The USPTO is proposing changes favorable to patent owners with regard to claim construction in the following Patent Office proceedings: (1) inter partes review (IPR), (2) post-grant review (PGR), and (3) the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB).
As stated in the regulatory notice: the USPTO "proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings. The Office also proposes to amend the rules to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding."
If this change is implemented, it should be more difficult for a challenger to invalidate patent claims in certain cases, which may be reasonable given patent owners are rarely afforded the opportunity to amend claims in Patent Office proceedings to date.
See the USPTO Notice of Proposed Rule Making.
Also see U.S. Supreme Court's prior decision in Cuozzo Speed Technologies v. Lee that affirmed PTAB's use of the broadest reasonable interpretation of the claims in inter partes review.
Copyright © 2018 Robert Moll. All rights reserved.
Showing posts with label claims. Show all posts
Showing posts with label claims. Show all posts
Thursday, June 28, 2018
Sunday, November 2, 2014
Method Claims - Should They Recite Computer Terminology?
Although the Supreme Court stated it wouldn't give much weight to whether a method claim recites a computer in Alice v. CLS Bank, it may be a good idea to recite computer language in the claim in some cases.
During examination, an examiner should give a claim the broadest reasonable interpretation consistent with the specification. For example, in Phillips v. AWH Corp. the Federal Circuit stated an examiner should determine the scope of claims not solely on the claim language, but on the broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art."
The logic for the broadest reasonable interpretation standard is an applicant can amend claims during prosecution, and giving a claim the broadest reasonable interpretation reduces the possibility the issued patent claim will be interpreted more broadly than justified.
Let me explain now how this might apply using an example. In Application of Prater the CCPA considered a patent applicant pursuing a claim reciting a process of analyzing data generated by mass spectrographic analysis of a gas. The specification said the process included subjecting the data to be analyzed in a mathematical manipulation. The examiner rejected the claim as anticipated, because "analyzing data generated by mass spectrographic analysis" could be read on a mental process using a pencil and paper. The court agreed the claim was not limited to implementation on a machine, since the claim did not expressly recite it. The court explained "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." In short, Application of Prater indicates you cannot import subject matter (e.g., a machine or a computer) described in the specification into the claim where that subject matter is not recited in the claim.
Thus, if you want a method implemented in software to not read on a mental process, it may be better to recite the computer language in the body of the claim if you can live with the narrower claim.
Copyright © 2014 Robert Moll. All rights reserved.
During examination, an examiner should give a claim the broadest reasonable interpretation consistent with the specification. For example, in Phillips v. AWH Corp. the Federal Circuit stated an examiner should determine the scope of claims not solely on the claim language, but on the broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art."
The logic for the broadest reasonable interpretation standard is an applicant can amend claims during prosecution, and giving a claim the broadest reasonable interpretation reduces the possibility the issued patent claim will be interpreted more broadly than justified.
Let me explain now how this might apply using an example. In Application of Prater the CCPA considered a patent applicant pursuing a claim reciting a process of analyzing data generated by mass spectrographic analysis of a gas. The specification said the process included subjecting the data to be analyzed in a mathematical manipulation. The examiner rejected the claim as anticipated, because "analyzing data generated by mass spectrographic analysis" could be read on a mental process using a pencil and paper. The court agreed the claim was not limited to implementation on a machine, since the claim did not expressly recite it. The court explained "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." In short, Application of Prater indicates you cannot import subject matter (e.g., a machine or a computer) described in the specification into the claim where that subject matter is not recited in the claim.
Thus, if you want a method implemented in software to not read on a mental process, it may be better to recite the computer language in the body of the claim if you can live with the narrower claim.
Copyright © 2014 Robert Moll. All rights reserved.
Monday, April 22, 2013
USPTO - Public Comments on Improving Patent Applications
On January 15, 2013, the USPTO published a Request for Comments on Preparation of Patent Applications seeking public comments with regard to the Partnership for Enhancement of Quality of Software-Related Patents by March 15, 2013. Later the USPTO extended the deadline to April 15, 2013.
Public Comments on Preparation of Patent Applications
Copyright © 2013 Robert Moll. All rights reserved.
Public Comments on Preparation of Patent Applications
Copyright © 2013 Robert Moll. All rights reserved.
Subscribe to:
Posts (Atom)