PTO Suggests Changes to Streamline Examination

The USPTO is requesting email comments on proposed ideas for streamlining the patent process, specifically whether the following practices should be used by applicants when to place applications in a better condition for examination:

To clarify the scope of the claims:

1. Presenting claims in a standardized template with each claim component in separate fields. For instance, preamble, transitional phrase, and each particular limitation.

2. Identifying corresponding support in the specification for each claim limitations utilizing, for example, a claim chart.

3. Indicating whether examples in the specification are intended to be limiting or merely illustrative.

4. Identifying whether the claim preamble is intended to be a limitation on claim scope.

5. Expressly identifying clauses invoking 35 U.S.C. 122(f) (means plus function) and pointing out where relevant structures, materials, or acts are disclosed in the specification

6. Using textual and graphical notation systems known in the art, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.

To clarify the meaning of claim terms in the specification:

1. Indicating whether terms of degree—substantially, approximately, about, essentially, etc.—have a lay or technical meaning and explaining the scope of such terms.

2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to technologies such as software

3. At the time of filing the application designating a default dictionary (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of claim terms.

Email responses to these suggestions should be submitted by March 15, 2013, and may be submitted to

Contact Us