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DOC/PTO RIN: 0651-AC03 Publication ID: Fall 2008 
Title: Changes To Implement Preexamination Search Reports 
Abstract: The U.S. Patent and Trademark Office (Office) has established a 21st Century Strategic Plan to transform the Office into a quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system. The 21st Century Strategic Plan addresses patent pendency through (inter alia) the continued aggressive hiring of examining staff and the exploitation of search reports from other intellectual property authorities and from commercial search contractors. The Office is concerned that the aggressive hiring of examining staff and exploitation of search reports from others may be insufficient to address patent pendency in the near future, for example, due to limits on the volume of new examiners that can realistically be absorbed and restrictions on the Office's ability to obtain search reports from commercial search contractors. Therefore, the Office is exploring requiring applicants to provide a preexamination search report. The Office anticipates that if applicants provide preexamination reports, the examination of applications will be better streamlined and more focused thereby resulting in higher quality and more timely issued patents. Because applicants are, generally, in the unique position of possessing the greatest knowledge of their claimed invention and, in many instances, an extensive knowledge of the prior art most pertinent to their claimed invention, requiring applicants to share this knowledge and expertise with the Office is highly conducive to achieving the common goal of the Office and the public, namely high quality patents. Further, the need to focus unduly broad claims will become apparent to the applicant through the process of providing a preexamination search report. In addition, with a preexamination search report, examiners will begin the examination process with a greater understanding of the claimed invention and with, perhaps, the best prior art already available. 
Agency: Department of Commerce(DOC)  Priority: Other Significant 
RIN Status: Previously published in the Unified Agenda Agenda Stage of Rulemaking: Completed Actions 
Major: No  Unfunded Mandates: No 
CFR Citation: 37 CFR 1   
Legal Authority: 35 USC 2(b)(2)   
Legal Deadline:  None
Timetable:
Action Date FR Cite
Withdrawn  07/15/2008    
Regulatory Flexibility Analysis Required: No  Government Levels Affected: None 
Small Entities Affected: No  Federalism: No 
Included in the Regulatory Plan: No 
RIN Data Printed in the FR: No 
Agency Contact:
Robert W. Bahr
Senior Patent Attorney
Department of Commerce
Patent and Trademark Office
Mail Stop Comments-Patents, Commissioner for Patents, P. O. Box 1450,
Alexandria, VA 22313
Phone:571 272-8800
Email: robert.bahr@uspto.gov