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.

USPTO Assignment Database How-To Webinar Announcement

From the US Patent & Trademark Office (“USPTO”):

“The USPTO is pleased to announce a webinar on Thursday, January 22, 2015 from noon to 1 pm Eastern Time about how to locate ownership information for U.S. patents and patent applications in the USPTO’s newly revamped Assignment Database. The webinar is free and will include ample time for Q&As.

The USPTO Assignment Database houses ownership information for U.S. patents and patent applications voluntarily submitted by owners over the past 35 years. The USPTO recently changed the user interface for this database to make it easier to use as well as to include enhanced search functionalities. At the webinar, the USPTO will showcase how to harness these new search functionalities to locate ownership information by working through a number of example fact patterns.

Attend the webinar to learn how the Assignment Database can help you tackle the often difficult ownership search using an improved USPTO tool!

WEBINAR ACCESS INFORMATION:

Video
Event number: 647 626 273
Event password: 12345

USPTO and Politically Correct Speech

The US Patent & Trademark Office issued a ruling that the name of the Washington, DC NFL football team is derogatory and offensive toward Native Americans. They cancelled the trademark.

The Washington team has had its name since 1933. They started out in Boston as the Boston Braves in 1932, becoming the Boston Redskins when they moved to Fenway Park in 1933. Boston, in colonial times, had a friendly relationship with the surrounding Native American nation; the Native Americans and their new neighbors coexisted peacefully (for the most part) and helped each other out. The team’s founder respected that history when he named his team after the proud Native American.

The football team moved to DC in 1937 and was, from that day til this, known as the Washington Redskins. Their logo is a very handsome Native American brave, who signifies very well a tough and successful football team.

Evidently the USPTO is falling for the current trend toward politically correct speech, something a government agency has no business doing. This mark is almost 100 years old. It is a famous mark. And it will now cost the Redskins franchise $millions to rebrand. That, of course, will be reflected in an increase in ticket prices, which deleteriously affects the public. This is all for something I have trouble comprehending. I would think that naming a successful football franchise after the proud people who originally found this continent and helped their neighbors through tough times would be something that honors the Native American, not something that denigrates them.

A line needs to be drawn somewhere on all this political correctness; canceling an old and famous mark that honors the Native American by naming an NFL franchise after them goes, in my book, more than a little overboard.

All this politically correct speech has me flummoxed. I give up. I shall continue to simply call a spade a spade; if you find that to be offensive or politically incorrect, you’re welcome to call me whatever politically incorrect term for a white Anglo-Saxon Protestant you can come up with — the two I know of are a WASP and a honkey (a term that I find hilarious because it is actually accurate). I won’t get mad over noises.

America Invents Act Takes Hold

At 12:01 am on 16 September 2012, seven new provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules are intended to streamline the patent application process and introduce new procedures to ensure patent quality, spur innovation and grow the economy.

The rules that went into effect include:

  • The Oath and/or Declaration finally allows an assignee, rather than an inventor, to file a patent application;
  • Inter partes review, post-grant review, and the transitional program for covered business method patents give third parties timely and cost-effective alternatives to federal litigation to challenge the patentability of an issued patent;
  •  Applicants can now submit additional information relevant to the patentability of an issued patent to the Office; this new procedure may protect the patent from an inequitable conduct charge;
  •  The citation of prior art and written statements provision now enable the Office to treat the patent claims consistently with the patent owner’s representation of its claims to the courts or in other Office proceedings.

These steps are just the beginning: look for the first-to-file requirement to go into effect in 2013; that will be huge.

The USPTO Finally Takes Steps Toward the 21st Century

The US Patent & Trademark Office (“USPTO”) announces that it is in the process of modernizing electronic patent application filing to allow applicants to submit electronic patent applications in a text format. Prior to submission, we can (and should) expunge metadata from an appropriately formatted text file. We can also run an optional analytics report to ensure the abstract length is correct, generate an automated claims tree, and identify any errors in claims numbering. Based on information submitted in the Application Data Sheet (ADS), the USPTO will be able to generate maps that show relationships between patent applications, or patent family maps.

Hurray!!!!! It’s about time that this arbiter of high technology gets around to joining the 21st Century in terms of its patent filing requirements.

Up until the time when the new file format actually hits the eCommerce site, the requirement for online patent filing has been and continues to be .pdf only. Even that is a decided improvement over the BeforeTime; before .pdf, filing was done in this weird MS Word amalgam thing that ran only on Windows (I’m a Mac geek) and gave me so many problems that I generally filed on paper.

They’re also replacing their current fee collection system to (1) expand self-service capabilities and (2) further integrate financial information with the patent and trademark businesses. The fee collection system replacement effort is in the beginning stages, and while they are looking to other successful eCommerce sites for best practices, they believe that USPTO customers may have unique needs. In the next few months, they will reach out to practitioners to solicit user input.

Again, it’s about time.

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.