On August 2, the Examination and Quality Improvement Act of 2022 was introduced in the Senate. The Statute directs the GAO to produce a report directed to patent quality that will, among other things, “…more clearly defining what constitutes a clear and thorough search by a patent examiner…”
This searcher argues that a patentability search produced in the private sector is a good place to start an inquiry on this subject. A patentability search report is a product that will give the reader a solid understanding of Average Skill in the Art in the subject matter of the search. Therefore, a thorough search equivales with a private sector patentability search.
Who is the GAO going to consult in order to derive a definition on what constitutes a clear and thorough search? The patent office does not conduct patentability searches so is there anyone in the patent office with intimate knowledge of how do this? Perhaps academics might have some insights. The Patent Bar? I know my clients, mostly all members of the Bar, appreciate and expect a thorough search. They know a quality search when they see it. However, the fact remains, they hire me, a search expert to find and forward facts relevant to the application. Defining all the variables that comprise a thorough search is going to require input from the private sector search community.
A fact that must drive this discussion is the understanding and cognition that patent searching is the act of finding and bring forward material facts. This function is a substantive component of patentability but is clearly missing from the process.
This is the first time in the history of the patent quality debate that the discussion focuses on the root cause of low quality patents. We like to think that what we do is an underutilized patent system skill in both the public and private sectors Patent searchers can not let non-patent search people define search quality.
Funny thing once you define what constitutes a clear and thorough search the tough questions begin. Like who is going to do it? I guesstimate there are 600 professional patent searchers in the US. 1 searcher can do approximately 150 searches a year. That is 90K. Factor in it takes 2 years to train a commercial searcher and its immediately clear that the PTO will continue to have an impossible task. The United States can find a way to fix this problem according to our customs and mores. Fixing the problem starts with defining what constitutes a clear and thorough search recognizing that patentability is all about Average Skill in the Art.