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How to Search Like an Examiner With the Scientific and Technical Information Center

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.

USPTO Patent search

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 question.

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About this Author

Lisa Adams, Intellectual Property, Patent, Trademark,  Mintz Levin Law Firm
Member

Lisa is an esteemed intellectual property attorney whose practice encompasses all areas of intellectual property. She advises clients on a wide range of IP matters including patent portfolio development, clearance to market analyses, acquisitions, diligence, and post-grant proceedings at the US Patent and Trademark Office. Start-ups to Fortune 500 companies in the medical technology, life sciences, energy and sustainability, manufacturing, and technology sectors rely on her counsel. She is known as a skilled strategist who becomes deeply familiar with her clients’ businesses and goals....

617-348-3054
Derek E. Constantine, Intellectual Property Attorney, Mintz
Associate

Derek’s practice focuses on the intellectual property assets and technology application portfolios of start-up, US, and international companies in a variety of industries, including medical devices, life sciences, robotics, electrical signal processing, automotive technology, and energy technology. In particular, his practice has focused on medical devices concerned with neuromodulation, nerve stimulation, and minimally-invasive surgery.

Prior to joining the firm, Derek practiced at a Washington, DC–area law firm specializing in intellectual property, where he drafted and prosecuted patent applications, prepared appeal briefs and reply briefs for the Patent Trial and Appeal Board, and managed international patent portfolios.

Earlier, for the USPTO, Derek examined pending applications relating primarily to medical diagnostic imaging, including MRIs and sonograms.

617-348-1793