	Background

		Patent Examination Process and Prior Art Searches

The focus of patent examination is to determine whether the invention in  a patent application satisfies the legal requirements for a patent, including  that the invention be novel and not obvious. Clarity of patent applications. Search tools and capabilities. Patent Offices for Europe and Japan Use Various Approaches to Help Address Challenges in Identifying Relevant Prior Art

EPO and JPO use several approaches that may help their examiners  address challenges in identifying prior art similar to those that experts and  respondents to our survey of patent examiners cited. In some cases, these actions are coordinated with, similar  to, or could be informed by approaches taken by EPO or JPO. However, USPTO and patent examiners  have experienced some challenges with this effort. USPTO Is Making Improvements to Prior Art Search Tools but Has Not Developed a Strategy to Assess New Sources of Art

USPTO is making improvements to its prior art search tools that may help  address some of the challenges examiners face in identifying relevant  prior art, but USPTO has not developed a strategy to assess  incorporating new sources of art into these tools over time. According to USPTO officials, the  capabilities of the new Patents End-to-End system can be expanded in  the future to include additional nonpatent literature sources. Because information technology  changes rapidly, the internal control standards note that controls must  evolve to remain effective. Furthermore, despite potential improvements in how OPQA and  supervisory patent examiners conduct and document reviews of  examiners’ prior art searches, USPTO’s ability to use these data to  monitor prior art searches may be limited because USPTO (1) does not  have a clear definition of what constitutes a thorough prior art search, (2)  may not collect sufficient information to assess examiners’ search  strategies or the sources of prior art they consider, and (3) has not  established goals and indicators for improving prior art searches. Conclusions

Examiners face a number of challenges in their efforts to search for prior  art, including the large volume of prior art from multiple sources to  consider, unclear patent applications, difficulties identifying or accessing  relevant nonpatent literature and prior art in foreign languages, and limits  on the time available to search for relevant prior art, among others. Third, the agency has  not established goals or indicators covering prior art search performance. Monitoring the thoroughness of examiners’ prior art searches at a level of  rigor and consistency to assess trends within individual technology  centers would better enable USPTO to identify issues that vary by  technology center and develop appropriate responses as called for by  federal internal control standards. 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. However, additional steps are needed to ensure that USPTO’s  reviews of examiners’ prior art searches collect information on whether,  for example, examiners are searching patent literature, foreign patents,  and nonpatent literature, as is required by the manual for patent  examiners. GAO staff who made key contributions to this  report are listed in appendix V.

Appendix I: Objectives, Scope, and Methodology

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 the U.S. Patent and Trademark Office (USPTO) has  taken steps to address any challenges in identifying relevant prior art. The weighted response rate was also 80 percent. We conducted site visits  with EPO and JPO, during which we interviewed officials from these  offices and reviewed documents they provided. We also interviewed  stakeholders knowledgeable about the offices’ practices, such as  academics who study these offices.
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 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.
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.

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.