USPTO Has Trained Its Examiners in a “Plain Meaning of Terms” Initiative

The USPTO has updated the training it gives its patent examiners this spring to clarify the terms used in the prosecution of a patent. The guidelines explain that “the PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean.” The goal of the new initiative is to provide “a clear file history [to] prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings.”

Under MPEP § 2111, “During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” ” Because the applicant can amend the claims during prosecution, giving a claim its broadest reasonable interpretation reduces the possibility that the courts, the patentee, or others may interpret it more broadly than is justified. However, “[t]he broadest reasonable interpretation of the claims must … be consistent with the interpretation that those skilled in the art would reach.”

Against that backdrop, we have MPEP 2111.01, which tells us that “Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification.” Thus, the plain meaning of any term may be redefined by the patentee within the four corners of the patent application, and the examiner must interpret the term as that term is interpreted by the patentee.

Including a glossary in your application is good practice that patent applicants often fail to do. By including a glossary in your application as part of the specification, you become your own lexicographer and define terms, even terms whose plain meaning is otherwise clear, in the way in which you want those terms to be interpreted by the USPTO and by the courts.

A “broadest reasonable interpretation” may be limited under 35 USC 112(f), which states, “Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The plain-meaning vs. means-plus-function claim interpretation is only one of the reasons why you don’t want to write a patent application yourself.

AIA Changes Who Is Entitled to the Title of “Applicant” in US National Applications Under the PCT

On September 16, 2012, the America Invents Act is slated to change who is entitled to the title of “applicant” in U.S. national patent applications, removing the requirement that inventors be named as applicants solely for the purposes of US designation. This impacts applicants who have filed under the Patent Cooperation Treaty (PCT) and brings the US patent system further into alignment with those of the rest of the PCT signatory nations.

Congrats to New USPTO Law School Pilot Program Participants

Congratulations to the new USPTO Law School Pilot Program participants! The newly selected schools are:

  • Arizona State University School of Law (Patents and Trademarks)
  • California Western School of Law (Trademarks)
  • Case Western Reserve University School of Law (Patents)
  • Fordham School of Law (Patents and Trademarks)
  • Michigan State University School of Law (Trademarks)
  • North Carolina Central University School of Law (Patents)
  • University of Notre Dame (Patents and Trademarks)
  • University of San Francisco School of Law (Trademarks)
  • South Texas College of Law (Trademarks)
  • Thomas Jefferson School of Law (Patents and Trademarks)
  • Wayne State University School of Law (Patents), and
  • University of Washington School of Law (Patents and Trademarks).

These schools join the law schools that are current members of the program. These existing schools are:

  • American University, Washington College of Law (Trademarks)
  • Howard University School of Law (Trademarks)
  • North Carolina Central University School of Law (Trademarks)
  • Rutgers Law School – Newark (Trademarks)
  • The George Washington University School of Law (Trademarks)
  • The John Marshall School of Law (Patents)
  • University of Akron School of Law (Trademarks)
  • University of Connecticut School of Law (Patents and Trademarks)
  • University of Maine School of Law (Patents and Trademarks)
  • University of Maryland School of Law (Patents and Trademarks)
  • University of New Hampshire School of Law (Trademarks)
  • University of Puerto Rico School of Law (Patents and Trademarks)
  • University of Richmond – Richmond School of Law (Trademarks)
  • Vanderbilt Law School (Trademarks)
  • West Virginia University School of Law (Trademarks), and
  • William Mitchell College of Law (Patents and Trademarks).

The law school pilot program promotes affordable intellectual property (IP) legal services to individuals and small businesses. Law schools participating in the program provide IP legal services to clients on a pro bono basis.

The USPTO accepts law schools into the program that demonstrate strong clinic programs. Overall the schools must possess solid IP curricula supporting a participating student’s hands-on learning in the program; a commitment to networking in the community; comprehensive pro bono services; and excellent case management systems. Students in the IP programs can expect to draft and file patent and trademark applications and respond to Office Actions. Each law school clinic program must meet and maintain the requirements for USPTO certification in order for student practitioners to practice before the USPTO.

Millions of Patents

Factoid: The USPTO has issued millions of patents. Number 8,000,000 will issue in 2011.

The USA is a very, very inventive country. At 8,000,000 patents in just under 200 years, we’ve come a long way since the verdict was issued that “everything that can be invented has already been invented.” We’ll keep on inventing … and inventing … and inventing. That’s how progress is made.

China to issue the most patents in 2011

Now isn’t this interesting. China, whose ancient and noble culture does not include much respect for intellectual property, believes that it will be the leader in the world for issuing patents in 2011, outgunning the USPTO, the European Patent Office, and Japan. They say that both number and quality of patents have increased steadily to the point where the Chinese Patent Office will issue the greatest number of patents in 2011.

I never knew it was a race. Patents are good within the geographic boundaries of the sovereign nation that issues the patent during the term of the patent. Therefore, patent offices don’t compete with each other the same way that, say, a car dealership competes with the dealership down the road. You can — and often should — obtain patent protection in more than one country. China cannot grant patent protection in the United States or in Japan or in the European Union or in any other country; the patents issuing in China may well also issue in other countries. Other patent offices might consider hunkering down and getting ready for a blitz of applications based on the number of Chinese patents whose owners may seek foreign protection.

I am delighted, however, to see that China’s Patent Office is so very busy. That says to me that Chinese law recognizes the intellectual property rights of others; the culture, then, should follow suit, though perhaps the culture will move more slowly than does the law in this instance. The fact that they are signatory to the Patent Cooperation Treaty (they entered the treaty on 1 January 1994) says that the laws governing this culture are changing, which will eventually change the culture’s respect for intellectual property.

So, bravo for China!