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.
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
|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.|
|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.|
|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.|
|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.|
|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.|
|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.|
|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.|