[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,

[[Page 28804]]

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 [email protected].
    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 
[email protected], 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 [email protected], 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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