Law Office of Alicia Porter

Earlier this week, I posted on how to search for a patent through Quick Search. It’s my personal favorite toy on the USPTO web page.

However, there are other ways to search. There are also ways that a patent examiner is expected to search, which helps a patent practitioner determine how best to streamline the search they make on behalf of a client.

Under the Manual of Patent Examining Procedure (otherwise known as the MPEP in government speak or i.e. the Bible to practitioners) section 904.02 outlines how an examiner should look at reviewing a patent application.

The examiner must

a) identify the field of search

b) select the proper tool(s) to perform the search (keep in mind, the more sophisticated the technology, such as recominant DNA, the more specifity one needs to have with the tools)

c) determine the proper search strategy for each search tool selected.

Each search for each patent application must be done on a case by case basis, so the examiner, depending on the application, may select a completely different set of search tools for application A vs. application B.

Here’s where you start to look on a search – first you hit the domestic (US) patents, then the domestic patent applications, then the foreign patents, and, last but not least, the non patent literature. Examiners should look at all four categories. A good practitioner should do the same, as a thorough search translates to a more efficient patent proescution, which means more time that your client has to maximize their patent rights.