“By citing a particular line of basis in the specification, it is possible for anyone to determine whether the newly claimed invention was originally intended by the inventor, and with limited effort, more It gives you more certainty.”
The quality of issued patents determines the entire patent system. Valid patents encourage innovation, but invalid patents often have the opposite effect. Well-researched claims with clear boundaries, detailed disclosures with understandable teachings, and compliance with the appropriate laws, rules and regulations are all credible for the inventors and good for competitors and the general public. Contribute to high-quality patents that adequately inform their scope. of the present invention.
The US patent system as a whole is still arguably the best in the world, but there is room for improvement. Instead of leading the world in issuing robust and reliable patents, it risks being overtaken by China in innovation. It is arguable that both applicants and examiners can make many improvements to the drafting and prosecution of patent applications to better ensure the validity of issued patents. Many of these improvements are easy to implement. If the patent community begins to advance the patent prosecution process, it will greatly improve the strength of issued patents, increase the reliability and security of investment for patent owners, and reduce unnecessary litigation costs. can do. It also greatly reduces the need for post-grant proceedings to confirm patent validity.
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Various suggestions have been made to improve quality, from better use of AI in inspections, to providing better training, to giving inspectors more time. Many of these suggestions were referenced in a recent United States Patent and Trademark Office (USPTO) Request for Comments on Strengthening Patent Robustness and Credibility. These are commendable goals and I support their further consideration. But let’s start with a simple suggestion that you can implement right now without much effort or extra cost. To require patent applicants to show support for new or amended claims.
Applicants frequently propose new or amended claims during prosecution of the original application or by filing a continuing application. In that case, you must specify the basis of the specification that supports the change or addition. Applicants have already been advised to show support for new or amended claims in their initial disclosure, but all too often applicants are forced to point out broad portions of the specification or those for which support is claimed. It only vaguely mentions embodiments that are not. This simple problem has an equally simple solution. Patent Offices should require applicants submitting amended or new claims to cite the pages and lines that the applicant believes support each change or addition.
Unlike our European friends, wein this word” Requirements in the United States. The European Patent Convention expressly prohibits modifications that add subject matter beyond the content of the original application as filed or extend the protection that the claims confer. As a result, applicants whose original claims are too broad are often unable to add new restrictions to narrow them. Also, applicants whose initial claims are too narrow are prohibited from broadening their claims to extend protection. Our more applicant-friendly rules permit new or amended claims of different scope and content than originally filed, as long as they are supported by the original disclosure. However, this support should still be clearly indicated.
Here some might argue that it is the Examiner’s responsibility to make a support determination, but I agree that the final evaluation is left to the Examiner.. but claim modification It is the applicant, and the applicant who best knows where to find support, who is proposing that the applicant is already obliged to point out the grounds, and to do so with appropriate specificity. It is reasonable to request that Doing so will make subsequent examination much more efficient and allow patent examiners a more direct assessment of the application of § 112 and prior art.
not a new concept
This type of requirement has already been adopted by patent offices in other contexts. For example, patent owners must “provide” a “description of support in the disclosure” for new and amended claims on reexamination. Similarly, in inter partes review and post-grant review, a motion to amend “[t]He upholds the patent’s original disclosure for each added claim. “
Applying this rule to the review reduces the time required to evaluate the written description issue. Examiners have very limited time to examine patent applications. On average, you only have about 20 hours to conduct a full exam. I would rather spend a lot of time searching and creating detailed records rather than chasing support for amended claims. “Show me your work” discourages filing claims that are not themselves supported, increasing efficiency and further reducing the burden on examiners.
Some practitioners would argue that such requirements require costly time and most patent prosecution is flat-fee and not very profitable. is not a persuasive argument for flooding the system with. Antecedent evidence must be found”, so this requirement minimizes the burden on applicants.
A small price to pay for a better patent
By citing a particular line as the basis of the specification, anyone can determine whether the newly claimed invention was originally contemplated by the inventor, providing more certainty with limited effort. You can Imposing a modest additional burden on applicants to allow examiners to devote their limited time to more substantive and impactful tasks makes it very difficult to obtain a patent. The argument should not be accepted. Allowing large corporations to cheaply accumulate portfolios of ever lower quality patents does not serve the public interest, nor does it effectively encourage innovation. yeah. If your business plan relies on enforceable rights, you need fewer patents with higher quality and credibility. Also, an inventor who can only get one or two patents should choose to invest a little more in the prosecution process to avoid wasting scarce resources on unsuccessful efforts. enforce invalid patents; This is a step towards better patent prosecution. Suggest more!
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