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Highlights

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.

Selected Challenges Experts and Examiners Cited in Identifying Relevant Prior Art

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.

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.

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Recommendations

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.

To view an e-supplement with data from a survey of patent examiners, see GAO-16-478SP.

Recommendations for Executive Action

Agency Affected Recommendation Status
Patent and Trademark Office To ensure that USPTO's collaborative efforts on classification help examiners find relevant prior art, USPTO should work with the European Patent Office (EPO) to identify a target level of consistency of Cooperative Patent Classification decisions between USPTO and EPO and develop a plan to monitor consistency to achieve the target.
Closed - Implemented
USPTO and EPO jointly adopted a measure of quality for Cooperative Patent Classification decisions at a bilateral meeting in June 2017 and subsequently began work to implement the measure. As of June 2019, USPTO is leveraging EPO data systems to perform an automated comparison of classification decisions by the two offices. USPTO provided GAO with data from this system describing the level of agreement between the two offices by CPC symbol. According to a USPTO document, the quality measure identifies areas for which groups of experts from USPTO and EPO will meet and agree to a harmonized classification practice.
Patent and Trademark Office 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.
Closed - Implemented
In November 2017, USPTO developed a strategy document describing the agency's efforts to acquire and provide examiners with access to nonpatent literature. In 2019, USPTO formally established the Library Services Branch to, among other things, select nonpatent literature collections based on usage data and other information. The agency has also implemented a system to track the selection, licensing, usage, and other aspects of the library's information resources.
Patent and Trademark Office To improve its monitoring of prior art searches and provide USPTO the ability to examine and address trends in prior art search quality at the technology center level, USPTO should develop written guidance on what constitutes a thorough prior art search within each technology field (i.e., mechanical, chemical, electrical), technology center, art area, or art unit, as appropriate, and establish goals and indicators for improving prior art searches.
Closed - Implemented
USPTO implemented a new performance appraisal plan for examiners for FY2021 that includes enhanced expectations for prior art search. USPTO provided training to examiners in July 2020 on the new performance plan that included guidance on what constitutes a thorough prior art search and gave examples by technical field. USPTO also developed data on the thoroughness of prior art search based on secondary searches completed by patent quality analysts. In addition, USPTO provided guidance to examiners on use of the new Cooperative Patent Classification scheme that may be used to search patent literature and provides initial and refresher training to examiners on potential search strategies and techniques.
Patent and Trademark Office To improve its monitoring of prior art searches and provide USPTO the ability to examine and address trends in prior art search quality at the technology center level, USPTO should ensure that sufficient information is collected in reviews of prior art searches to assess the quality of searches at the technology center level, including how often examiners search for U.S. patents, foreign patents, and nonpatent literature.
Closed - Implemented
USPTO provided information in June 2017 demonstrating that portions of its Master Review Form included collecting information that would help to assess prior art search quality, including the use of nonpatent literature. In March 2018, USPTO provided data gathered using the Master Review Form on its compliance with certain statutory requirements for granting patents that relate to prior art search quality. This data also includes information on whether examiners failed to cite relevant U.S. patents, foreign patents, or nonpatent literature. In August 2018, PTO provided an analysis using this data which described how often each technology center performed a search for nonpatent literature; thereby demonstrating use of the data to assess the quality of searches.
Patent and Trademark Office To improve its monitoring of prior art searches and provide USPTO the ability to examine and address trends in prior art search quality at the technology center level, USPTO should use the audits and supervisory reviews to monitor the thoroughness of examiners' prior art searches and improvements over time.
Closed - Implemented
Consistent with GAO's recommendation, USPTO took action to improve its monitoring of prior art searches and allow for examination of trends in prior art search quality over time. According to information provided by USPTO, the agency took action as of June 2017 to begin monitoring patent examiners' prior art searches using a master review form, and was recording the number of omitted prior art rejections at each technology center as a proximate measure for prior art search quality. USPTO also set compliance targets for these measures for fiscal year 2017. Monitoring the thoroughness of examiners' prior art searches at a level of rigor and consistency to assess trends within individual technology center will enable USPTO to identify issues that vary by technology and develop appropriate responses.
Patent and Trademark Office To ensure that examiners have sufficient time to conduct a thorough prior art search, USPTO should, in conjunction with implementing the recommendation from our patent quality report to analyze the time examiners need to perform a thorough examination, specifically assess the time examiners need to conduct a thorough prior art search for different technologies.
Closed - Implemented
USPTO formed an Extension Time Analysis team, which collected information on the sufficiency of examination time and associated complicating factors. The team gathered this information from a variety of sources, including a survey of USPTO staff, roundtables and comment solicitation from external stakeholders, and discussions with academic scholars. As of March 2018, USPTO's Extension Time Analysis team completed its analysis and USPTO increased time available for certain art units. According to information USPTO provided, this evaluation included the growth in available prior art, as well as potential differences in examining patent applications across technology areas.
Patent and Trademark Office To ensure that examiners have the technical competence needed to complete thorough prior art searches, USPTO should assess whether the technical competencies of examiners in each technology center match those necessary; develop strategies to address any gaps identified, such as a technical training strategy; and establish measures to monitor progress toward closing any gaps.
Closed - Implemented
By August 2018, USPTO began surveying examiners for information on what technical areas they would most benefit from training in and used this information in its training programs.

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