Recently, the USPTO announced two new programs under the Enhanced Patent Quality Initiative (EPQI) that are designed to improve the quality of Patent Prosecution in the United States. This program will add more detail to the record of each U.S. patent application. According to the PTO Director Michelle K Lee “Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute”.
Firstly, the PTO will be launching ‘Clarity of the Record Pilot’. Under this program, the Examiner will include more detailed reasons of allowance or rejections of claims as a part of the patent prosecution record, definitions of key terms and pertinent claim construction. All these information from the pilot will lead to the development of best practices in enhancing the clarity of prosecution record.
Secondly, the PTO will transform their ‘Review Data Capture Process’ which is meant to link up their internal review process by ensuring that any review of the patent examiner’s work product will follow the same procedure. This helps all the reviewers to systematically record their review results through an online form called ‘master review form’ which is shared with the public. This will also help the PTO to determine whether the reason for the actions of the examiner are explained in the record clearly and also help to identify if there is any exclusion in any type of rejection.
With these two programs under EPQI in the United States, it makes the system understandable and usable to all inventors, the customers will be treated fairly throughout the patent application process and more importantly, the USPTO will issue patents that are both correct and clear by enhancing the patent quality.
On the whole, these new prosecution procedures will significantly reduce the time devoted to claim construction disputes during litigation.
Authored by Anjali Santosh
Contributed by Patent Prosecution Division of BananaIP in India
For further information on patent prosecution strategies in India, write to [email protected]