrating that portions of its Master Review Form included collecting information that would help to assess prior art search quality, including the use of nonpatent literature. In March 2018, USPTO provided data gathered using the Master Review Form on its compliance with certain statutory requirements for granting patents that relate to prior art search quality. This data also includes information on if examiners failed to cite relevant U.S. patents, foreign patents, or nonpatent literature. As of May 2018, GAO is in the process of examining the information USPTO has provided, and will re-evaluate the status of this recommendation as USPTO provides additional information.

    Recommendation: To improve its monitoring of prior art searches and provide USPTO the ability to examine and address trends in prior art search quality at the technology center level, USPTO should ensure that sufficient information is collected in reviews of prior art searches to assess the quality of searches at the technology center level, including how often examiners search for U.S. patents, foreign patents, and nonpatent literature.

    Agency Affected: Department of Commerce: Patent and Trademark Office

  5. Status: Closed - Implemented

    Comments: Consistent with GAO's recommendation, USPTO took action to improve its monitoring of prior art searches and allow for examination of trends in prior art search quality over time. According to information provided by USPTO, the agency took action as of June 2017 to begin monitoring patent examiners' prior art searches using a master review form, and was recording the number of omitted prior art rejections at each technology center as a proximate measure for prior art search quality. USPTO also set compliance targets for these measures for fiscal year 2017. Monitoring the thoroughness of examiners' prior art searches at a level of rigor and consistency to assess trends within individual technology center will enable USPTO to identify issues that vary by technology and develop appropriate responses.

    Recommendation: To improve its monitoring of prior art searches and provide USPTO the ability to examine and address trends in prior art search quality at the technology center level, USPTO should use the audits and supervisory reviews to monitor the thoroughness of examiners' prior art searches and improvements over time.

    Agency Affected: Department of Commerce: Patent and Trademark Office

  6. Status: Open

    Comments: USPTO has begun evaluating the extent to which examiners have sufficient time to perform patent examination responsibilities, including prior art searches. According to the agency's action plan as well as information USPTO provided in October 2017, several analytical steps were planned to implement GAO's recommendation. Most notably, USPTO formed an Extension Time Analysis team, which collected information on the sufficiency of examination time and associated complicating factors. The team gathered this information from a variety of sources, including a survey of USPTO staff, roundtables and comment solicitation from external stakeholders, and discussions with academic scholars. As of October 2017, USPTO's Extension Time Analysis team was continuing to evaluate the information collected. According to information USPTO provided, this evaluation includes the growth in available prior art, as well as potential differences in examining patent applications across technology areas. USPTO plans to determine what, if any, additional time should be given for patent examination by April 2018. GAO will re-evaluate implementation of this recommendation as USPTO provides additional information on the results of this examination.

    Recommendation: To ensure that examiners have sufficient time to conduct a thorough prior art search, USPTO should, in conjunction with implementing the recommendation from our patent quality report to analyze the time examiners need to perform a thorough examination, specifically assess the time examiners need to conduct a thorough prior art search for different technologies.

    Agency Affected: Department of Commerce: Patent and Trademark Office

  7. Status: Open

    Comments: According to the agency's action plan, USPTO will develop assessment tools and plans to address any gaps identified, as well as measure progress towards closing any gaps by December 2017. As of May 2018, GAO plans to request additional information from the agency about its actions.

    Recommendation: To ensure that examiners have the technical competence needed to complete thorough prior art searches, USPTO should assess whether the technical competencies of examiners in each technology center match those necessary; develop strategies to address any gaps identified, such as a technical training strategy; and establish measures to monitor progress toward closing any gaps.

    Agency Affected: Department of Commerce: Patent and Trademark Office

 

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