The Literature Search Secrets of U.S. Patent Examiners

Patent attorneys and applicants would love to know what material the U. S. Patent and Trademark Office (USPTO)  Examiners will be searching when they investigate new patent applications.   Wouldn’t it be great if, in addition to checking the Intellogist Resource Finder, we had a sneak peek at a list of all the USPTO’s subscription databases?  And wouldn’t it be even better if we could see which databases are best for which US patent classifications?  Well, I have good news.  This information is all free on the web, in the USPTO Search Templates!  Read on to find out more about how to see this “secret” (yet very public) information.

The USPTO created the search templates to indicate baseline coverage of the most relevant resources in each subject area, setting a standard to measure the completeness of a search. If you already know which US classifications you’re interested in, begin on the Search Templates by Class page, and choose the applicable area.   You may be presented with a further choice of which subclass range you are interested in, as sometimes a resource will be appropriate for only certain topics.

Selecting the appropriate subclass range

Within the template, users should scroll down to the “Non-Patent Literature Resources” section of the page (the indicated patent search sources are pretty much the same for each class).  Within each template, a variety of resources will be listed – some will be broad, general science files, while others may be more obscure, subject-specific resources.  Each listed resource will be accompanied by a list of vendors that provide the service, information about the date range covered, and a sentence or two about what kind of useful records searcher can expect to find there.  Below is an example from Class 715, subclasses 700-867.

Image from Search Template for class 715; image truncated to preserve quality

Some of these USPTO templates contain a treasure trove of information, and I recommend checking them for every search.

However, there are many search templates that prove disappointing.  For starters, it’s obvious that the templates were pre-populated with a list of certain databases that the USPTO either has flat fee access to, or has directed examiners (or STIC librarians) to use widely.   You’ll see the same list of general science and business databases in many templates.  For example, here is a partial list of heavily recommended resources:

  • Gale Group GlobalbaseTM
  • Gale Group New Product Announcements/Plus (NPA/Plus)
  • Gale Group PROMT
  • JICST-EPlus – Japanese Science & Technology
  • SciSearch: A Cited Reference Science Database
  • TEME – Technology and Management
  • Wilson Applied Science & Technology Abstracts

The first problem with this list is that some of these suggestions are out-of-date.  For example, JICST e-Plus was removed from suggested platforms Dialog and STN in 2007.  However, it’s obvious that developing the templates was a major project requiring lots of internal resources, and it may be unrealistic to expect the information to be continuously maintained given the PTO’s current workload.

In addition, I’m not sure these files truly represent the best collections for a comprehensive literature search.  Although these files may be excellent resources, it’s worth pointing out that many of them are accessible on older platforms like Dialog, and suffer from the pay-per-use pricing model, which discourages database exploration, experimentation, and iterative search strategies.  In other words, searchers who don’t have flat fee institutional access to these databases will have to rack up significant search charges to query them appropriately.

Of course, if these files were the best databases around, there would be no question that quality literature searches absolutely should cover them despite the access problems.  But today’s market contains a whole host of scientific and technical collections that are not represented here.  I haven’t seen evidence to convince me that searchers should favor these databases over other, newer products not currently listed in the Search Templates.  For example, I don’t see any obvious reason why searchers should favor Gale Group databases over a business and product database such as Dow Jones Factiva, or why Wilson Applied Science & Technology abstracts should be a go-to resource while subscription databases such as Elsevier’s Scopus or EBSCO’s Academic Search Complete should not.

Although no directory can ever provide a complete list of every available resource, these are concerns we took into account when developing our own Intellogist Resource Finder, which was designed to be very granular, to capture niche sources, and to include of all types of free and paid sources from any vendor, institutional preferences aside.

Why has the USPTO largely restricted itself to recommending general science databases available on older platforms such as  Dialog?  One possible answer is that individual inventors may not have access to large, institutional flat-fee subscription products like the ones mentioned above.  This is especially important when one considers that applications filed under the Accelerated Examination program must contain an appropriate literature search that encompasses relevant databases listed in these search templates.  However, that doesn’t mean that these resources necessarily contain the broadest, or the best, sci/tech collections.  In addition, searching all of the listed resource on a USPTO template may still be way outside the financial means of a typical applicant.

Although very useful as a starting point for scoping a literature search, ultimately the templates should be treated as starting points, not guides to a comprehensive search.  In my opinion,  the templates are skewed towards resources that Examiners have in house, and don’t represent the entire field of literature search sources.  They might also be improved by showing more awareness of free web resources, even some unexpected ones.  In addition, the templates are not specific enough when it comes to publishers, journals, and special collections used by examiners, and provide an incomplete record of the USPTO’s institutional knowledge.  If I had my true wish list, the templates would better serve the public by becoming more granular, even including the particular resources favored by individual examiners.

Despite these issues, the USPTO search templates should be in every prior art searcher’s bookmark list.  They represent a truly valuable starting point in the search for non-patent literature.  And by the way, don’t forget to check the Intellogist Resource Finder, too!

Patent Information from Landon IP

This post was contributed by Landon IP Librarian Kristin Whitman. The Intellogist blog is provided for free by Intellogist’s parent company, Landon IP, a major provider of patent search, technical translation, and information services.

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4 Responses

  1. […] language on any topic under the sun; just look at the wide range of resources recommended in the USPTO Search Templates or the Intellogist Resource Finder, and you’ll get an idea of the wide range of NPL data that […]

  2. […] 3. The Literature Search Secrets of U.S. Patent Examiners – What types of resources do USPTO Examiners search when they investigate a new patent application?  Kristin Whitman sheds some light on the mystery by describing the USPTO Search Templates, available for free on the USPTO website, where users can search templates by US Class/Subclass.  Kristin describes some of the problems with the lists of databases recommended in the templates, and she also explains how the Intellogist Resource Finder was designed to overcome many of these issues. […]

  3. […] the Intellogist staff, who have many years of combined patent search experience.  The USPTO search templates are another example of topic-specific search guides manually compiled by experts in the […]

  4. […] 2011, top Intellogist Blog posts covered patent applications for Godly powers and the mysterious search secrets of US patent examiners.  Posts in 2012 seem to have been a bit less mystical and a bit more grounded in practical […]

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