In a Federal Register Notice published January, 13, 2013, the USPTO asks the public to consider potential best practices aimed at improving patent application quality ”in order to facilitate examination and bring more certainty to the scope of issued patents.” These practices are separate but related to initiatives being pursued via the USPTO’s partnership with the software community to enhance the quality of software-related patents. The USPTO will consider written comments received by March 15, 2013.

Topics for Public Comment

The USPTO is seeks input on whether the following practices “should” be used by applicants during the application drafting stage, “to place the application in a better condition for examination” and “assist the public in determining the scope of claims” and “the meaning of claim terms.”

Clarifying the Scope of the Claims

  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, … separately delineating each claim component into separate fields for the preamble, 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.
  3. Indicating whether examples in the specification are intended to be limiting or merely illustrative. 
    Would it be automatic malpractice to identify the examples as “limiting”?
  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 the means-plus-function statute and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified means-plus-function 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.

Clarifying the Meaning of Claim Terms in the Specification

  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. 
    If you precisely define the meaning of “about,” wouldn’t that defeat the purpose of using that term?
  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. 
    Because we all know ahead of time which claim terms will be at issue during examination or litigation years down the road.
  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. 
    Don’t most dictionaries offer multiple definitions for most words? Would the patent practitioner or inventor have to read the selected dictionaries cover-to-cover to confirm that all of the definitions are consistent with the intended meaning of every word used in the patent application?

Forcing Square Pegs Into Round Holes?

I understand the importance of clarifying claim scope and the meaning of claim terms, but this proposal seems to lose sight of the fact that hindsight is always 20/20. When I work with an inventor to prepare a patent application, we usually know what we mean by the words that we are choosing, and we usually do not deliberately choose words that are ambiguous. It is only years later, when an Examiner applies a “broadest reasonable interpretation” that we had not even contemplated, that we see how our words could be interpreted differently. These issues only get more complex in litigation, where both parties may be urging extreme claim construction positions to clearly establish infringement or non-infringement.

If a President can argue about what “is” means, how can an inventor ensure that every word used in his patent claims clearly distinguishes the invention from unforeseen prior art and clearly encompasses future infringing embodiments?

Written Comments

As noted above, written comments are due by March 15, 2013–in case you don’t have anything else to do on the eve of the first-inventor-to-file changes!

Speaking of which, the final First-Inventor-To-File Rules were published today, along with the final First-Inventor-To-File Examination Guidelines—I will have more on those next week.