Earlier today, in the Federal Register, the United States Patent and Trademark Office published Supplementary Guidelines for determining compliance with 35 U.S.C. 112 and for the treatment of related issues in patent applications. According to the Patent Office, these Supplemental Guidelines are based on current law and are believed to be fully consistent with the binding precedent. In reviewing the guidelines I would agree. There seem to be no surprises or Trojan horses. Nevertheless, I do expect that practitioners will find it quite useful to review these Guidelines given the numerous instances of pro-applicant language and direction to patent examiners.
Of course, it will be most useful for patent examiners to review and truly internalize the guidelines, but there is some excellent language here that is quite practitioner and applicant friendly. There is explanation of situations where a rejection should be given, but more importantly from a practitioner standpoint will be those examples and illustrations of when a rejection is not appropriate. The discussions of what an appropriate Office Action should include will no doubt be particularly useful as well as practitioners try and hold examiners feet to the fire to provide the type of information required in order to truly appreciate any problems identified by the examiner and how to appropriately respond. Indeed, it is my guess that patent practitioners will be yelling “AMEN” from the top of their lungs as they read various portions of the Guidelines.
The Federal Register Notice explains that these Supplementary Guidelines are intended to help patent examiners as they examine claims for compliance with 35 U.S.C. 112, paragraph 2, which requires that claims particularly point out and distinctly claim the subject matter that applicant regards as his or her invention. Additionally, the guidelines also include information to be used by patent examiners as they examine dependent claims for compliance with 35. U.S.C. 112, paragraph 4. Finally, these Supplementary Guidelines contain a lengthy discussion of the appropriate usage of 25 U.S.C. 112 as it relates to the specific scenario of computer implemented inventions, specifically discussing those claims that utilize means plus function language and those claims that merely employ functional language.
While not the first thing you will read if you go through these Guidelines, what does seem to come across is the fact that the Office is trying to explain to patent examiners what they should be doing in order to accurately communicate identified deficiencies to practitioners and applicants. As I was reading the document I thought it was quite clear that this came into being as a result of the Office’s desire to promote compact prosecution. Repeatedly the Office talks about the desire to reduce the number of Office Actions per case, seeing that as a way to become more efficient, thereby allowing patent examiners to handle more cases. This was a central theme in Kappos’ presentation at the IPO Annual Meeting, where he pointed out that the Office was hovering at about 2.4 actions per disposal, down from over 2.9 actions per disposal prior to when he took over at the Patent Office. Kappos would like to see this number get down to 2.1 actions per disposal, which would make the entire examining corps more productive and allow for more progress on the backlog.
Just as the reduction of actions per disposal came into my mind as I was reading the text turned to talk about compact prosecution. The Guidelines explain:
The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity. Under the principles of compact prosecution, the examiner should review each claim for compliance with every statutory requirement for patentability in the initial review of the application and identify all of the applicable grounds of rejection in the first Office action to avoid unnecessary delays in the prosecution of the application.
Clearly, the thrust of these Guidelines is aimed at facilitating earlier resolution by explaining in a direct, concise manner what the examining corps should be doing and how to better communicate with the patent bar.
Additionally, examiners are once again being encouraged to engage in interviews with those who are willing to participate from the practitioner/applicant pool. The Guidelines explain:
Examiners are reminded that interviews can be an effective examination tool and are encouraged to initiate an interview with the applicant or applicant’s representative at any point during the pendency of an application, if the interview can help further prosecution, shorten pendency, or provide a benefit to the examiner or applicant.
And in a sign that the Office truly understands its broader role within the industry the guidelines also explain that it is greatly preferred “resolve ambiguity by amending the claims during prosecution of the application rather than attempting to resolve the ambiguity in subsequent litigation of the issued patent.”
One of the things that caught my attention, and is indeed one of those areas where I suspect the patent bar will be exceptionally happy, is relating to the tutorial on the difference between claim breadth and claim indefiniteness. The idea is to get the broadest claim possible for the client, of course realizing that a ridiculously broad claim that isn’t going to be determined valid is of no particular use to anyone. All to often, however, patent examiners who view themselves as working for the Patent Denial Authority prefer not to grant claims, particularly broad claims, even when the prior art does not justifiably create an impediment to patentability.
My intention of characterizing the “Patent Denial Authority” is not intended to be harshly critical. There is a philosophical view that patent examiners should be gatekeepers and they do their job best by denying patents. I am not an adherent to that philosophy because I think it is quite clearly true that far more damage is done by denying patent protection where at least some claim scope was deserved than by occasionally allowing claim scope that might be too broad. The reality is there are mechanisms to deal with that. Reexamination is extremely useful and far cheaper than litigation, the fact that few employ it isn’t a justification for allowing the whining of complainers to dictate what is, in my opinion, bad patent policy. Luckily, most of those who have found themselves in the Director’s chair at the USPTO have been patent advocates and wanted patents issued.
These Guidelines suggest that Director Kappos and his team are pro-patent and would like to see patent examiners issue more patents where there is claim scope that does not overlap with the prior art. For example, relating to the difference between claim breadth and claim indefiniteness the Guidelines explain:
Examiners, however, are cautioned against confusing claim breadth with claim indefiniteness. A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. Instead, a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear. But a genus claim that could be interpreted in such a way that it is not clear which species are covered would be indefinite (e.g., because there is more than one reasonable interpretation of what species are included in the claim).
Additionally, time after time the Guidelines explain to the examiners that it is essential to review the disclosure to determine if there is fairly disclosed an invention and not to merely focus on the claims alone. This in and of itself is a welcome reminder. The disclosure is an important part of the application and the claims must be read in light of that disclosure.
The USPTO explains, in terms of housekeeping measures, that the Guidelines do not constitute substantive rule making and hence do not have the force and effect of law. Thus, they not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office, but those who don’t use the enormously positive language to their benefit in responding to 112 related rejections in Office Actions are being rather foolish if you ask me. However, the Guidelines explain that “any failure by Office personnel to follow the guidelines and supplemental information is neither appealable nor petitionable.” Of course, given that the Guidelines are only appropriate characterization of binding precedent, laws and rules it won’t take a rocket scientist to figure out how to appeal or petition, as appropriate, any divergence from these Guidelines by patent examiners.
These Guidelines were signed by Director Kappos on January 21, 2011, and become effective on February 9, 2011 and will apply to patent applications pending prior to the effective date. Not withstanding the immediate effective date, the USPTO is providing the opportunity for public comment, although strictly speaking since this is not a substantive rulemaking endeavor the acceptance and consideration of public comments is not mandatory. Nevertheless, the Office wants to hear what you think. Those wishing to submit written comments should provide such comments on or before April 11, 2011. No public hearing will be held.
In the coming days I will write more directly about the computer implemented invention aspects of these Supplementary Guidelines, so check back for more soon.