The latest trend in patent examiner prior art searches is
pushing examiners to use the Scientific and Technical Information Center (STIC)
Program to use more foreign patents and foreign non-patent
literature during patent prosecution. The U.S. Patent and Trademark
Office (USPTO) wants to increase the quality of examiner searches
using non-patent literature and foreign patents generally. To
achieve this goal, STIC provides examiners with access to foreign
patents, foreign applications, journals, books, commercial
databases, translations, and a specialized collection of resources
in the biological and chemical fields. STIC also has search
strategy experts that can assist examiners in search activities and
understanding certain technology areas.
This push by the USPTO can be helpful to patent owners and
practitioners. The USPTO wants to increase use of this resource by
the examining corps to produce more targeted searches and to yield
better search results, especially for areas of technology that are
rapidly changing. As the USPTO pushes examiners to take advantage
of this resource, the public and practitioners should hopefully see
better, higher-quality prior art from examiners' searches.
However, it is also likely that an increasing number of
references cited in office actions will be foreign patents and
foreign non-patent literature, such as foreign journal articles.
Practitioners may face stronger rejections during prosecution, and
any prior art searches conducted before filing may need to take
into account a broader array of references. Focusing on US and EU
patent filings may no longer identify the most likely references
that will be used in rejections.
Many of these search resources are also available to the public
through the Scientific and Technical Information Center (STIC)
Library at the main USPTO campus in Alexandria, Virginia. These
resources can allow the public to search like examiners when
prosecuting patent applications. The resources available to
examiners when conducting prior art searches are often more
specialized than those available to the general public. But by
using STIC, the general public can conduct their own searches on
current or future patent applications, providing a way for users to
identify problematic prior art and to plan strategies or approaches
for drafting patent applications to avoid or minimize the art in
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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