[Federal Register Volume 78, Number 10 (Tuesday, January 15, 2013)]
[Notices]
[Pages 2960-2961]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-00690]
[[Page 2960]]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2011-0046]
Request for Comments on Preparation of Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
seeking to improve the quality of issued patents. In this notice, the
USPTO is focusing on potential practices that applicants can employ at
the drafting stage of a patent application in order to facilitate
examination and bring more certainty to the scope of issued patents. To
that end, the USPTO is requesting input from interested members of the
public on the specific practices set forth in the ``Topics for Public
Comment'' section below. While this notice is directed to potential
practices that applicants can employ, the USPTO also plans to issue a
separate notice building on internal initiatives and further
identifying potential practices the Office can employ to also
facilitate examination and bring more certainty to the scope of issued
patents. The USPTO intends to publish the separate notice subsequent to
its review of comments received responsive to the present notice.
On January 3, 2013, the USPTO published a notice announcing the
formation of a partnership with the software community to enhance the
quality of software-related patents (Software Partnership). See Request
for Comments and Notice of Roundtable Events for Partnership for
Enhancement of Quality of Software-Related Patents, 78 FR 292 (Jan. 3,
2013). The Software Partnership notice seeks public comment on specific
topics related to enhancing the quality of software-related patents,
and announces two roundtable events, which will not only offer
participants an opportunity to provide oral comments on the topics
presented in the Software Partnership notice but also on the topics set
forth in the present notice, to the extent they apply to software-
related patents.
Comment Deadline: To be assured of consideration, written comments
must be received on or before March 15, 2013. No public hearing will be
held.
ADDRESSES: 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 Nicole D. Haines. Although comments may be
submitted by mail, the USPTO prefers to receive comments via electronic
mail.
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 (address: 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.
Further Information: For further information about this request,
contact Nicole D. Haines, Legal Advisor, at (571) 272-7717; Kathleen
Kahler Fonda, Senior Legal Advisor, at (571) 272-7754; or Matthew J.
Sked, Legal Advisor, at (571) 272-7627, of the Office of Patent Legal
Administration, Office of the Deputy Commissioner for Patent
Examination Policy. General patent practice inquiries may be directed
to the Office of Patent Legal Administration, by telephone at (571)
272-7701, or by electronic mail at [email protected].
SUPPLEMENTARY INFORMATION: The USPTO is committed to enhancing the
quality of issued patents and the efficiency of patent prosecution. To
further this goal, the USPTO has undertaken a number of internal
initiatives over the past several years. For example, the USPTO
routinely provides its examiners with training on topics such as
obviousness under 35 U.S.C. 103 and statutory subject matter under 35
U.S.C. 101 in order to provide clear guidance regarding the impact of
significant new case law on the patent examination process. Patent
examiners also receive training on 35 U.S.C. 112 to address concerns
about the proper interpretation of claim language, the clarity of claim
terms, and the adequacy of the specification to support functional
claim limitations. Additionally, the USPTO has implemented a new
quality measurement system that comprehensively evaluates examination
quality. One component of this system is an external quality survey
that obtains input from applicants and practitioners on the perceived
quality of the patent examination process.
The USPTO has also undertaken initiatives that involve working with
the public to enhance the examination process. For example, examiners
participate in workshops focusing on compact prosecution and holding
effective interviews with applicants. Also, the USPTO works with
experts in industry to provide technical training for patent examiners
and updates on developments and innovations in their field. This
training initiative enhances examiners' insight in their fields,
enabling them to better understand intended claim scope and make better
informed patentability decisions.
I. Purpose of This Notice
This notice is directed to furthering the Office's dialog with the
public about ways to enhance patent quality. Specifically, the topics
set forth in the ``Topics for Public Comment'' section of this notice
are potential practice changes that applicants can employ to augment
the quality of issued patents. The public is invited to comment on
whether these practices should be employed by applicants at the
drafting stage of a patent application in order to facilitate
examination and bring more certainty to the scope of issued patents.
II. Topics for Public Comment
The USPTO is seeking input on whether the following practices
should be used by applicants during the preparation of an application
to place the application in a better condition for examination. When
patent applications are filed in the best possible condition for
examination, examiners can better focus the examination on substantive
patentability issues. Specifically, the USPTO is seeking input on
whether adoption of the following practices by applicants early in the
process would assist the public in determining the scope of claims as
well as the meaning of claim terms in the specification after a patent
is granted.
A. Clarifying the Scope of the Claims
The boundaries of patent protected subject matter should be clearly
delineated and the scope of each claim made clear on filing of a patent
application to facilitate examination and the publishing and patenting
of claims that best serve the public notice function. In this regard,
the USPTO is seeking public comment on advantages and disadvantages of
applicants employing the following practices when preparing their
patent applications:
1. Presenting claims in a multi-part format by way of a
standardized template that places each claim component in separate,
clearly marked, and designated fields. For instance, a template may
facilitate drafting and review of claims by separately delineating each
claim component into separate fields for the preamble,
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transitional phrase, and each particular claim limitation.
2. Identifying corresponding support in the specification for each
of the claim limitations utilizing, for example, a claim chart or the
standardized template described above. This practice could be
particularly beneficial where claims are amended or where a continuing
application (continuation, divisional, continuation-in-part) is filed.
3. Indicating whether examples in the specification are intended to
be limiting or merely illustrative.
4. Identifying whether the claim preamble is intended to be a
limitation on claim scope.
5. 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.\1\
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\1\ 35 U.S.C. 112(f) replaces 35 U.S.C. 112, ] 6 as the section
of the statute pertaining to means-plus-function limitations for
applications filed on or after September 16, 2012. See Leahy-Smith
America Invents Act, Pub. L. 112-29, Sec. 4(c)(6), 125 Stat. 284,
296 (2011).
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6. 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.
B. Clarifying the Meaning of Claim Terms in the Specification
The best source for determining the meaning of a claim term is the
specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1315-16 (Fed.
Cir. 2005). The specification should clearly define the claim language
so that the scope of each claim can readily be determined, ensuring the
public notice function of the patent claims is best served. In this
regard, the USPTO is seeking public comments on advantages and
disadvantages of applicants employing the following practices when
preparing their patent applications:
1. Indicating whether terms of degree--such as substantially,
approximately, about, essentially--have a lay or technical meaning and
explaining the scope of such terms.
2. Including in the specification a glossary of potentially
ambiguous, distinctive, and specialized terms used in the specification
and/or claims, particularly for inventions related to certain
technologies, such as software.
3. Designating, at the time of filing the application, a default
dictionary or dictionaries (e.g., a technical dictionary and a non-
technical dictionary) to be used in ascertaining the meaning of the
claim terms.
III. Guidelines for Written Comments
As discussed previously, the USPTO prefers to receive comments via
electronic mail. Information provided in response to this request for
comments will be made part of a public record and may be available via
the Internet. In view of this, parties should not submit information
that they do not wish to be publicly disclosed or made electronically
accessible. 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.
Dated: January 10, 2013.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2013-00690 Filed 1-14-13; 8:45 am]
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