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Proposed PTO Case Studies Show Common Concerns

Case Study words stamped in red ink on a manila file folder to illustrate a good example or best practice to explore, read or study

The USPTO recently requested proposals for case studies that the Office might do in order to improve patent prosecution. There were over 100 proposals submitted from associations, companies, law firms, and individuals. There are definitely some proposals that the USPTO should use.

I’m hoping that at the USPTO’s Patent Quality Community Symposium on Wednesday, some or all of these ideas will be mentioned.

Does “Means” Mean What You Think It Means?

A few commenters proposed studying “means-plus-function” claims. You may remember a few years ago, the Obama Administration announced steps it was taking against patent trolls. One of those was tightening functional claiming. Functional claiming is claiming an invention (or part of an invention) by describing the function it performs, like a “module for communicating” or a “storage component.” The problem with functional claiming is that such claims cover every possible way of implementing the function, not just what the inventor did. This is a huge problem in software patents, because sometimes the most straightforward way to write a claim is to describe the function of part of the invention.

Means-plus-function claims are the proper way to deal with this issue. Basically, the inventor is allowed to use functional language, but only gets the actual implementation described in the specification. The Federal Circuit blew a huge hole in this system by saying that the only way a claim got means-plus-function treatment was by using the word “means” in the claim. And so clever patent lawyers drafted claims that just used a different word.

In recent years, the law has changed, and the Obama Administration wanted to crack down on this overclaiming. There are several proposals asking the USPTO to determine if the new guidelines are being followed.

I Don’t Remember Saying That

EFF and Intel both proposed that the USPTO review interview practice. Patent applicants and their attorneys often meet with examiners to discuss their applications, and these interviews are on the record. But the only written record that’s kept is an interview summary written by the examiner and a response written by the applicant.

The proposals ask the USPTO to study whether interview summaries are accurate. This makes a lot of sense, because too often, interview summaries say nothing other than, “Examiner and Applicant’s representative discussed prior art,” or something equally vague. The applicant may have made critical admissions or concessions that should be part of the public record.

Let’s Be Clear

There were also a number of proposals dealing with claim clarity. IBM, Intel, and Cisco all asked the USPTO to look at rejections under 35 U.S.C. § 112. Generally, Section 112 is intended to insure that the public can understand the scope of patent claims. Of course, “understandable” isn’t a word we often use to describe patents, which is why it’s important to make sure that patent examiners are making clarity rejections.

There have been anecdotal reports that in some work groups, they’re discouraged from making rejections under Section 112. These case studies could identify any problematic work groups with a lower than expected number of 112 rejections. Given the Office’s commendable focus on clarity in the last couple of years, these seem to fit right in with current efforts to improve patent quality.

Last But Not Least

Colleen Chien and Brian Love had a couple of really interesting suggestions. One was to compare U.S. examination practices with the European Patent Office (EPO), which is generally thought to produce the best quality patents in the world. This is not about the quality of the technology being patented — but the reality is that patents coming out of the EPO are generally better quality than patents coming out of the USPTO. The question is are they doing things that we might be able to adopt here to improve our own system?

Chien and Love also suggested looking at certain types of publications to see if examiners are able to find the prior art that they need. Specifically, they focused on what are called non-patent literature (e.g., articles, web pages, books) and foreign prior art (which is often in a language other than English). The question here is whether examiners cite Non-Patent Literature (NPL) and “Formal” Patent Applications (FPA) consistently across technology areas: do examiners need more support in searching outside the USPTO’s patent database?

Lastly, EFF also suggested a study of whether patent owners are reporting all litigations involving their patents, as required. EFF suggests that some patent owners may not be reporting litigations fully; the result could be that an examiner doesn’t learn that a court invalidated a patent, and ends up allowing a ”continuation” of that patent.

 

All of these are great proposals, and each of them has the potential to either identify weak spots at the USPTO or confirm that examiners are following Office guidelines. Let’s hope the Office is giving these proposals serious consideration.

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