By Donald Zuhn —
USPTO Extends Comment
Period on Notice Regarding Preparation of Patent Applications
In 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 QualityApplications_Comments@uspto.gov, 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
Earlier 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.
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