RONALD J. STERN
PATENT OFFICE PROFESSIONAL ASSOCIATION
Submitted to the
SUBCOMMITTEE ON COURTS, THE INTERNET
AND INTELLECTUAL PROPERTY
COMMITTEE ON THE JUDICIARY
U.S. HOUSE OF REPRESENTATIVES
“The U.S. Patent and Trademark
Fee Modernization Act of 2003”
April 3, 2003
Mr. Chairman and Members of the Subcommittee:
POPA represents the more than 3,900 patent examiners and other patent professionals who form the backbone of the U.S. Patent and Trademark Office (USPTO). Patent examiners comprise the vast majority of our membership. The patent professionals of POPA are diligent, hard-working individuals firmly committed to maintaining the quality and integrity of the U.S. Patent System.
Today, however, the patent professionals of POPA believe that the very foundations of the U.S. Patent System are in danger of being so substantially and negatively altered by the USPTO 21st Century Strategic Plan, that the integrity of the patent system may be seriously and irreversibly damaged.
For the many reasons set forth below, POPA opposes the proposed USPTO fee structure and proposed Agency reforms.
THE NEW FEE LEGISLATION AND USPTO REFORM
The USPTO proposal for a fee modernization bill is not simply a proposal for raising fees but, instead, includes language that will make sweeping changes in the patent examination process that will significantly and adversely affect the U.S. Patent System. The essence of the change is the separation of the search from the remainder of the examination process. It is the USPTO’s intent to rely on searches performed by either commercial providers or foreign patent offices. Approval of the proposed USPTO fee legislation will be construed by the Agency as approval by Congress to implement its radical revision of America’s proven patent examination system. These proposed changes are reflected in the form of separate fees for filing, searching and examination and by allowing the Director, by regulation, to reduce fees for applicants who provide an appropriate search report.
At the same time, there is not a single provision in the agency’s proposals that would put an end to the continued diversion of USPTO fee income through the appropriations process. Any belief by some that passage of this bill will induce appropriators to reduce the amount of fee diversion is not based upon any written commitment or even the oral commitment of those responsible for appropriations.
Separation of Search and Examination
Separating the prior art search from patent examination will result in a loss of integrity and efficiency of the U.S. Patent System, reduce the quality of patent examination and, for some applications, is tantamount to surrendering the sovereign functions of the United States to foreign powers.
Examiners have raised their collective voice in opposition. Over 1,000 patent examiners have signed a petition requesting Congress to keep the search and examination together. A copy of this petition was submitted to the Subcommittee in July 2002. Examiners recognize that separating the search and examination would adversely impact the quality of patent examination and be a disservice to the American people.
Even Director Rogan has recognized that separating search and examination is an undesirable procedure. As he said in a town hall meeting with employees in September 2002, “…in a perfect world, we wouldn’t be looking at undergoing such radical changes….” He then went on to explain that the appropriations committees of Congress are demanding that the USPTO increase its efficiency of examination. He cited to and quoted a portion of the appropriation committee reports including the comment that “A substantial amount of funds have been expended on information technology projects over the last decade, but no significant increase in examiner productivity has been noted.”
The agency has known throughout the decade of the Nineties, that the automation projects it was funding were not designed to save examiner time. Instead, the principal justification for these projects was to save the real estate and handling costs associated with paper prior art files. Any expectation by the appropriations committees of increased examiner productivity represents a failure by management to provide the appropriators with a correct understanding of either the nature of the examiner’s work or the nature of the automation projects to be funded.
The prior art search and patent examination are integral parts of the same process. There is a synergy between the two functions that will be lost if search and examination are separated. As a patent examiner performs a prior art search on a patent application, the examiner is simultaneously becoming familiar with the state of the art in the subject matter of the application, identifying additional relevant search terms, modifying the search in response to preceding search results, and mentally formulating rejections to apply to the claimed invention. Thus, when the examiner prepares to take action on the case, much of the decision making process has already been completed.
Furthermore, as an examiner continues to search in a particular technology area, the examiner becomes more and more familiar with the prior art in that technology, increasing the quality of the examiner’s search and examination. Many examiners gain such a level of expertise that they are regarded as experts in their technologies both within and outside the USPTO. The USPTO represents the single largest accumulation of technological expertise in the federal government. Where else can one find a body of engineers and scientists with the collective expertise to examine anything from safety pins to atom bombs? Examiners’ expertise is continuously refreshed through the significant amount of time examiners spend searching the patent and non-patent literature in their assigned area of technology. This is the inherent efficiency of the combined search and examination process. The expertise of examiners will be diminished rather than enhanced by separating the search from examination. This will reduce the quality of patent examination.
The agency has not identified what the qualifications for a certified searcher will be. We do not, however, expect them to be fully qualified patent examiners. Patent examiners are specialists in a relatively narrow area of technology whereas commercial searchers will most likely be generalists due to the fact that there is only one USPTO but there will be multiple, competing search firms. It is expected that only the USPTO will have the volume of work to allow the current level of specialization. Secondly, only the USPTO has certain search resources such as a set of foreign patents prior to 1995 that have been classified according to the U.S. Patent Classification system. Most importantly, examiners are knowledgeable in patent law and, thus, are trained to identify references that can be legitimately combined under the law. If, in fact, a commercial searcher has all of the above advantages, i.e., specialization, search resources and knowledge of patent law, then the searcher is, in effect, a patent examiner. At that point, it is more efficient to utilize the searcher as a full-fledged examiner. It should also be obvious that it is more efficient to have one examiner work on a case than to have two examiners work on the case.
The European Patent Office (EPO) has recognized this inherent efficiency. After many years of experience with a separated search and examination process, the EPO has begun implementing the “BEST” program - Bringing Examination and Search Together. The BEST program places the responsibility for the search and examination with the same examiner in the same manner as current USPTO practice. In discussing the procedure in which search and examination are separate, Dr. Michel Marandon, a Director at the EPO in Munich has stated that “…it cannot be denied that it is not the most economic way of working as both types of examiners have to study the application and the prior art documents. The substantive examiners also have to study the reports of the search examiners.” Poignantly, in his statement before this Subcommittee last July, Charles P. Baker, Chair of the Section of Intellectual Property Law of the American Bar Association (ABA), indicated that the “best testament against separating the search function and an examination function is the fact the European Patent Office, which has had such a system for years, has recently decided to abandon it.” POPA agrees with Dr. Marandon and Mr. Baker. Now, irrespective of the years of experience of the EPO culminating in the BEST program, the USPTO wants to take the opposite approach and separate the search from the examination.
In his statement before this Subcommittee last July, Michael K. Kirk, Executive Director of the American Intellectual Property Law Association (AIPLA), expressed the concerns of AIPLA that “the ultimate responsibility in each individual case must rest with the PTO examiner, to ensure that the search is complete in the first instance and to conduct supplemental searches as appropriate as the claims in the application are modified as the application advances through the examination process.”
The USPTO, however, does not intend to maintain its present search capabilities. The Strategic Plan contemplates recouping significant overhead expenses by “putting the prior art search in the hands of private industry” and realizing “substantial savings in automation development and maintenance costs for EAST, WEST, ABSS, CDB access, etc.,” in addition to substantial savings from reduced upkeep and maintenance of both the U.S. and International Patent Classification Systems. These various systems are the very search tools that examiners rely on for performing prior art searches. If these tools are no longer available, patent examiners will not be able to ensure that prior art searches are complete and of the highest quality. Even worse, the 21st Century Plan contemplates reducing the amount of time available to an examiner for each case by 20-25% as stated by Director Rogan before this Subcommittee last July. Without the time and tools to do the work, the Agency has effectively precluded examiners from doing the work.
Furthermore, as recognized by Mr. Kirk, searching is often done at multiple points during the prosecution of a patent application. When an applicant submits an amendment that changes the subject matter of the claims, examiners are expected to do an additional search that encompasses the revised claim subject matter. In addition, examiners are expected to bring searches up to date each time they issue an action after applicants have had an opportunity to amend the claims. The agency has not proposed any system for returning the application to the commercial search service or a foreign patent office at a time other than when the initial search is done. Consequently, stripping the examiner of all his/her search time will reduce the quality of patent examination by forcing decisions to be based solely on the original search.
How can patent examiners determine if a search is “complete” without conducting searches themselves? How will examiners know if a CSS “got it right” without conducting searches themselves? How will examiners “conduct supplemental searches as appropriate” when the very search tools they use today are no longer available or properly maintained? How can patent examiners be held ultimately responsible in each case, when they are not provided with the necessary tools to perform their duties? The plain truth is: they cannot and the USPTO knows it. On the other hand, if patent examiners are themselves conducting searches to verify the completeness of outsourced searches or carrying out supplemental searches, then where is the efficiency of outsourcing the search and where are the substantial savings to the Agency to justify the outsourcing? This is the inefficiency of the Agency’s Strategic Plan. To ensure the integrity of the presumption of validity, patent examiners would be necessarily duplicating the work of the prior art search performed by others. Clearly, the best method to produce an efficient and quality patent examination is to simply continue having patent examiners do the prior art search themselves.
USPTO Reliance on Private Sector and/or Foreign Patent Office
Prior Art Searches Will Not Improve Quality of Examination
Examiners currently have the ability to utilize searches provided by applicants in the form of Information Disclosure Statements (IDS) and/or International Search Reports (ISR) provided by a foreign patent office. Examiners routinely review these documents when they are provided in a patent application. Indeed, if an examiner were to ignore relevant prior art in these documents, such an action could be construed by Agency management as an error against the examiner’s performance rating. Experience has shown, however, that the prior art provided in these documents is seldom sufficient for examination purposes.
This fact has been publicly recognized at a discussion of the USPTO 21st Century Strategic Plan sponsored by the National Academy of Sciences last August. Charles Van Horn, a partner in the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner and a former senior executive at the USPTO, explained that foreign searches won’t meet the requirements for a U.S. examination. He said, dryly, that the USPTO will indeed need a better post-grant review process to weed out the increased number of bad patents if searches are outsourced.
POPA has recently surveyed its membership on the wisdom of separating search and examination, as well as the adequacy of prior art submissions from applicants and from foreign patent offices. The results of this survey are attached herewith as Appendix 2.
Ninety five percent (95%) of examiners do not believe they will be able to issue valid patents and protect the public from unwarranted patents without doing the search themselves. Ninety six percent (96%) believe that overall quality will go down if search and examination functions are separated.
When asked the following: “In new applications where an IDS (information disclosure statement) is filed, approximately how often do you need to apply additional references when making a rejection in the application,” ninety one percent (91%) indicated that they need to apply additional art “almost all the time” (74%) or “most of the time” (17%). Only two percent (2%) said they “almost never” need to apply additional art.
Similarly, when asked the following: “In new applications containing foreign search reports, approximately how often do you need to apply additional references when making a rejection in the application,” ninety two percent (92%) indicated that they need to apply additional art “almost all the time” (69%) or “most of the time” (23%). Only two percent (2%) said they “almost never” need to apply additional art. These last results clearly illustrate the fact that U.S. patent laws require analysis and application of prior art in patent applications in a significantly different manner than do foreign patent laws.
Examiners, those most familiar with the prior art and its application under U.S. patent laws, are convinced that separating search and examination functions and increasing reliance on private sector or foreign patent office searches will negatively impact the quality of patent examination in the USPTO.
The Search Is A Sovereign Function
Separating the search and examination will also result in tacitly transferring the sovereign functions of the United States to foreign powers. In his keynote address to the ABA, on June 27, 2002, Director Rogan indicated that the quasi-judicial determination of patentability is a sovereign function that he believed should never be contracted out. Director Rogan did not ascribe that same sovereignty to the prior art search. Contrary to Director Rogan’s position, POPA believes that the search and examination both represent sovereign functions of the United States. If, as contemplated by the 21st Century Strategic Plan, examiners would have to rely on search results provided by a foreign patent office as the basis for patentability determination, the net effect is to delegate that patentability determination to the foreign patent office. The patentability determination can only be as good as the prior art on which that patentability determination is founded. If the search is provided by a foreign patent office, then any decision based on that search has ultimately been determined by that foreign patent office. Hence, the sovereign function of patentability determination has been indirectly delegated to a foreign power. POPA opposes such a delegation of sovereignty and opposes the proposed USPTO fee structure that would provide the Agency with the authority to make that delegation.
Conflict of Interest Issues
In the 21st Century Strategic Plan proposed last July, the agency included a provision by which the applicant would select and directly pay a commercial search provider. In recognition of the inherent conflict of interest created when an applicant controls the search provider, the USPTO conceded in its newly revised 21st Century Strategic Plan that “[B]ased upon the valuable and insightful feedback we have received from our constituency groups…USPTO will contract with private sector commercial organizations in lieu of the previously proposed requirement for applicant-commissioned search reports.”
The proposed fee bill, however, continues to ask Congress for the authority to provide a refund of search fees to “any applicant who provides a search report that meets the conditions prescribed by the Director,” thereby negating the near unanimous patent community opposition to allowing the applicant to control the search. This carefully crafted legislative language needs to be eliminated.
Under current law, officers and employees of the USPTO are prohibited from owning patents except in very limited circumstances. 35 U.S.C. § 4. This long-standing protection against a conflict of interest should be extended to include contractors who assist search and examination functions and any company or person having a direct or indirect financial stake in such contractors. In order to avoid easy evasion of the prohibition on the ownership of patents, it is important to extend this protection against conflicts of interest to all subsidiaries of a common parent corporation or common owner.
Can anyone imagine applications from the cutting edge research of a company such as Microsoft being searched by a subsidiary of Sun Microsystems or IBM?
Currently, senior examining personnel are required to file financial disclosure reports pursuant to law as enforced by the regulations of the Office of Government Ethics (OGE). Unless Congress explicitly provides for treating search contractors the same as government employees, they will not be required to disclose their financial interests. As a result, public confidence in the independence and objectivity of the search contractors will be compromised.
Fee Income Diversion
POPA continues to join its collective voice with all those who oppose the diversion of USPTO fee income to fund other unrelated non-USPTO appropriations. POPA believes that such fee diversions represent hidden and unfair taxes on America’s inventors. If a governmental service or program is worthy of appropriation, it should be funded from appropriate taxes and general funds, not at the expense of inventors and innovators. POPA urges Congress to permit the USPTO the full use of its fee income in the year it is received.
POPA believes the new proposed fee structure is intended, at least in part, to provide additional revenues for the express purpose of funding non-USPTO activities. The President’s FY 2004 budget proposal contemplates a diversion of close to $100 million which is substantially higher than the approximately $45 million in FY 01, the approximately $23 million in FY 02 and the expected $22 million diversion this fiscal year. It is not clear why some opponents of fee diversion are willing to accede to even greater diversion in the near term and the foreseeable future. Several more years of continued fee diversion at higher than current levels will create a dependence on patent fees for other government programs which will be politically impossible to eliminate.
Limitations on the number of application claims and pages
Although POPA opposes the new USPTO fee structure as presently written, some parts of the legislation merit further consideration. Of particular interest to examiners are the fees for additional claims and pages of the application above a threshold number. Examiners can attest to the huge increase in work required to examine patent applications as the number of claims increases. Generally, as the number of claims increases, so does the number of pages of the application. Further, the amount of patent and non-patent literature that must be reviewed also increases substantially. POPA is sympathetic to the Agency’s desire to recoup the costs associated with the extra work required with larger applications and applications having extra claims. Similarly, there is extra work required when applicants submit large numbers of references for consideration by the examiner. The costs of the time spent by the examiner reviewing these references also need to be recouped.
POPA would welcome a moderate fee increase in this regard if, and only if, the fees obtained were directly translated into additional time for examiners handling the burden of these more complex patent applications. This has not been the case in the past. The existing USPTO fee structure already requires additional fees for more than three independent and more than 20 total claims. These fees were imposed because it was recognized that additional claims place an additional burden on the examiner by requiring additional work. In his testimony before this Subcommittee, Director Rogan admitted that complex cases with numerous claims require examiners to spend “inordinate” amounts of time examining such cases. POPA agrees with Director Rogan on this point. Unfortunately, examiners have not been given the additional time that applicants purchased with the payment of these fees. In those very rare instances where a supervisor may provide some time for an exceptional application, the time virtually never approaches the time the examiner actually spent.
In their respective statements to this Subcommittee last July, both the AIPLA and the ABA expressed support for establishing fees that represent the actual costs to the Agency to provide necessary examination services. When an application contains a significant number of additional claims, has large information disclosure statements (often disclosing a hundred or more prior art references), or requires additional considerations such as review of related cases for double patenting, it is the examiner who bears that burden. Yet the Agency does not use the additional fees from that complex application to provide additional time to that examiner. The examiner only has a very limited amount of time for each application and cannot be expected to provide the same quality examination to a complex application without additional time.
The excess claim and specification fees proposed by the agency would, by themselves, raise approximately $100 million per year. This increase in funding, without any other fee increases, would result in, if utilized to pay for additional examining time, the potential for substantial additional searching with its concomitant increase in the reliability of patent grants. Give the examiners more time and you will get better quality.
Unless examiners are guaranteed the additional time commensurate with the Agency fees for additional examination services, both existing and proposed fees for additional claims and other services represent nothing more than another hidden tax on inventors rather than a payment for examination services rendered.
THE AGENCY’S PROPOSED QUALITY INITIATIVES
The 21st Century Strategic Plan proposes several initiatives ostensibly for improving patent examination quality at the USPTO. These initiatives include such proposals as re-certification of primary examiners, requiring passage of the examiner-relevant portions of the Patent Bar Exam for promotion to GS-13, quadrupling the number of work product reviews for primary examiners, and expanding the “second pair of eyes” review. POPA believes these initiatives represent a burdensome imposition of managerial authority designed to increase control rather than enhance quality.
No amount of review and no amount of automation can ultimately improve patent examination without first providing examiners with the necessary time and resources to properly do the job. The current production quotas were put in place over twenty-five years ago and have become the largest single obstacle to quality patent examination. Since these quotas were put in place, the technological complexity of applications, the number of pages of description, the number of independent claims and the number of total claims in each application has increased substantially. In addition, there has been a veritable explosion of technology information. Furthermore, examiners have been required to provide more detailed explanations of the bases of their decisions. The old quotas no longer provide examiners with sufficient time to adequately search and examine current cases. Real increases in quality will require real increases in time per case.
Compounding the problems of production quotas is management’s lack of support for adequate search tools to allow examiners to accurately and efficiently search the prior art. Management has, by neglect, effectively abandoned the U.S. Classification System. Fewer and fewer resources have been allocated for maintaining and updating the U.S. Classification System. Full time classifiers have been slowly phased out by attrition until finally, in 2002, management effectively abolished the job position and moved the remaining full time classifiers to hybrid classifier/examiner positions. U.S. classification of foreign patent documents ended in the mid-1990’s, effectively removing this significant source of prior art from classified searches.
The automated patent databases have also been shortchanged. Management has repeatedly failed to allocate adequate resources to finish converting the patent image database to a fully text-searchable database. While patent images are available back to 1790, the text searchable database is only adequately usable back to 1971. Management recently made available an additional database using optical character recognition (OCR). The “dirty” OCR database is, however, of such poor quality as to render it almost useless for text searching with the Agency’s current search engine. These are examples of failed management practices that have resulted in decreased quality of patent examination over time.
The Strategic Plan quality initiatives are designed to reduce or eliminate the freedom and independent judgment of patent professionals. Patent examiners operate in a quasi-judicial capacity when making patentability determinations. The proposed quality initiatives would place the examiners under more stringent control of management and subject them to political pressures from both management and applicants. This is analogous to a federal judge being under executive branch management control when making judicial decisions. It is analogous to a medical doctor having to have a diagnosis and treatment regimen approved by an accountant. At the USPTO, many supervisors manage art areas in which they, themselves, have not been trained. Hence, patent examiners well trained in their technology, are reviewed by a generalist supervisor. Ultimately, the Strategic Plan initiatives will result in a further erosion of examination quality.
In almost all professional positions, the professional is tested once and then expected to remain current in his profession through continuous formal and on-the-job training. Attorneys do not retake the bar exam every year or two. Doctors do not sit for their board certifications every year. Repeated testing is not the accepted way of maintaining professional standards in the private sector and neither should it be at the USPTO. POPA has always been a strong proponent of adequate and continuing training in both technology and patent laws. The patent professionals of POPA are hard-working, dedicated public servants and deserve the honor and respect of USPTO management. Rather than unnecessarily increasing the number of managers reviewing one patent examiner, management should provide adequate opportunities for examiners to keep current with changes in patent laws and their respective technologies. Adequate time and training, more than anything else, will directly result in significant improvements in patent examination quality.
POPA opposes the proposed new USPTO fee structure and the 21st Century Strategic Plan as presently written. We would welcome the opportunity to work together with the Subcommittee and the USPTO to develop a Strategic Plan and fee structure that would be acceptable to all parties concerned and meet the objectives of improving patent quality and decreasing patent application pendency.
We thank you, Mr. Chairman for this opportunity to present the views of POPA.
Best and the latest trends in Automation in the EPO
by Dr. Michel Marandon, Director BEST-DG2
(This paper does not necessarily represent the
official position of the European Patent Office
on the matters addressed.)
The European Patent Convention provides for the grant of a patent in essentially two steps: the search and the examination (cf Article 15 sqq. EPC) . Under the present arrangements, the search is carried out by the search examiners of DG1 (The Hague/Berlin) and the examination by the substantive examiners of DG2 (Munich). These examiners have an academic degree
or a comparable background.
This split procedure has historical reasons and results from a compromise aimed at integrating search examiners from the previous Institut International des Brevets and at giving the seat of the EPO to Germany. Although it has proven to work satisfactorily, it can not be denied that it is not the most economic way of working as both types of examiners have to study the application and the prior art documents. The substantive examiners also have to study the reports of the search examiners.
The office management has for some time been thinking about ways of improving the effectiveness of the examination procedure without decreasing the quality of the products. The reflections lead to the start of a pilot project with the purpose of Bringing Examination and Search Together (BEST).
In this procedure, because of the requirements of the EPC, the examination process is still carried out by the same examiner in two phases with the end product of the first phase being a search report.
The pilot project, called BEST, was launched in February 1989 with the appointment of a Project Leader for BEST in DG1, and the creation of a Steering Committee.
As BEST in DG1 can only be maintained if DG2 also works under BEST conditions, it was decided to start BEST in DG2 in 1992.
In 1993, the project has been recognized by the Administrative Council of the EPO as one of the most important strategic moves of the Office and go-ahead was given.
2. The BEST project.
2.1 Principles underlying BEST
One of the most essential principles underlying BEST is the basic responsibility of both DG1 and DG2. DG1 is responsible for search work and DG2 for examination work within the Office. This means that each DG in its field of competence is responsible for the Guidelines and Instructions, training, harmonisation and control of quality. In this way it can be insured that the quality of search or examination will be comparable regardless of where within the Office the search or examination has been carried out.
In order to create an environment that allows for as much harmonisation as possible between DG1 and DG2 the following extra measures have been taken:
a) Both project leaders have search and substantive examination experience in DG1 and DG2 respectively.
b) With respect to BEST-DG1 it is pointed out that training is entirely under the responsibility of DG2 and is carried out by examiners with substantial experience in substantive examination. Similarly, the training of BEST-DG2 is under the responsibility of DG1 and is monitored by highly experienced search examiners.
c) The Directorates for Harmonisation and Quality Control in DG1 and DG2 look very carefully at the work carried out in the other DG.
d) The examiners participating in BEST attend training weeks in the other DG.
e) It is agreed that eventually all technical areas will be dealt with in each DG in order to avoid the development of different practises in each DG according to the technical areas it deals with and in order to avoid applicants knowing beforehand where a particular application will be dealt with.
f) For harmonisation and training purposes DG1 examiners participate in examining divisions in which DG2 examiners are present.
g) Training programmes are the same in DG1 and DG2 and are given by the same lecturers.
2.2 Working methods
After having tried out different working methods it very soon became apparent, that a significant improvement in the procedure could be only obtained when the search examiner after completion of his search report directly prepares a first communication. The project now mainly concentrates on this working method.
It must be stressed that under BEST the European search report is drawn up according to the requirements of Article 92 EPC : the BEST search is a complete one. So-called tactical searching is rigorously avoided.
Oral proceedings when they arise in respect of cases dealt with in DG1 will take place in Munich or in DG1 depending up on the wishes of the applicant. Opposition on all cases whether examined in DG1 or DG2 will be dealt with by DG2 examiners in Munich. Hence oral proceedings thereon will be in Munich.
It is expected that in the steady state, about 75% of the EPO workload will be treated under BEST (mainly EP and WO applications for which the EPO is ISA). The implementation, limited by the training capacity in DG1 and by the availability of online search tools in DG2, will be carried out progressively until year 2002. Presently about 250 examiners in DG1 and 50 in
DG2 are working on the BEST program.
In the year 2002, about 55,500 searches and 48,800 substantive examinations will be carried out under BEST.
2.4 Advantages of BEST for the Applicants
It should be stressed that BEST is not only intended to save time per file for the EPO, but also to provide a better service. There will an increased harmonisation in practice between DG1 and DG2 and the fact that a letter has already been written means that an official communication can be issued by the examiner as soon as it reaches him during the substantive examination
phase. This means that an official communication is issued weeks or months faster than under the old system with no chance of a sudden divergence of opinion between DG1 and DG2 (e.g. about unity). The risk that a substantive examiner will cite an additional document which was not mentioned in the search report is also greatly reduced.
The above advantages apply not only to European applicants but also to PCTs for which the EPO is the designated office.
3. BEST and Automation.
The BEST project and Automation are deeply inter-connected. The BEST project would not be possible without Automation (no search tools available in Munich) and the Automation would be certainly more difficult to implement without BEST (ergonomic problems linked to a log time spent in front of a screen necessitate job-diversification).
BEST mainly relies on the use of the EPOQUE system and the BNS.
The EPOQUE system comprises the suite of integrated applications to enable an electronic search procedure: a search and retrieval system (EPOQUE I) and a browsing and navigation tool (EPOQUE II).
EPOQUE I provides on-line access to internal (EPODOC, WPI, PAJ, INSPEC, IBMTDB, EPOS, F-terms, US classification) and of external (main hosts used: Questel-Orbit, STN, Dialog) databases and personal databases using a common command language and a standardised set of data formats. The search and retrieval function permits interactive interrogation of bibliographic and full text databases.
EPOQUE II allows an online dual mode access to the full text and drawings of patent documents as well as near-line access image (facsimile) databases (BNS 2).
EPOQUE II contains one patent family member of PCT minimum documentation from 1970 onwards and all drawings from drawing-oriented fields (about 70 IPC s/cl) from 1920-1970. This basic package currently represents a volume of 3.7 millions documents and will be expanded according to the needs of the various technical fields.
EPOQUE has mainframe system components which provide the host service for making available an ever increasing number of databases to workstations and terminals and a workstation component. The latter comprises a sophisticated multi-module graphical user interface. The user interface allows composition of search queries with subsequent viewing followed by printing
(if necessary) of both retrieved text information and facsimile information. The viewing is carried out on high resolution colour screens and printing can be accomplished on workstation, decentral (corridor) postscript printers or in the central print shop.
The EPOQUE system is the cornerstone of the electronic search systems at the EPO. Like all search systems it depends on the quality and amount of available data and hence on the database production area. Efforts are being made both to acquire new data internally and externally and at the same time to improve and correct present databases. A new system, DOCTOOL, will
allow examiners to associate keywords, indexing terms, classifications and free text to documents thus increasing the precision of the search results and the navigation through the documents.
The BACON Numerical Service (BNS) which will essentially be an electronic library server containing the EPO's complete patent search collection and capable of delivering on demand documents to client applications, is an essential step in the implementation of the BEST program, and more specifically in Munich where no classified paper documentation is available.
The data for the BNS currently consists of approximately 20 Mio documents containing about 200 Mio scanned page images. The total volume of image data is expected to be around 13 Terabytes in 1995. The BNS is based on a robot technology provided by Storage Tek.
The system will enable a BEST examiner to consult on screen the documents which he has identified during a search in online databases using EPOQUE II and in a further step to print for deeper study paper copies of those documents which have been selected by the consultation on screen.
In a first development phase, BNS at level I will provide batch mode access to the retrieved documents. In the second development phase (BNS level 2), the system will offer the BEST examiners near line access with high priority (about 15 minutes response time) to the selected documents.
4. Online searching in the future
BEST-DG2 entirely relies on the new EPO concept, based on three tools:
- identification (EPOQUE I)
- consultation (EPOQUE II)
- document delivery (BNS).
It is expected by successive use of these tools to divide the number of documents to be studied by a factor of 10 in each step, e.g.: 2000 doc EPOQUE I> 200 doc EPOQUE II>20 doc study on paper> search report
BEST will be a major step in the development plans of the EPO and will expand with corresponding improvements and expansion of the on-line search tools available to the examiner. All necessary steps will be taken to ensure at the very least, the maintenance of present quality.