One of the biggest problems in patent examination is actually finding prior art. When it comes to patents and patent applications, that’s relatively easy—examiners have access to databases of all patents and applications, and they’re well-trained in searching those databases. But when it comes to non-patent prior art—product manuals, journal articles, standards proposals, and other such technical documents—that prior art is harder to find. Examiners are correspondingly less likely to cite to non-patent prior art.
Cisco and MIT, with some help from Google and the USPTO, are trying to help solve that problem. Their solution? The Prior Art Archive, a publicly accessible archive created with contributions from technical experts and industry stakeholders, designed to preserve and make searchable exactly the kind of non-patent prior art that’s currently hard to locate.
In addition to being publicly accessible, the Archive is designed to make it easy for patent examiners to search. That’s important—examiners have a severely limited amount of time to find prior art and anything that’s difficult or time-consuming is less likely to be utilized.
But being easy to use isn’t enough in and of itself. Beyond being able to search the Archive, examiners need to be expected to utilize this new resource. At least at present, there’s no obligation on examiners to do so. How could the PTO ensure examiners take advantage this valuable resource? One solution could be to require searches of the Archive to be documented in the patent’s file, at least until the Archive is integrated into the main PTO databases. Every issued patent has an associated set of filings—the file history or file wrapper—which documents the interaction between applicant and Office. And in the file history, the examiner documents what databases were searched and the searches they ran.
Going forward, the Office’s Quality Control group should return to the examiner any patent that doesn’t show a reasonable effort to search the Prior Art Archive. That would ensure that examiners actually utilize this resource, and in turn help ensure that patents coming out of the Office are of higher quality and less likely to be invalidated later on.