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Director's Forum: A Blog from USPTO's Leadership

Thursday Jul 03, 2014

Continued Progress Toward Implementing Patent Quality Executive Actions

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

Last June, the White House issued a number of executive actions aimed, in part, at ensuring the highest quality patents possible. One of the executive actions addresses the possibility of overly broad patent claims, particularly in the context of software, and called for the USPTO to provide new targeted training to its examiners on scrutiny of functional claims.

I am pleased to report that we are delivering targeted training to the examining corps on this topic. We will have more to report at our next Software Partnership meeting, but I wanted to take the opportunity to provide you with some information now.

Over the last year, we’ve rolled out four training modules focused on examining functional claim limitations that fall under 35 U.S.C. § 112(f)—so-called “means-plus-function” claim limitations. The four training modules cover the basics of interpreting functional limitations under § 112(f), including identifying when § 112(f) is or is not invoked, establishing the broadest reasonable interpretation of the limitation, and determining whether a § 112(f) limitation, especially a software-related limitation, has definite boundaries. Additionally, and most importantly, the training provides tools for examiners to clarify the prosecution record and thereby positively affect the clarity of the claims. These tools include establishing on the record whether the claim limitation is being interpreted under § 112(f), explaining the claim interpretation, and providing written remarks to help define the boundaries of the claim, when appropriate.

Such additional clarification by the examiner will create a more robust record and provide an opportunity for the applicant to provide clarifying remarks as well. We believe that spelling out how the claim language has been interpreted during prosecution will assist the public and the courts in understanding the boundaries of the issued claims.

We will soon be issuing more refresher training, for example on the fundamentals of claim interpretation, particularly with respect to functional claim limitations that do not invoke § 112(f). A list of the previous and planned upcoming training modules can be found at our Executive Actions webpage.

To ensure that training principles are applied by examiners, the Office of Patent Quality Assurance refined the metrics used to evaluate Office Actions. We will be evaluating the frequency at which the examiners are clarifying the record and the accuracy of the interpretation of § 112(f) claim limitations.

If you’d like to learn more or have questions or comments, I encourage you to attend our next Software Partnership meeting Tuesday, July 22, 2014, from 1-4:30 p.m. at our Alexandria campus. You may also attend online via WebEx.

Whether you are a patent applicant or litigant or a representative of either, we welcome your input on any of the above. All of the training materials are posted on our Examiner Guidance and Training Materials webpage, which can also be accessed from the USPTO.gov home page using the “Patent Examiner Guidance” button. We have also created a designated email box for comments at TrainingComments112f@uspto.gov.

We at the USPTO remain committed to issuing the highest quality patents possible. This training is but one part of a much broader initiative to enhance quality, and to do so in concert with the public. I look forward to your continued input.

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