904.02(c) Internet Searching [R-10.2019]
The Internet is an Office-approved search tool that may be considered when planning and conducting a search for an application. The Internet provides the Office the opportunity to enhance operations by enabling patent examiners to efficiently locate and retrieve additional sources of information relating to a patent application.
The Office published a Patent Internet Usage Policy to establish a policy for use of the Internet by the patent examining corps and other organizations within the USPTO. See Internet Usage Policy, 64 F.R. 33056 (June 21, 1999). Articles 9 and 10 of the Patent Internet Usage Policy, which are pertinent to Internet searching and documenting search strategies, are reproduced below. Article 9 primarily addresses using the Internet for unpublished application searches. As mentioned therein, it is necessary that Internet searches related to unpublished applications MUST be limited to the general state of the art and formulated in such a way that protects the confidential proprietary intellectual property.
USPTO personnel may also use the Internet to search, browse, or retrieve information relating to the claimed invention(s) of a published application or proceeding including an application published pursuant to 35 U.S.C. 122(b), a reissue application, or a reexamination proceeding. These applications need not be kept in confidence; therefore, the restriction on the search queries used when performing an Internet search referenced in Article 9 below would not apply to these applications and proceedings. Any search query may include terminology related to the general state of the relevant technology, disclosed features from applicant’s disclosure and claim terminology. See MPEP § 707.05(e) for information pertaining to the citation of electronic documents, MPEP § 719.05, subsection II for documenting an Internet search, and MPEP § 502.03 for information pertaining to communications via electronic mail.
The Internet is generally a public forum and most communications made over the Internet are neither confidential nor secure. All use of the Internet by examiners must be conducted in a manner that ensures compliance with confidentiality requirements in the statutes, including 35 U.S.C. § 122, and regulations. As part of an Internet search, examiners may visit social media websites that provide for public interactions, but are not authorized to participate on these websites or otherwise solicit assistance with patent examination even for published applications. For example, an examiner is not authorized to request users of a website to provide additional information not found on the website, elaborate further on information already posted on the website, or post new information on the website. Additionally, any Internet searching that is conducted is to be limited to searching for the information necessary for examination of the application or proceeding, such as the state of the art or the presence or absence of technical features in the prior art.
INTERNET SEARCHING (ARTICLE 9)
The ultimate responsibility for formulating individual search strategies lies with individual Patent Examiners, Scientific and Technical Information Center (STIC) staff, and anyone charged with protecting proprietary application data. When the Internet is used to search, browse, or retrieve information relating to a patent application which has not been published, other than a reissue application or reexamination proceeding, Patent Organization users MUST restrict search queries to the general state of the art unless the Office has established a secure link over the Internet with a specific vendor to maintain the confidentiality of the unpublished patent application. Non-secure Internet search, browse, or retrieval activities that could disclose proprietary information directed to a specific application which has not been published, other than a reissue application or reexamination proceeding, are NOT permitted.
This policy also applies to use of the Internet as a communications medium for connecting to commercial database providers.
DOCUMENTING SEARCH STRATEGIES (ARTICLE 10)
All Patent Organization users of the Internet for patent application searches must document their search strategies in accordance with established practices and procedures as set forth in MPEP § 719.05 II.