[Federal Register Volume 78, Number 2 (Thursday, January 3, 2013)]
[Notices]
[Pages 292-295]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-31594]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2012-0052]
Request for Comments and Notice of Roundtable Events for
Partnership for Enhancement of Quality of Software-Related Patents
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments. Notice of meetings.
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SUMMARY: The United States Patent and Trademark Office (USPTO) seeks to
form a partnership with the software community to enhance the quality
of
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software-related patents (Software Partnership). Members of the public
are invited to participate. The Software Partnership will be an
opportunity to bring stakeholders together through a series of
roundtable discussions to share ideas, feedback, experiences, and
insights on software-related patents. To commence the Software
Partnership and to provide increased opportunities for all to
participate, the USPTO is sponsoring two roundtable events with
identical agendas, one in Silicon Valley, and the other in New York
City. Each roundtable event will provide a forum for an informal and
interactive discussion of topics relating to patents that are
particularly relevant to the software community. While public attendees
will have the opportunity to provide their individual input, group
consensus advice will not be sought.
For these initial roundtable events, this notice sets forth several
topics to begin the Software Partnership discussion. The first topic
relates to how to improve clarity of claim boundaries that define the
scope of patent protection for claims that use functional language. The
second topic requests that the public identify additional topics for
future discussion by the Software Partnership. The third topic relates
to a forthcoming Request for Comments on Preparation of Patent
Applications and offers an opportunity for oral presentations on the
Request for Comments at the Silicon Valley and New York City roundtable
events. Written comments are requested in response to the first two
discussion topics. Written comments on the third discussion topic must
be submitted as directed in the forthcoming Request for Comments on
Preparation of Patent Applications.
DATES: Events: The Silicon Valley event will be held on Tuesday,
February 12, 2013, beginning at 9 a.m. Pacific Standard Time (PST) and
ending at 12 p.m. PST. The New York City event will be held on
Wednesday, February 27, 2013, beginning at 9 a.m. Eastern Standard Time
(e.s.t.) and ending at 12 p.m. e.s.t.
Comments: To be ensured of consideration, written comments must be
received on or before March 15, 2013. No public hearing will be held.
Registration: Registration for both roundtable events is requested
by February 4, 2013.
ADDRESSES: Events: The Silicon Valley event will be held at: Stanford
University, Paul Brest Hall, 555 Salvatierra Walk, Stanford, CA 94305-
2087.
The New York City event will be held at: New York University, Henry
Kaufman Management Center, Faculty Lounge, Room 11-185, 44 West 4th
St., New York, NY 10012.
Comments: Written comments should be sent by electronic mail
addressed to [email protected]. 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 Seema Rao, Director Technology Center 2100.
Although comments may be submitted by mail, the USPTO prefers to
receive comments via the Internet.
The 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
USPTO Internet Web site at http://www.uspto.gov. Because comments will
be 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. Parties who would like to rely on
confidential information to illustrate a point are requested to
summarize or otherwise submit the information in a way that will permit
its public disclosure.
Registration: Two separate roundtable events will occur, with the
first in Silicon Valley and the second event in New York City.
Registration is required, and early registration is recommended because
seating is limited. There is no fee to register for the roundtable
events, and registration will be on a first-come, first-served basis.
Registration on the day of the event will be permitted on a space-
available basis beginning 30 minutes before the event.
To register, please send an email message to
[email protected] and provide the following information:
(1) Your name, title, and if applicable, company or organization,
address, phone number, and email address; (2) which roundtable event
you wish to attend (Silicon Valley or New York City); and (3) if you
wish to make an oral presentation at the event, the specific topic or
issue to be addressed and the approximate desired length of your
presentation. Each attendee, even if from the same organization, must
register separately.
The USPTO will attempt to accommodate all persons who wish to make
a presentation at the roundtable events. After reviewing the list of
speakers, the USPTO will contact each speaker prior to the event with
the amount of time available and the approximate time that the
speaker's presentation is scheduled to begin. Speakers must then send
the final electronic copies of their presentations in Microsoft
PowerPoint or Microsoft Word to [email protected] by
February 1, 2013, so that the presentation can be displayed at the
events.
The USPTO plans to make the roundtable events available via Web
cast. Web cast information will be available on the USPTO's Internet
Web site before the events. The written comments and list of the event
participants and their affiliations will be posted on the USPTO's
Internet Web site at www.uspto.gov.
If you need special accommodations due to a disability, please
inform the contact persons identified below.
FOR FURTHER INFORMATION CONTACT: Seema Rao, Director Technology Center
2100, by telephone at 571-272-3174, or by electronic mail message at
[email protected] or Matthew J. Sked, Legal Advisor, by telephone at
(571) 272-7627, or by electronic mail message at
[email protected].
SUPPLEMENTARY INFORMATION:
I. Purpose of Notice: This notice is directed to announcing the
Software Partnership which is a cooperative effort between the USPTO
and the software community to explore ways to enhance the quality of
software-related patents. The Software Partnership will commence with
the two bi-coastal roundtable events. The initial topics selected for
comment and discussion have been chosen based on input the USPTO has
received regarding software-related patents. The input has been gleaned
from public commentary on patent quality, dialogue with stakeholders
that have requested that the USPTO take a closer look at the quality of
software-related patents, and from insight based on court cases in
which software-related patents have been the subject of litigation. The
public is invited to provide comments on these initial topics and to
identify future topics for discussion.
II. Background on Initiative to Enhance Quality of Software-Related
Patents: The USPTO is continuously seeking ways to improve the quality
of patents. A quality patent is defined, for purposes of this notice,
as a patent: (a) For which the record is clear that the application has
received a thorough and complete examination, addressing all issues on
the record, all examination having been done in a manner lending
confidence to the public and patent owner that the resulting patent is
most
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likely valid; (b) for which the protection granted is of proper scope;
and (c) which provides sufficiently clear notice to the public as to
what is protected by the claims.
Software-related patents pose unique challenges from both an
examination and an enforcement perspective. One of the most significant
issues with software inventions is identifying the scope of coverage of
the patent claims, which define the boundaries of the patent property
right. Software by its nature is operation-based and is typically
embodied in the form of rules, operations, algorithms or the like.
Unlike hardware inventions, the elements of software are often defined
using functional language. While it is permissible to use functional
language in patent claims, the boundaries of the functional claim
element must be discernible. Without clear boundaries, patent examiners
cannot effectively ensure that the claims define over the prior art,
and the public is not adequately notified of the scope of the patent
rights. Compliance with 35 U.S.C. 112(b) (second paragraph prior to
enactment of the Leahy-Smith America Invents Act (AIA)) ensures that a
claim is definite.
There are several ways to draft a claim effectively using
functional language and comply with section 112(b). One way is to
modify the functional language with structure that can perform the
recited function. Another way is to invoke 35 U.S.C. 112(f) (sixth
paragraph pre-AIA) and employ so-called ``means-plus-function''
language. Under section 112(f), an element in a claim for a combination
may be expressed as a means or step for performing a specified function
without the recital of structure, material or acts in support thereof,
and shall be construed to cover the corresponding structure, material,
or acts described in the specification and equivalents thereof. As is
often the case with software-related claims, an issue can arise as to
whether sufficient structure is present in the claim or in the
specification, when section 112(f) is invoked, in order to satisfy the
requirements of section 112(b) requiring clearly defined claim
boundaries. Defining the structure can be critical to setting clear
claim boundaries.
III. Topics for Public Comment and Discussion at the Roundtable
Events: The USPTO is seeking input on the following topics relating to
enhancing the quality of software-related patents. These initial topics
are intended to be the first of many topics to be explored in a series
of roundtables that may ultimately be used for USPTO quality
initiatives, public education or examiner training. First, written and
oral comments are sought on input regarding improving the clarity of
claim boundaries for software-related claims that use functional
language by focusing on 35 U.S.C. 112 (b) and (f) during prosecution of
patent applications. Second, written and oral comments are sought on
future topics for the Software Partnership to address. Third, oral
comments are sought on the forthcoming Request for Comments on
Preparation of Patent Applications to the extent that the topics of
that notice particularly pertain to software-related patents.
The initial topics for which the USPTO is requesting written and,
if desired, oral comments are as follows:
Topic 1: Establishing Clear Boundaries for Claims That Use Functional
Language
The USPTO seeks comments on how to more effectively ensure that the
boundaries of a claim are clear so that the public can understand what
subject matter is protected by the patent claim and the patent examiner
can identify and apply the most pertinent prior art. Specifically,
comments are sought on the following questions. It is requested that,
where possible, specific claim examples and supporting disclosure be
provided to illustrate the points made.
1. When means-plus-function style claiming under 35 U.S.C. 112(f)
is used in software-related claims, indefinite claims can be divided
into two distinct groups: claims where the specification discloses no
corresponding structure; and claims where the specification discloses
structure but that structure is inadequate. In order to specify
adequate structure and comply with 35 U.S.C. 112(b), an algorithm must
be expressed in sufficient detail to provide means to accomplish the
claimed function. In general, are the requirements of 35 U.S.C. 112(b)
for providing corresponding structure to perform the claimed function
typically being complied with by applicants and are such requirements
being applied properly during examination? In particular:
(a) Do supporting disclosures adequately define any structure
corresponding to the claimed function?
(b) If some structure is provided, what should constitute
sufficient `structural' support?
(c) What level of detail of algorithm should be required to meet
the sufficient structure requirement?
2. In software-related claims that do not invoke 35 U.S.C. 112(f)
but do recite functional language, what would constitute sufficient
definiteness under 35 U.S.C. 112(b) in order for the claim boundaries
to be clear? In particular:
(a) Is it necessary for the claim element to also recite structure
sufficiently specific for performing the function?
(b) If not, what structural disclosure is necessary in the
specification to clearly link that structure to the recited function
and to ensure that the bounds of the invention are sufficiently
demarcated?
3. Should claims that recite a computer for performing certain
functions or configured to perform certain functions be treated as
invoking 35 U.S.C. 112(f) although the elements are not set forth in
conventional means-plus-function format?
Topic 2: Future Discussion Topics for the Software Partnership
The USPTO is seeking public input on topics related to enhancing
the quality of software-related patents to be discussed at future
Software Partnership events. The topics will be used in an effort to
extend and expand the dialogue between the public and the USPTO
regarding enhancing quality of software-related patents. The Software
Partnership is intended to provide on-going, interactive opportunities
and a forum for engagement with the USPTO and the public on software-
related patents. Therefore, to plan future events, the USPTO seeks
input on which topics, and in what order of priority, are of most
interest to the public. Input gathered from these events, may be used
as the basis for internal training efforts and quality initiatives. One
potential topic for future discussion is how determinations of
obviousness or non-obviousness of software inventions can be improved.
Another potential topic is how to provide the best prior art resources
for examiners beyond the body of U.S. Patents and U.S. Patent
Publications. Additional topics are welcomed.
Another topic for which the USPTO is requesting oral comment at the
roundtable events is as follows:
Topic 3: Oral Presentations on Preparation of Patent Applications
In the near future, the USPTO will issue a Request for Comments on
Preparation of Patent Applications. The purpose of this forthcoming
Request for Comments is to seek public input on whether certain
practices could or should be used during the preparation of an
application to place the application in the best possible condition for
examination and whether the use of these practices would assist
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the public in determining the scope of the claims as well as the
meaning of the claim terms in the specification. To ensure proper
consideration, written comments to the forthcoming Request for Comments
should only be submitted in response to that notice to
[email protected]. However, registrants may make
oral presentations at the Silicon Valley and New York City roundtable
events on the topics related to the forthcoming Request for Comments to
the extent that the topics pertain to software-related inventions. Note
particularly two questions from the forthcoming Request for Comments,
which are previewed below. Oral comments are requested on the
advantages and disadvantages of applicants employing the following
practices when preparing patent applications as they relate to software
claims.
Expressly identifying clauses within particular claim
limitations for which the inventor intends to invoke 35 U.S.C. 112(f)
and pointing out where in the specification corresponding structures,
materials, or acts are disclosed that are linked to the identified 35
U.S.C. 112(f) claim limitations; and
Using textual and graphical notation systems known in the
art to disclose algorithms in support of computer-implemented claim
limitations, such as C-like pseudo-code or XML-like schemas for textual
notation and Unified Modeling Language (UML) for graphical notation.
Dated: December 27, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-31594 Filed 1-2-13; 12:09 pm]
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