The USPTO is working in a number of ways to emphasize clarity in patent prosecution. That is the clear theme emerging from the USPTO’s Patent Quality Symposium, which I attended in Alexandria on April 27, 2016. In listening to the various presentations, I was struck that this emphasis – on clarity of the record and clarity in patent applications – should cause those of us in the patent bar to re-think, and potentially revise, some of our practices.
I will not repeat the detailed summary of the speakers and their presentations provided elsewhere. But I do want to focus on discussions of various pilot programs, and training plans that point to an evolution in US patent practice. Many of us, in light of cases likeFesto Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), andPhillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), have long been taught to make patent prosecution file histories as pithy as we can. And many of us have been taught to use expansive, permissive language, and to avoid narrow definitions, in our specifications.
The USPTO is pushing to change these practices, to banish to history things like one-sentence interview summaries, non-specific reasons for allowance, and vaguely defined claim terms. I have set aside my knee-jerk horror (What? You want me to put that in the record!?!?) to conclude that practitioners should consider, and maybe even embrace, some of the USPTO’s call for clarity. Before explaining, consider a non-exhaustive list of various USPTO various clarity initiatives:
- Past and planned training programs to have examiners understand, and clarify the record with respect to, interpretations under 35 U.S.C. § 112(a), (b), and (f).
- Training to enhance clarity in reasons for allowance, in particular to provide a statement that the public can use to understand the claim scope.
- Emphasis on clarity in interview summaries.
- Clarity of the record pilot program, which includes 130 examiners who are asked to provide clear claim interpretations, precise reasons for allowance, and detailed interview summaries.
- Post-grant pilot program in which petitions (and, if I understood correctly, other papers) from post-grant proceedings will be supplied to examiners examining pending continuation or divisional applications related to the patent under post-grant review.
- New quality “Master Review Form” that emphasizes clarity along with correctness will be used at various levels within the USPTO to evaluate examination quality.
What all of this adds up to is that the USPTO is working to have patent examination include a detailed panoply of considerations – and to have examiners document these considerations in detail. This means that, more and more, things that many practitioners try to keep out of the record will be coming in. Examples include items such as claim interpretations, mapping of means-plus-function claims to portions of the specification, specific agreement with the examiner concerning claim limitations that overcome specific prior art, reasons for allowance, etc.
As practitioners, we can either fight the trend, or go with it. The USPTO is going to be instructing examiners to put detailed statements in the record whether you like it or not. My suggestion is that a detailed record may give your client a patent that is more resistant to invalidity challenges and that is therefore more, rather than less, enforceable. Consider: not only have district courts embraced the opportunity to invalidate patents under the Alice/Mayo Section 101 patent-eligibility test, but in our new AIA world post-grant challenges are gaining steam – Inter Partes Review and Covered Business Method Review will eventually be joined by the more expansive Post-Grant Review – so that invalidating patents is so much easier now than it was a few years ago. Especially in this new world, giving up a little claim scope, and flexibility in defining that claim scope in enforcement activity, may be worth the trade-off of having claims that are more narrowly-defined, and therefore more resistant to invalidity challenges.
Look at the Cuozzo case, just orally argued at the Supreme Court. The patent owner in an IPR wants a narrower claim construction to defeat the application of prior art. In this light, more precise, and yes, more limited, claim scope can be a benefit to patent owners, insulating a patent from challenges not just under prior art, but for lack of written description, enablement, and indefiniteness under 35 U.S.C. § 112. And, dare I add, a more detailed record would also likely help claims that could be attacked under 35 U.S.C. § 101.
Make no mistake: patent drafters should still very often take a broad, open-ended approach. But this approach should be mindful, and tempered by the new realities of patent practice.