The future of prior art searching at the United States patent and trademark office

The United States Patent and Trademark Office has experienced an increased volume and complexity of patent applications in recent years, with resulting problems in maintaining pendency times and quality. As part of the Office's 21st Century Strategic Plan to deal with this and other problems, the outsourcing of prior art patent searches has been proposed. In this article the author explains the current situation--including the existing partial use of search contractors, briefly surveys some solutions adopted in other patent offices, and then details the outsourcing proposals. It is intended that the contracting out of searches will proceed initially by means of a proof of concept pilot conducted on the search reports prepared by the Office on international applications under the PCT. Contractors will need to be able to demonstrate technical and legal competence, that there is no conflict of interest between these and other searches they carry out, and that they will maintain strict confidentiality. If successful, a wider implementation will be rolled out, with procedures in place to ensure that high quality searches are provided on a continuous basis. Analogous contracting out of classification and reclassification functions is also described.