Patent Quality Chat

The USPTO’s Patent Quality Chat webinar series continues Oct. 12, from 11 a.m. – noon ET to discuss “Examiners Provide Their Views on Prepared Applications.”

In a recent application readiness survey, we polled examiners to investigate patent application attributes that enhance the ability of examiners to efficiently and effectively do their job. Particular features in filed specifications, claims, and Information Disclosure Statement (IDS) documents were considered. Examiners across disciplines and experience levels commented on how these features helped or hindered their review of patent applications. 

Application readiness experts will discuss the survey results on Oct. 12. Share your ideas about how the USPTO can help you improve the quality of incoming patent applications. We look forward to hearing your feedback. Please send your input and questions to patentquality@uspto.gov before and during the event.

To attend the webinar, please click on Patent Quality Chat.

Glossary Initiative for Software-Related Patents

For more information about the glossary initiative for software-related patents, access http://www.uspto.gov/patent/initiatives/glossary-initiative

Time Extended for Commenting on a Patent Small Claims Proceeding

On December 18, 2012, the USPTO published a request for comments on a patent small claims proceeding. The notice invited the public to submit written comments on or before March 18,2013. The USPTO is now extending the period for submission of public comments until April 30, 2013. For more information access the Federal Register Notice at http://www.gpo.gov/fdsys/pkg/FR-2013-03-06/html/2013-05162.htm .

The original comment request of Dec. 18, 2012 is available at http://www.gpo.gov/fdsys/pkg/FR-2012-12-18/html/2012-30483.htm.

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.

Federal Register: Treating Rejected Unappealed Patent Claims

[Federal Register: December 14, 2009 (Volume 74, Number 238)]
[Notices][Page 66097-66098]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr14de09-28][[Page 66097]]

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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2009-0020]

Procedure for Treating Rejected Claims That Are Not Being Appealed

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.
To view the complete text of this notice see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2009_register&docid=fr14de09-28

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SUMMARY: The United States Patent and Trademark Office (USPTO) is considering changes to the procedure for handling notices of appeal and appeal briefs that identify fewer than all of the rejected claims as being appealed. Under the proposed procedure, if appellant files a notice of appeal, or an appeal brief, that clearly identifies fewer than all of the rejected claims as being appealed, the non-appealed rejected claims would be deemed canceled by operation of this action on the part of the appellant as of the date on which such a notice of appeal, or appeal brief, is filed, regardless of whether the appellant also files an amendment canceling the non-appealed rejected claims. The USPTO is requesting comments from the public regarding the proposed procedure set forth in this notice.

COMMENT DEADLINE DATE: To be ensured of consideration, written comments must be received on or before January 13, 2010. No public hearing will be held.

ADDRESSES: Written comments should be sent by electronic mail message over the Internet addressed to PatentPractice@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Joni Y. Chang. Although comments may be submitted by mail, the Office prefers to receive comments via the Internet.
The written comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the Office's Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Joni Y. Chang, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, directly by telephone to (571) 272-7720, or by mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

New Patent Claims and Continuations Rules

The United States Patent Office (USPTO) has made available on-line until Feb. 1, 2008 a recording of its Aug. 23rd webcast (reading of PowerPoint slides) explaining the new claims and continuations rules. The USPTO has posted additional information about this topic on the following pages:

• Claims and Continuations Practice - Final Rule


• Proposed Rule Changes to Focus the Patent Process in the 21st Century

For additional questions about these new rules, contact the USPTO by e-mail at Patent.Practice@uspto.gov or by phone at (571) 272-7704.

Proposed Rules Change May Reduce Pendency

Proposed changes in the examination of patent applications that include claims containing alternative language (Markush claims or others using alternative language) may improve patent quality and reduce pendency. The proposed change would especially affect the pharmaceutical, chemical, and biotechnology fields where "multi-invention alternative" claims are common. For the text of the proposed changes see Friday's Federal Register.