Patent quality is certainly a hot topic for 2013. The U.S. Patent and Trademark Office (USPTO) recently announced a series of roundtable discussions intended to foster a partnership with the software community to enhance the quality of software-related patents. Most recently, the USPTO put out the call for feedback on how to improve overall patent quality.
As detailed in a recent Federal Notice, the USPTO is specifically interested in 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. The issues for comment are broken down into two distinct areas—clarifying the scope of the claims and clarifying the meaning of a claim term in the specification.
Specifically, the USPTO is seeking public comment on advantages and disadvantages of applicants employing the following practices when preparing their patent applications:
- 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, transitional phrase, and each particular claim limitation.
- 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.
- Indicating whether examples in the specification are intended to be limiting or merely illustrative.
- Identifying whether the claim preamble is intended to be a limitation on claim scope.
- 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
- Indicating whether terms of degree–such as substantially, approximately, about, essentially–have a lay or technical meaning and explaining the scope of such terms.
- 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.
- 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.
Finally, the USPTO also plans to issue a separate notice directed towards identifying potential practices that it can employ to achieve the same goals. We will be sure to discus the notice once it is published, so please check back here for updates.