Patent Claims Guidelines

[Federal Register: February 9, 2011 (Volume 76, Number 27)]
[Notices][Page 7162-7175]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr09fe11-35]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2010-0088]

Supplementary Examination Guidelines for Determining Compliance
With 35 U.S.C. 112 and for Treatment of Related Issues in Patent
Applications

AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: These supplementary guidelines are intended to assist United States Patent and Trademark Office (Office) personnel in the examination of claims in patent applications for compliance with 35 U.S.C. 112, second paragraph, which requires that claims particularly point out and distinctly claim the subject matter that applicant regards as his or her invention. In addition, supplemental information is provided to assist Office personnel in the examination of claims that contain functional language for compliance with 35 U.S.C. 112, especially computer-implemented invention claims...

For an idea of what is in the notice, here is a partial excerpt from Step 1.
II. Step 1--Interpreting the Claims

A. Broadest Reasonable Interpretation: The first step to examining a claim to determine if the language is definite is to fully understand the subject matter of the invention disclosed in the application and to ascertain the boundaries of that subject matter encompassed by the claim. During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.\1\ The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art.\2\ See MPEP Sec. 2111 for a full discussion of broadest reasonable interpretation. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification--the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification.\3\ When the specification sets a clear path to the claim language, the scope of the claims is more easily determined and the public notice function of the claims is best served. See MPEP Sec. 2111.01 for a full discussion of the plain meaning of claim language.

To view the complete text of this notice, access http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2011_register&docid=fr09fe11-35.

National Medal of Technology and Innovation Nominations

Nominations for the 2011 National Medal of Technology and Innovation to be awarded by the President of the United States are due March 31, 2011 by 5 p.m. (ET). "The Medal is awarded annually to individuals, teams (up to four individuals), companies or divisions of companies for their outstanding contributions to America’s economic, environmental and social well-being." More information about the requirements is available at http://www.uspto.gov/about/nmti/index.jsp. Guidelines and nomination forms are available at http://www.uspto.gov/about/nmti/guidelines.jsp.

Changes To Implement the Prioritized Examination Track

[Federal Register: February 4, 2011 (Volume 76, Number 24)]
[Proposed Rules][Page 6369-6376]
From the Federal Register Online via GPO Access [wais.access.gpo.gov] [DOCID:fr04fe11-18]

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1 [Docket No. PTO-P-2010-0092] RIN 0651-AC52

Changes To Implement the Prioritized Examination Track (Track I)
of the Enhanced Examination Timing Control Procedures

AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.

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To view the complete text of this proposed rule, access http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2011_register&docid=fr04fe11-18.

SUMMARY: The United States Patent and Trademark Office (Office)requested comments on a proposal to provide applicants with greater control over when their utility and plant applications are examined and to promote greater efficiency in the patent examination process (3-Track). The Office, in addition to requesting written comments, conducted a public meeting to collect input, and has subsequently considered the wide range of comments received. The Office is in the process of refining the 3-Track proposal in light of the input. While that process continues, and in light of the fact that the vast majority of public input was supportive of the Track I portion of the 3-Track proposal, the Office proposes by this Notice to proceed with immediate implementation of the Prioritized Examination Track (Track I), providing fast examination for applicants desiring it, upon payment of the applicable fee and compliance with the additional requirements as described below.
(To view the additional requirements of this proposed rule, access http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2011_register&docid=fr04fe11-18.)

DATES: Comment Deadline Date: Written comments must be received on or
before March 7, 2011. No public hearing will be held. (See the complete text for contact information.)