just_n_examiner (just_n_examiner) wrote,

A Final Thought on Searching

Years ago, the bulk of examiners' searching was performed by manually searching the paper copies of patents (the 'shoes'). Slow and inefficient.

On-line searching, both through the EAST and WEST system (and their predecessor, APS), and through other on-line resources, including the Internet, has vastly changed the face of searching.

Yet some of the recent changes in the patent system have also had a profound impact on the practice of searching. Specifically, the combination of the practice of pre-grant publication, combined with the transition to the Image File Wrapper (IFW) system, has the potential to vastly improve the examiner's lot.

Why would these two changes make that much of a difference?

The advantages to the examiner of pre-grant publication would seem to be fairly straightforward. Previously, only upon the grant of a patent would a patent application be published and available for use as prior art. Anything that was abandoned was never disclosed. So certainly there is the advantage that any application (that has not been filed with a non-publication request) will be published 18 months after being filed, and so the body of patent prior art has been expanded.

With the Image File Wrapper system, examiners can access file wrappers of the applications on which they work on their desktop computer, without the need to deal with the paper file wrappers, which often get to be fairly hefty. Way back when, central files (where all the file wrappers were stored) was on-site so that an examiner could quickly and easily retrieve a file wrapper. When the Office started to run short on office space, they moved central files off-site, and so examiners had to submit a request for a file wrapper, and then wait (usually one day) until it was delivered. Inconvenient, but not overly so.

Now, with the IFW system in place, you can get at the file wrapper of any application instantly.

But how does IFW help in searching? A reasonable question. The key is in those pre-grant publications.

If you come across a PG-Pub that is usable as prior art for your application, this is of course great. However, even if the priority date means that it is not prior art for your application, there is a very good chance that you can make use of a good PG-Pub.

Since the file wrapper of a relevant PG-Pub is available on-line, you can check to see if the applicant has submitted an IDS, and get copies of any NPL references they have cited. You can even check to see if examination has commenced, and if so see what art the examiner has found and used in their rejection. If the PG-Pub is relevant to the application you are examining, then art cited on an IDS or by the examiner is likely to be relevant as well. This way, you can piggy-back your search on the search another examiner has done.

It is an easy way to jump-start your search, and is the reason why I think it is a big mistake to use application date to limit your patent search to those patents and PG-Pubs with application dates before the date of the application being examined. (This is a practice that I see a lot of the new examiners doing.) Just because you cannot use a given patent/PG-Pub as prior art, that doesn't mean that it cannot be useful to your search.

Isn't there something wrong with 'borrowing' another examiner's search? Hell, no! The name of the game is thorough searching, and if I can use someone else's previous search to further my own, I'd be stupid not to. Besides, those references will all be published on the face of the patent when (and if) it issues. The big benefit is that you can use the prosecution history (and specifically the search) of any published application, not just the ones that issue as patents.

It's the combination of pre-grant publication and the image file wrapper system that makes it possible.
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