USPTO Seeks Public Input on Application Drafting Practices


USPTO SealThe U.S. Patent and Trademark Office published a notice in the Federal Register (78 Fed. Reg. 2960) earlier today requesting public comment regarding potential practices that applicants can employ in the drafting of patent applications to facilitate examination and bring more certainty to the scope of issued patents.  Although the instant notice is directed to potential practices that applicants can employ, the notice indicates that the Office intends to issue a separate notice identifying potential practices that the Office can employ to also facilitate examination and bring more certainty to the scope of issued patents.

Today's notice sets forth a list of nine "potential practice changes that applicants can employ to augment the quality of issued patents" and seeks input as to whether any of the practices should be used by applicants during the preparation of an application to place the application in a better condition for examination.  The list of practices is divided into two groups, one group related to clarifying the scope of the claims and one group related to clarifying the meaning of claim terms in the specification.  The first group of potential practices includes:

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 (e.g., preamble, transitional phrase, and individual claim limitations).

2.  Identifying corresponding support in the specification for each of the claim limitations (e.g., using a claim chart).

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) (which pertains to means-plus-function limitations for applications filed on or after September 16, 2012) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified § 112(f) claim limitations.

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.

The second group of practices includes:

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.

3.  Designating, at the time of filing the application, a default dictionary or dictionaries to be used in ascertaining the meaning of the claim terms.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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