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February 09, 2011

CONTACT: (Media Only)
Peter Pappas or Jennifer Rankin Byrne
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Press Release, 11-11

USPTO Issues Examination Guidelines to Better Define the Scope of Patent Protection and Thereby Improve Patent Quality

Guidelines will help ensure specificity and clarity in compliance with 35 U.S.C. § 112

WASHINGTON – The United States Patent and Trademark Office (USPTO) has issued supplementary guidelines for examiners that are designed to improve patent quality by ensuring that the scope of patent rights is clear to the public and commensurate with applicant’s disclosure. The public will be invited to comment on the new guidelines, which were published in the Federal Register today.

These new guidelines, which address section 112 of the Patent Act, will promote patent quality by requiring that applications distinctly claim the invention so that the public is clearly informed of the patent rights granted.  This, in turn, will create more certainty in the marketplace by ensuring a foundation of the patent system—that the scope of patent rights granted are clear and supported by the invention disclosed to the public—is properly maintained.

“Patent quality is essential to the proper functioning of the patent system and the intellectual property community has long wanted the USPTO to provide additional guidance to examiners and applicants to ensure better compliance with Section 112,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Optimizing patent quality by providing clear notice to the public of the boundaries of the inventive subject matter protected by a patent grant fosters innovation and competitiveness. These guidelines will help ensure that the public receives meaningful disclosure commensurate with the patent rights being issued.”

The new guidelines are intended to assist applicants in drafting claims and examiners in evaluating claims in patent applications for compliance with 35 U.S.C. § 112, second paragraph. The guidelines and supplemental information are based on the USPTO’s current understanding of the law and are believed to be fully consistent with the binding precedent of the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and its predecessor courts. The guidelines are a supplement to the current provisions in the Manual of Patent Examining Procedure (MPEP) pertaining to 35 U.S.C. § 112, and the current provisions in the MPEP pertaining to 35 U.S.C. § 112 remain in effect except as where indicated in these guidelines.

The public will have 60 days to comment on the supplementary guidelines which can be accessed at http://edocket.access.gpo.gov/2011/pdf/2011-2841.pdf.

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