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April 18, 2014

PTO Issues Notice on Improvement in Patent Application Quality – A Very Modest Proposal

On January 15, 2013, the USPTO released a notice – see link below – requesting comments on its suggestions of ways to “improve the quality of issued patents” by improving the quality of application drafting. There are two brief sections in the Notice: “Clarifying the Scope of Claims” and “Clarifying the Meaning of Claim Terms in the Specification.” Since this is a biotech blawg, I will skip the sections relating to software and means-plus-function clauses.

The suggestions in Part A boil down to: (1) Write claims in outline form with elements in lettered or Roman numeral-designated subsections, (2) Minimize or eliminate preambles (the Office wants us to indicate if we think they are limiting, so let’s stop using them), (3) Specifically identify support for claim elements in the specification (No – should only be “necessary”– if at all — when claims are amended – original claims are part of the specification), (4) Indicate whether or not examples are intended to be limiting or “merely illustrative” (Easy one - they are always illustrative).

Part B is even shorter. Citing Phillips v. AWH, the Office asks drafters to explain the scope and meaning of terms of degree like “about”, “substantially” etc. (Always an issue, and not so easy. It should be sufficient to state that the terms include variations that would be considered inherent in the practice of the art in question. That should permit the use of expert declarations as to the state of the art to be submitted later, if need be). The Office also requests inclusion of a glossary of potentially ambiguous or specialized terms used in the application. In biotech, we have been doing this for years, but the glossaries have gotten shorter, since most Examiners know what a promoter or transfection is.

The Office further would like applications to “[designate] a default dictionary or dictionaries “to be used in ascertaining the meaning of claim terms.” Not really a bad idea – years ago, I continually referred Examiners to the 1969 edition of The McGraw Hill Dictionary of Scientific and Technical Terms, which seems to define the known universe. More recently I have also had some success referring to Dorland’s Medicial Dictionary, and there are many others—but I did not feel that I had to cite them in the specification.  I have a relied on definitions in technical articles cited in the body of the specification and, if you tend to cite a lot of art in the specification, these can be the most relevant sources of information relating to elements of your specific invention. These suggestions seem to arise, at least in part, from the faction of the Fed. Cir. that has taken the position that, if a term can be defined using any source material, it is not indefinite. So at least you should probably avail yourself of the opportunity to pick your own poison.

USPTO Notice

© 2014 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

About the Author

Shareholder

Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman, Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters.

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