USPTO Issues Guidelines to Help Improve Patent Quality

February 10th, 2011


New Procedures for Determining Compliance with Requirement for Claims in Patent Applications

 February 10, 2011

by:  John R. Harris

One of the biggest issues with the U.S. patent system is the notion of “patent quality.”  What makes for a “quality” patent?  That is not an easy question to answer, nor one that everyone necessarily agrees on.   Some might say, a quality patent is easy to understand.  Others might say a quality patent is enforceable against infringers.  Still others might say that the patent claims provide clear boundaries so that people can readily avoid infringement.

Patents are required by law to include claims “particularly pointing out and distinctly claiming” the subject matter that the patent applicant regards as his or her invention.  (35 U.S.C. § 112, second paragraph.)   Patent examiners are supposed to reject claims that do not meet this criteria – which is worded somewhat generally.  Courts will invalidate patents that have claims that do not meet this criteria.   

Although court cases over the years have provided some guidance on what is meant by this language, compliance with the “distinctly claiming” requirement has always proven somewhat difficult.  Patent applicants and their attorneys often struggle to “come up with the right words” to describe an invention in the claims.  And as is well known in patent circles, claims are the most important part of any patent.  If you do not get the claims done properly – even if the patent is approved by an examiner the U.S. Patent and Trademark Office (USPTO) – you may still have a low quality patent, i.e. one that is unenforceable.

The USPTO has recently shown some signs of recognition that its examination procedures need improvement so as to cut down on the huge backlog of patent applications and improve patent quality.   As an aside, these goals are not necessarily compatible – cutting down on the backlog requires processing patent applications more quickly, but improving patent quality requires taking more time and “doing it right.”

On February 9, 2011, the USPTO issued supplementary guidelines to assist its personnel (examiners) in examination of claims in patent applications for compliance with 35 U.S.C. § 112, second paragraph.   [Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 Fed. Reg. No. 27, pp. 7162–7175, February 9, 2011].

A link to these guidelines may be found here

The USPTO will receive comments on these guidelines until April 11, 2011.  No public hearing is planned.

It is beyond the scope of this article to probe the details of these new guidelines.  However, the guidelines seem particularly directed to two major areas in patents:  (1) claims that contain “functional” language and other kinds of indeterminate language such as terms of degree (comparative terms) and subjective terms, and (2) claims directed to computer-implemented inventions.  

Functional language typically appears in the form of patent claims that recite “means for …” carrying out some function, as opposed to claims that recite structural components or physical elements.  Such claims have proven complicated to interpret and are typically narrowly construed.   Computer-implemented inventions are of particular interest for those in the information technologies (IT) industries such as software, e-commerce, Internet, etc.



This information is presented for educational purposes and is not intended to constitute legal advice. Opinions expressed are those of the author and not of Morris, Manning & Martin, LLP; see disclaimer at Contact John Harris for more information at