USPTO News Briefs - March 18, 2013

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Extends Comment Period on Notice Regarding Preparation of Patent Applications

USPTO SealIn January, the U.S. Patent and Trademark Office published a notice in the Federal Register (78 Fed. Reg. 2960) 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.  The notice set forth a list of nine "potential practice changes that applicants can employ to augment the quality of issued patents" and sought 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.

On March 15, the Office published a new notice in the Federal Register (78 Fed. Reg. 16474) extending the comment period by one month from March 15, 2013 (when many application drafters were likely preoccupied with a more significant deadline) to April 15, 2013.  Comments can be sent by e-mail to, or by regular 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.

In the Office's initial notice, the potential practice changes were 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 included:

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 included:

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.

USPTO Implements PCT-PPH with IPOPHL

On March 5, the U.S. Patent and Trademark Office announced that it was establishing a patent prosecution highway (PPH) pilot program based on Patent Cooperation Treaty (PCT) work products (PCT-PPH) with the Intellectual Property Office of the Philippines (IPOPHL).  Under the new pilot program, which went into effect on January 29, an applicant receiving a written opinion or international preliminary examination report in a PCT application that indicates at least one claim in the PCT application has novelty, inventive step, and industrial applicability, where the USPTO was the International Searching Authority or the International Preliminary Examining Authority, may request that the IPOPHL fast track the examination of corresponding claims in an application filed with the IPOPHL.  The USPTO- IPOPHL PCT-PPH pilot program is scheduled to expire on January 28, 2014, but may be extended if necessary to adequately assess the feasibility of the program.

USPTO Upgrades to PPH 2.0 with IPOPHL

On the same day that the U.S. Patent and Trademark Office announced the implementation of a PCT-PPH with the IPOPHL, the USPTO announced that it was upgrading its PPH with the IPOPHL to a PPH 2.0 program, with the upgrade commencing on January 29.  The PPH 2.0 program with IPOPHL supersedes the prior PPH program with that office.  The upgrade with the IPOPHL brings the number of PPH 2.0 participating offices to twelve, including the USPTO, Canadian Intellectual Property Office (CIPO), European Patent Office (EPO), Japan Patent Office (JPO), IP Australia (IPAU), Korean Intellectual Property Office (KIPO), National Board of Patents and Registration of Finland (NBPR), Portugal National Institute of Industrial Property (INPI-PT), Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent), Spanish Patent and Trademark Office (SPTO), and United Kingdom Intellectual Property Office (UKIPO).

In order to participate in any of the PPH 2.0 programs in the USPTO, applicants must satisfy the following requirements:

1.  One of the other PPH 2.0 participating offices has determined that at least one claim is allowable/patentable (under the PPH 2.0 program, applicants no longer need to submit a copy of the allowed claim or any English translation thereof).

2.  The application before the PPH 2.0 participating office (i.e., containing the allowable/patentable claim) and the U.S. application for which participation in the PPH 2.0 program is being requested must have the same priority/filing date (the Annex to the USPTO's notice on the PPH 2.0 program provides fifteen schematics outlining situations in which this requirement would be satisfied).

3.  All claims on file, as originally filed, or as amended in the U.S. application must sufficiently correspond to one or more of the claims indicated as allowable in the application filed in the PPH 2.0 participating office (the USPTO notice states that "[a] claim is considered to 'sufficiently correspond' where, accounting for differences due to translations and claim format, the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office").  Under the PPH 2.0 program, applicants must submit a claims correspondence table (in English), indicating how all the claims in the U.S. application correspond to the allowable/patentable claims in the application filed in the PPH 2.0 participating office.

4.  Examination of the U.S. application for which participation in the PPH 2.0 program is being requested has not yet begun.

5.  The applicant has filed a request to participate in the PPH 2.0 program.

6.  The applicant must submit a copy of the office action issued just prior to the "Decision to Grant a Patent" (along with an English translation, which may be a machine translation) for the application before the PPH 2.0 participating office (under the PPH 2.0 program, applicants no longer need to submit a statement that the English translation is accurate).

7.  The applicant must submit an information disclosure statement listing all documents cited in the office action of the PPH 2.0 participating office.

8.  All of the documents described above must be filed via the EFS-Web and indexed using the document description:  "Petition to make special under Patent Pros Hwy."

Additional information regarding the PPH 2.0 program with the IPOPHL can be found here.

USPTO Continues PPH with SIPO

SIPOEarlier this month, the U.S. Patent and Trademark Office announced the continuation of the PPH pilot program with the State Intellectual Property Office of the People's Republic of China (SIPO).  As with other PPH programs, the USPTO-SIPO PPH permits an applicant having an application whose claims have been allowed in one of the offices to fast track the examination of an application in the other office, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from either the USPTO or SIPO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in the corresponding application in that office.  The USPTO-SIPO PPH pilot program is now scheduled to expire on November 30, 2013, but may be extended thereafter.


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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