questions_for_the_uspto

David Mohring asked [1][2][3]:

• To what extent does the current USPTO patent application examination process take into account public accessible website content?

• Prior art searches performed by the USPTO rely strongly on electronic searches of publicly accessible website content.
• The USPTO additionally searches a number of commercial databases. For patent applications in the class of computer implemented business methods (class 705), a patent examiner will search the following databases for prior art: [4]

• ABI/INFORM: Bell & Howell Information and Learning
• Business & IndustryTM: Responsive Database Services, Inc.
• Business Week: The McGraw-HillCompanies Publications Online
• Business Wire: Business Wire
• Computer DatabaseTM: The Gale Group
• Conference Papers Index: Cambridge Scientific Abstracts
• Dissertation Abstracts Online: Bell & Howell Information and Learning
• GlobalbaseTM: The Gale Group
• Inside Conferences: The British Library
• INSPEC: INSPEC, Inc.
• Internet & Personal Computing Abstracts: Information Today, Inc.
• The McGraw-Hill Companies Publications Online: The McGraw-Hill Companies, Inc.
• Microcomputer Software Guide Online: R. R. Bowker Company
• New Product Announcements/Plus(NPA/Plus): The Gale Group
• Newsletter DatabaseTM: The Gale Group
• Newspapers
• Financial Times Abstracts
• New York Times Abstracts
• San Jose Mercury News
• Wall Street Journal Abstracts
• PR Newswire: PR Newswire Association, Inc.
• PROMT: The Gale Group
• Softbase: Reviews, Companies, and Products: Information Sources, Inc.
• Trade & Industry DatabaseTM: The Gale Group
• Wilson Applied Science and Technology Abstracts: The H.W. Wilson Company
• World Reporter: The Dialog Corporation, Dow Jones & Company and Financial Times Information

• Do the patent examiners currently use Internet search engines such as Google ( http://www.google.com ) to locate instances of prior art?

• Yes

• Is the changeable and unverifiable nature of some digital content a barrier to its being cited as prior art in the patent application examination process?

• “Prior art disclosures on the Internet or in an on-line database are considered to be publicly available as of the date the item was publicly posted. This is provided that the item is dated and not temporal, and can be indexed for subsequent retrieval. An example of a temporal item is a web broadcast that cannot be saved, retrieved or printed, e.g., a live simulcast feed that is not archived, and a “streaming” audio or video that “flashes” across the screen.”[5]

• Entries in Internet archives, such as www.archive.org [6], for example, are time stamped and are routinely cited as prior art.

Larry Rosen asked:

• What are the subject matter categories the USPTO currently uses to sub-classify software?

• Data processing inventions, including software, are generally classified in the major classes in the 700's. A complete list is found on the USPTO web site [7] Class 705, for example, is for computer implemented business methods.
• Each major class is further divided into a number of minor classes. [8]

Paul McKenney asked:

• What happens to old USPTO categories that are no longer valid, such as 364 and 395?

• Patents in these classes are reassigned to new classes.

• Is there some mapping from these old categories to current categories aside from that applied to the individual patents (e.g., 395/468 apparently maps to 711/141 judging by 5.608,893)?

• Yes, but not all of the patents in an old class with necessarily go into the same new class.
• The commercial patent search site, www.delphion.com, will allow you to search by both the current US classification, and any earlier US classification.

McCullough Theodore asked:

• As I presently understand the law, there exists no mechanism to put an Examiner on notice regarding a prior art reference after the patent application has published, but before it becomes a patent. What would be the legal mechanism for the public, including the Open Source Community, to direct an Examiner's attention?

• Prior art can be sent to the examiner within two months of the publication date of a pending application. See 37 CFR 1.99.
• If you miss the two month window, you can send the prior art directly to the inventor or their attorney/agent. If the prior art is material to the patentability of their claims, then they will be obligated to disclose the prior art to the examiner. See 37 CFR 1.56

• Is a sales brochure made available to the public more than a year prior to the filing of a patent application considered prior art for the purposes of this project?

• Manny Schecter says “Yes.”

Jan Kechel asks:

• How much person-time do you invest in Prior Art searches per patent until you say it's new?

• It depends upon the invention. It is common for an inventor to hire a patent search firm to look for prior art prior to filing a patent application. This is called a “novelty search”. A typical novelty search will cost betwee $500 to $1,000 for a searcher billing at $100/hr.

• Is there anyway to tell what prior art has already been cited against a pending patent application?

• Yes. Once a patent application is published, all of the prior art cited against the application is made public on the USPTO's “Public PAIR” site [9]. The Public PAIR site also posts all of the correspondance between the examiner and an applicant. This means that the public can monitor how the examiner is applying the prior art and how the applicant is responding.