[Federal Register Volume 78, Number 10 (Tuesday, January 15, 2013)]
[Pages 2960-2961]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-00690]

[[Page 2960]]



United States Patent and Trademark Office

[Docket No.: PTO-P-2011-0046]

Request for Comments on Preparation of Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.


SUMMARY: The United States Patent and Trademark Office (USPTO) is 
seeking to improve the quality of issued patents. In this notice, the 
USPTO is focusing on 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. To 
that end, the USPTO is requesting input from interested members of the 
public on the specific practices set forth in the ``Topics for Public 
Comment'' section below. While this notice is directed to potential 
practices that applicants can employ, the USPTO also plans to issue a 
separate notice building on internal initiatives and further 
identifying potential practices the Office can employ to also 
facilitate examination and bring more certainty to the scope of issued 
patents. The USPTO intends to publish the separate notice subsequent to 
its review of comments received responsive to the present notice.
    On January 3, 2013, the USPTO published a notice announcing the 
formation of a partnership with the software community to enhance the 
quality of software-related patents (Software Partnership). See Request 
for Comments and Notice of Roundtable Events for Partnership for 
Enhancement of Quality of Software-Related Patents, 78 FR 292 (Jan. 3, 
2013). The Software Partnership notice seeks public comment on specific 
topics related to enhancing the quality of software-related patents, 
and announces two roundtable events, which will not only offer 
participants an opportunity to provide oral comments on the topics 
presented in the Software Partnership notice but also on the topics set 
forth in the present notice, to the extent they apply to software-
related patents.
    Comment Deadline: To be assured of consideration, written comments 
must be received on or before March 15, 2013. No public hearing will be 

ADDRESSES: Written comments should be sent by electronic mail addressed 
to [email protected]. Comments may also be 
submitted by 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. Although comments may be 
submitted by mail, the USPTO prefers to receive comments via electronic 
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
USPTO Internet Web site (address: http://www.uspto.gov). Because 
comments will be available for public inspection, information that is 
not desired to be made public, such as an address or phone number, 
should not be included in the comments.
    Further Information: For further information about this request, 
contact Nicole D. Haines, Legal Advisor, at (571) 272-7717; Kathleen 
Kahler Fonda, Senior Legal Advisor, at (571) 272-7754; or Matthew J. 
Sked, Legal Advisor, at (571) 272-7627, of the Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy. General patent practice inquiries may be directed 
to the Office of Patent Legal Administration, by telephone at (571) 
272-7701, or by electronic mail at [email protected].

SUPPLEMENTARY INFORMATION: The USPTO is committed to enhancing the 
quality of issued patents and the efficiency of patent prosecution. To 
further this goal, the USPTO has undertaken a number of internal 
initiatives over the past several years. For example, the USPTO 
routinely provides its examiners with training on topics such as 
obviousness under 35 U.S.C. 103 and statutory subject matter under 35 
U.S.C. 101 in order to provide clear guidance regarding the impact of 
significant new case law on the patent examination process. Patent 
examiners also receive training on 35 U.S.C. 112 to address concerns 
about the proper interpretation of claim language, the clarity of claim 
terms, and the adequacy of the specification to support functional 
claim limitations. Additionally, the USPTO has implemented a new 
quality measurement system that comprehensively evaluates examination 
quality. One component of this system is an external quality survey 
that obtains input from applicants and practitioners on the perceived 
quality of the patent examination process.
    The USPTO has also undertaken initiatives that involve working with 
the public to enhance the examination process. For example, examiners 
participate in workshops focusing on compact prosecution and holding 
effective interviews with applicants. Also, the USPTO works with 
experts in industry to provide technical training for patent examiners 
and updates on developments and innovations in their field. This 
training initiative enhances examiners' insight in their fields, 
enabling them to better understand intended claim scope and make better 
informed patentability decisions.

I. Purpose of This Notice

    This notice is directed to furthering the Office's dialog with the 
public about ways to enhance patent quality. Specifically, the topics 
set forth in the ``Topics for Public Comment'' section of this notice 
are potential practice changes that applicants can employ to augment 
the quality of issued patents. The public is invited to comment on 
whether these practices should be employed by applicants at the 
drafting stage of a patent application in order to facilitate 
examination and bring more certainty to the scope of issued patents.

II. Topics for Public Comment

    The USPTO is seeking input on whether the following practices 
should be used by applicants during the preparation of an application 
to place the application in a better condition for examination. When 
patent applications are filed in the best possible condition for 
examination, examiners can better focus the examination on substantive 
patentability issues. Specifically, the USPTO is seeking input on 
whether adoption of the following practices by applicants early in the 
process would assist the public in determining the scope of claims as 
well as the meaning of claim terms in the specification after a patent 
is granted.

A. Clarifying the Scope of the Claims

    The boundaries of patent protected subject matter should be clearly 
delineated and the scope of each claim made clear on filing of a patent 
application to facilitate examination and the publishing and patenting 
of claims that best serve the public notice function. In this regard, 
the USPTO is seeking public comment on advantages and disadvantages of 
applicants employing the following practices when preparing their 
patent applications:
    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, a template may 
facilitate drafting and review of claims by separately delineating each 
claim component into separate fields for the preamble,

[[Page 2961]]

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. This practice could be 
particularly beneficial where claims are amended or where a continuing 
application (continuation, divisional, continuation-in-part) is filed.
    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) 
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.\1\

    \1\ 35 U.S.C. 112(f) replaces 35 U.S.C. 112, ] 6 as the section 
of the statute pertaining to means-plus-function limitations for 
applications filed on or after September 16, 2012. See Leahy-Smith 
America Invents Act, Pub. L. 112-29, Sec.  4(c)(6), 125 Stat. 284, 
296 (2011).

    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.

B. Clarifying the Meaning of Claim Terms in the Specification

    The best source for determining the meaning of a claim term is the 
specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1315-16 (Fed. 
Cir. 2005). The specification should clearly define the claim language 
so that the scope of each claim can readily be determined, ensuring the 
public notice function of the patent claims is best served. In this 
regard, the USPTO is seeking public comments on advantages and 
disadvantages of applicants employing the following practices when 
preparing their patent applications:
    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, particularly for inventions related to certain 
technologies, such as software.
    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.

III. Guidelines for Written Comments

    As discussed previously, the USPTO prefers to receive comments via 
electronic mail. Information provided in response to this request for 
comments will be made part of a public record and may be available via 
the Internet. In view of this, parties should not submit information 
that they do not wish to be publicly disclosed or made electronically 
accessible. Parties who would like to rely on confidential information 
to illustrate a point are requested to summarize or otherwise submit 
the information in a way that will permit its public disclosure.

    Dated: January 10, 2013.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2013-00690 Filed 1-14-13; 8:45 am]