CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent

Patent Office Calls For Clearer Patents

USPTO
Aims to enhance quality
Make patents clearer

Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office, announced on her blog the critical importance of the USPTO issuing patents that are both correct and clear.
She said that the Patent Office’s traditional focus has been on correctness, but that it is now increasing its focus on clarity.
According to Lee, “Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights.”

The USPTO sought input from the public on the issue of patent clarity, and received over 1,200 responses.
The highlights of the Office’s Enhanced Patent Quality Initiative include:

Clarity of the Record Pilot: “Examiners will include as part of the prosecution record important claim constructions and more detailed reasons for the allowance and rejection of claims.”

Clarity of the Record Training: The Patent Office will add training for patent examiners on “the benefits and importance of making the record clear and how to achieve greater clarity.” Recently, examiners received training on “functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard.”

Transforming the Review Data Capture Process: The Office will ensure that reviews of an examiner’s work product follow the same processes. All reviewers at various levels will now use the same online “Master review form,” which will be shared with the public at some point.

Lee expects the amount of data that the Patent Office collects to increase from three to five times, and says that this will allow the Office to use “big data analytic techniques to identify more detailed trends.” Updates on the program can be found on the Enhanced Patent Quality Initiative page.
Takeaway
The “clarity” initiative may lead to more patent applications being initially rejected for lack of clarity.

Related Articles

Just Because It’s on the Internet Doesn’t Mean It’s “Publicly Accessible”

The Patent Trial and Appeal Board (PTAB or Board) has denied institution of a petition for inter partes review (IPR) because the petitioner failed to ...
Read More

Trademark Denied for “ChatGPT”

The US Patent and Trademark Office (USPTO) has denied OpenAI’s applications to trademark “ChatGPT” and “GPT.” The Final Office Action states, “Registration is refused because the applied-for mark ...
Read More

Federal Circuit: “Improving User Experience” Isn’t Patentable

The Federal Circuit has affirmed a lower court decision that patent claims for methods and systems for improving how search results are displayed to users ...
Read More

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

SERVICES

PROTECT

DEAL

DEFEND