904.02 General Search Guidelines [R-07.2015]
In the examination of an application for patent, an examiner must conduct a thorough search of the prior art. Planning a thorough search of the prior art requires three distinct steps by the examiner: (A) identifying the field of search; (B) selecting the proper tool(s) to perform the search; and (C) determining the appropriate search strategy for each search tool selected. Each step is critical for a complete and thorough search.
When determining the field of search, three reference sources must be considered - domestic patents (including patent application publications), foreign patent documents, and nonpatent literature (NPL). None of these sources can be eliminated from the search unless the examiner has and can justify a reasonable certainty that no references, more pertinent than those already identified, are likely to be found in the source(s) eliminated. The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed. The field of search should be prioritized, starting with the area(s) where the invention would most likely be found in the prior art.
Having determined the field of search, the examiner should then determine what search tools should be employed in conducting the search. Examiners are provided access to a wide variety of both manual and automated search tools. Choice of search tools is a key factor in ensuring that the most relevant prior art is found during the search. The choice of search tools to be used is based on the examiner’s knowledge of the coverage, strengths and weaknesses of the available search tools that are appropriate for use in an examiner’s assigned art. For example, a search tool may cover foreign patent documents; but, if that coverage does not meet the examiner’s current search needs, this should be taken into consideration by the examiner who may choose to employ other search tools in order to remedy the deficiency.
Search tool knowledge is particularly important for examiners in arts (e.g., very active, high technology) where patent documents may seriously lag behind invention and, consequently, represent a reference source of limited value. These examiners must take special care to ensure that their searches include consideration of NPL and employ the effective use of tools specialized to cover NPL pertinent to their search needs.
Search needs in some technologies, e.g., chemical structures, DNA sequences, are very specialized and can only be met through additional use of specific search tools specially constructed and maintained to respond to those needs. These tools cover all three reference sources - domestic patents (including patent application publications), foreign patent documents, and NPL.
In recognition that there are many available NPL search tools and their use is often complex, examiners have been provided and are encouraged to use the services of trained professional on-line search personnel located in the Technology Centers’ EICs for NPL searching. See MPEP § 901.06(a) for services available in STIC.
In crowded, highly developed arts where most claimed inventions are directed to improvements, patent documents, including patent application publications, may serve as the primary reference source. Search tool selection in such arts may focus heavily on those providing patent document coverage.
Automated search tools covering patent documents usually provide both a classified and text search capability. Text search can be powerful, especially where the art includes well-established terminology and the search need can be expressed with reasonable accuracy in textual terms. However, it is rare that a text search alone will constitute a thorough search of patent documents. Some combination of text search with other search criteria (e.g., classification, chemical structure, or molecular sequence) would be a normal expectation in most technologies.
Examiners will recognize that it is sometimes difficult to express search needs accurately in textual terms. This occurs often, though not exclusively, in mechanical arts where, for example, spatial relationships or shapes of mechanical components constitute important aspects of the claimed invention. In such situations, text searching can still be useful by employing broader text terms, with or without classification parameters. The traditional method of browsing all patent documents in one or more classifications will continue to be an important part of the search strategy when it is difficult to express search needs in textual terms.
Having determined what search tool(s) should be used to conduct the search, the examiner should then determine the appropriate search strategy for each search tool selected. The appropriate search strategy should be determined by the examiner on a case-by-case basis along with consultation with other examiners, supervisory patent examiners, and/or trained professional on-line search personnel, where appropriate.
In order for examiners to acquire specialized skills needed to determine an appropriate field of search in their specific arts, each Technology Center may develop specific supplemental guidance and training for its examiners. This training will augment general training and information on search tools that is normally provided through the Office of Patent Training and Search and Information Resources Administration.
904.02(a) Classified Search [R-08.2017]
A proper field of search normally includes the classification locations in which the claimed subject matter of an application would be properly classified at the time of the application's classification or grant of a patent. 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).
In outlining a field of search, the examiner should note every classification location (i.e. group/subgroup of the Cooperative Patent Classification or class/subclass of the U.S. Patent Classification) under the utilized classification system and other organized systems of literature that may have material pertinent to the subject matter as claimed, including those which have been assigned by a foreign Office, another USPTO examiner, or by the classification contractor. Every subclass, digest, and cross-reference art collection pertinent to each type of invention claimed should be included, from the largest combination through the various subcombinations to the most elementary part. The field of search should extend to all probable areas relevant to the claimed subject matter and should cover the disclosed features which might reasonably be expected to be claimed. The examiner should consult with other examiners and/or supervisory patent examiners, especially with regard to applications covering subject matter unfamiliar to the examiner.
The areas to be searched should be prioritized so that the most likely areas of finding relevant prior art are searched first. For documenting the field of search see MPEP § 719.05. See MPEP § 1302.10 for search information printed on the face of a patent.
904.02(b) Search Tool Selection [R-07.2015]
Detailed guidance on the choice and use of specific search tools can be established only within the context of the special requirements of each Technology Center (TC). However, a general methodology following a "decision tree" process, set forth below, for making broad decisions in search tool selection is suggested.
904.02(c) Internet Searching [R-10.2019]
The Internet is an Office-approved search tool that may be considered when planning and conducting a search for an application. The Internet provides the Office the opportunity to enhance operations by enabling patent examiners to efficiently locate and retrieve additional sources of information relating to a patent application.
The Office published a Patent Internet Usage Policy to establish a policy for use of the Internet by the patent examining corps and other organizations within the USPTO. See Internet Usage Policy, 64 F.R. 33056 (June 21, 1999). Articles 9 and 10 of the Patent Internet Usage Policy, which are pertinent to Internet searching and documenting search strategies, are reproduced below. Article 9 primarily addresses using the Internet for unpublished application searches. As mentioned therein, it is necessary that Internet searches related to unpublished applications MUST be limited to the general state of the art and formulated in such a way that protects the confidential proprietary intellectual property.
USPTO personnel may also use the Internet to search, browse, or retrieve information relating to the claimed invention(s) of a published application or proceeding including an application published pursuant to 35 U.S.C. 122(b), a reissue application, or a reexamination proceeding. These applications need not be kept in confidence; therefore, the restriction on the search queries used when performing an Internet search referenced in Article 9 below would not apply to these applications and proceedings. Any search query may include terminology related to the general state of the relevant technology, disclosed features from applicant’s disclosure and claim terminology. See MPEP § 707.05(e) for information pertaining to the citation of electronic documents, MPEP § 719.05, subsection II for documenting an Internet search, and MPEP § 502.03 for information pertaining to communications via electronic mail.
The Internet is generally a public forum and most communications made over the Internet are neither confidential nor secure. All use of the Internet by examiners must be conducted in a manner that ensures compliance with confidentiality requirements in the statutes, including 35 U.S.C. § 122, and regulations. As part of an Internet search, examiners may visit social media websites that provide for public interactions, but are not authorized to participate on these websites or otherwise solicit assistance with patent examination even for published applications. For example, an examiner is not authorized to request users of a website to provide additional information not found on the website, elaborate further on information already posted on the website, or post new information on the website. Additionally, any Internet searching that is conducted is to be limited to searching for the information necessary for examination of the application or proceeding, such as the state of the art or the presence or absence of technical features in the prior art.
INTERNET SEARCHING (ARTICLE 9)
The ultimate responsibility for formulating individual search strategies lies with individual Patent Examiners, Scientific and Technical Information Center (STIC) staff, and anyone charged with protecting proprietary application data. When the Internet is used to search, browse, or retrieve information relating to a patent application which has not been published, other than a reissue application or reexamination proceeding, Patent Organization users MUST restrict search queries to the general state of the art unless the Office has established a secure link over the Internet with a specific vendor to maintain the confidentiality of the unpublished patent application. Non-secure Internet search, browse, or retrieval activities that could disclose proprietary information directed to a specific application which has not been published, other than a reissue application or reexamination proceeding, are NOT permitted.
This policy also applies to use of the Internet as a communications medium for connecting to commercial database providers.
DOCUMENTING SEARCH STRATEGIES (ARTICLE 10)
All Patent Organization users of the Internet for patent application searches must document their search strategies in accordance with established practices and procedures as set forth in MPEP § 719.05 II.