Attachment 8 Recordation of the Search History.pdf

Recordation of the Search History

Background The procedures listed below provide the contractor with the necessary guidelines for recording the details of the search history for each PCT application. The search history provides a complete, accurate, and uniform record of what has been searched and considered by the contractor. The search history is important in evaluating the prior art determinations made by the contractor in the search report and/or written opinion.

Field of Search

The contractor shall provide the areas of classified search, i.e. CPC, USPC or IPC classifications, of domestic and foreign patents, abstract collections, and publications in which a classification search for prior art was made and the database used for the classification search. The contractor must also identify other information collections and sources in which the search for prior art was made. The contractor shall indicate the date(s) on which the search was conducted.

In order to provide a complete, accurate, and uniform record of what has been searched and considered by the contractor for each application, the USPTO has established procedures for recording search data supplemental to the International Search Report/Written Opinion. Such a record is of importance to anyone evaluating the quality of the search, the prior art made of record, and the determinations regarding novelty, inventive step or other requirements and which are based upon the prior art.

“SEARCH HISTORY” Information The following searches are required to be recorded in Adobe Acrobat PDF or Microsoft WORD® and provided to the USPTO in a document entitled “PCTYY#####_SEARCH HISTORY” (hereinafter referred to as “SEARCH HISTORY”) by the contractor along with the date the search was conducted and the initials of the searcher and Search Approval Official(s) who prepared the deliverable according to the following guidelines listed below.

I. Classification Information The classification information portion should correspond with the “Field of Search” indicated in the International Search Report:

(A) A complete search of a classification, including all US and foreign patent documents, whether categorized by CPC, USPC or IPC classification and other publications placed therein. A classified search is a complete search of all the documents in a particular subclass and it is not limited by any text query or other means. If a classified search was performed, the class and subclass must be recorded in the “SEARCH HISTORY” document along with the date that the search was performed (or updated) and the searcher’s initials.

Examples

424/270, 272, 273 224/42.1 F

414/DIG. 4

D3/32 R A61K 9/22 A61K 31/56 - A61K 31/585

Unless a classified search as defined was performed, it would be improper to merely record the class and subclass in the “SEARCH HISTORY” document without any indication that a limited classified search was performed.

(B) A limited search of a classification, for example, a search that is restricted to an identifiable portion of the patent documents placed therein. A limited classified search is defined as a search of a classified patent document database limited by a text query or a set of text queries or other means. If, however, only the publications in a classification are searched, see item numbered II(C) below. If a limited classified search was performed, the class and subclass followed by an appropriate annotation must be recorded in the “SEARCH HISTORY” document along with the date that the search was performed (or updated) and the searcher’s initials. The complete classification, followed by the information defining the portion of the classification searched, in parentheses, should be recorded.

Examples 414/1 (US only) 238/6 (1954 to date) A61K 9/22 (1990 to date) 705/14 (text search only – see search history printout) 4C083 AC10 (F-term, abstract only) A61B 5/00N4P (ECLA, text search of full doc – see search history printout) G06F1/2 (text search only – see search history printout)

(C) Text search only performed in a particular database (no classified or limited classification search was performed). If a text search was performed in a particular database and no classified or limited classified search was performed, the following entry must be recorded on the “SEARCH HISTORY” document: “See search history printout(s)” along with the date that the search was performed (or updated) and the searcher’s initials.

II. Other “SEARCH HISTORY” Information Other “SEARCH HISTORY” information is intended to complete the application file record of areas and/or documents considered by the contractor in their search. The contractor should record the following searches in the manner indicated, with each search dated:

(A) A cursory search, or scanning, of a CPC, USPC or IPC classification, i.e., a search usually made to determine if the documents classified there are relevant. Record the classification, followed by “(cursory).”

Examples

250/13 (cursory) A61K 9/44 (cursory)

(B) A search of a publication not located within the classified patent file, e.g., a library search, a textbook search, a Chemical Abstracts search, etc. Record according to the following for each type of literature search:

(1) Abstracting publications, such as Chemical Abstracts: Record name of publications, list terms consulted in index, and indicate period covered.

Examples Chem. Abs, Palladium hydride Jan.-June 1975 Eng. Index, Data Conversion Analog to Digital 1975

(2) Periodicals — list by title and period or volumes covered, as appropriate.

Examples Popular Mechanics, June-Dec. 1974 Lubrication Engineering, vols. 20-24

(3) Books — list by title and author, edition or date, as appropriate.

Examples Introduction to Hydraulic Fluids, Roger E. Hatton, 1962

(4) Other types of literature not specifically mentioned herein (i.e., catalogs, manufacturer’s literature, private collections, etc.). Record data as necessary to provide unique identification of material searched.

Example

Sears Roebuck catalog, Spring-Summer, 1973.

A cursory or browsing search through a number of materials that are not found to be of significant relevance may be indicated in a collective manner, e.g., “Browsed Scientific and Technical Information Center (STIC) shelves under QA 76.5” or “Browsed text books in STIC relating to [insert relevant technology].” More detailed reviews or searches through books and periodicals or any search of terms in abstracting publications should be specifically recorded.

(C) The search of only the publications in a subclass.

Record class and subclass followed by “(publications only).”

Examples 43/56 (publications only) 99/DIG. 15 (publications only)

(D) In each application involving a search of a computer accessed text or chemical structure or an amino acid or nucleic acid sequence database, the contractor shall provide, the name of the database service, the date when the search was made, the computer databases searched, and the search queries, including text, chemical structure, or sequences. The queries shall be documented by providing the following minimum information:

(1) The search logic containing the key words and/or query logic including any database-specific identifiers, prefixes, suffixes, truncation symbols, chemical registry numbers, etc., or chemical structure or sequence used as a query.

(2) The name of the file or files searched and the database service.

(3) Date of the search.

(4) For sequence or chemical structure searches, the precise sequence by sequence listing identifier or chemical structure searched must be identified. Any partial sequence or partial chemical structure searched must be specified by identifying the partial sequence or partial chemical structure and the parent sequence or chemical structure from which the partial sequence or chemical structure was taken from and the precise location where the partial sequence or chemical structure resides within the parent sequence or chemical structure.

Examples

a) Nucleic acid sequence SEQ ID NO: 5 searched for complements using BLAST, default parameter settings, against Genebank database.

b) Chemical structure search via STN of formulae II in claim 1 in CAS registry file database.

c) Nucleotides 10-50 of nucleic acid sequence SEQ ID NO: 5 searched for complements using BLAST, default parameter settings, against Genebank database.

d) R1 of the Chemical structure of formulae II in claim 1 searched via STN in CAS registry file database.

(5) For any sequence search accomplished by the contractor, the contractor shall provide additionally to II D (4) above, the databases searched, the program and parameters used for the sequence search and alignments, and the sequence alignments corresponding to any prior art discovered and cited in the search report or written opinion.

(6) The details of searches using combinations of any of the foregoing searches, including those combined with classified searches must be provided and consistent such that all the information as listed above for any of the foregoing searches is included and how the combined search was accomplished.

Example 435/6 classified search results in WEST further refined by text search query: probe and insulin gene.

(7) A printout of the chemical structure edited and uploaded for search within commercial databases must be provided as part of the search history.

Two ways in which this minimum documentation can be provided are:

(1) Providing as part of the search history, and as necessary annotating, the computer search printout resulting from a computer assisted search; or,

(2) Recording the required information in the “SEARCH HISTORY” document.

For the methods above, the name of the database service and the expressions “(see form)” or “(see printout)” should be recorded as appropriate with the date.

(8) Searcher’s initials.

(E) Other Databases For other types of publicly accessible computer accessed databases (e.g., CD-ROM databases, specialized databases, etc.), record data as necessary to provide unique identification of material searched and sufficient information as to the search query or request so that the search can be updated.

If any other database search was performed, the specific database search must be recorded in the “SEARCH HISTORY” document along with the date that the search was performed (or updated) and the searcher’s initials. The record should also document the location of the database and its form (CD-ROM, etc.).

Example: Citing a biotech CD-ROM database Entrez: Sequences, National Center for Biotechnology Information, Version 7.19.91b (CD-ROM, TC 1600) Searched HIV and vaccine; neighbored Galloway article dated 6/5/91 on April 1, 1990.

Example: Citing a non-biotech CD-ROM database Computer Select, (November, 1991), Ziff Davis Communications Co., (CD-ROM, STIC), Searched Unix and emulation on December 1, 1991.

Electronic Copy of the Search Recordation

Most of the database services accessed in application searches provide a command to display or print the search history that includes most, if not all, of the minimum required information for documenting database searches. An electronic copy of the search recordation must be provided to the USPTO which includes the following minimum information: (a) all the search logic or chemical structure or sequence used as a database query; (b) all the name(s) of the file(s) searched and the database services; (c) the date the search was made or updated; and (d) the searcher’s full name. For further information and examples relating to search recordation that is provided by database services, see MPEP 719.05. If there are several search statements in the history, the statement(s) for which the results were reviewed should be identified by indicating, “results reviewed” for that search statement.

Example