Insights —

USPTO Clarity of the Record Pilot: A Discussion of Findings

Nov 10, 2016

The USPTO pilot ran for six months and ended August 20th, 2016, and included 125 Examiners and 45 Supervisors (SPEs).  The purpose of the pilot was to develop best Examiner practices for prosecution record clarity.  Nothing about examination of an application has changed, however the record will be enhanced to better reflect the Examiner’s analysis.

The pilot had the following focus areas: (1) more detailed interview summaries; (2) enhanced documentation of claim interpretation; and (3) more precise reasons for allowance.  The best practices for Examiners that were identified by the pilot for each focus area are as follows:

  1. Interview Summaries
    1. Adding the substance of the Examiner’s position
    2. Providing the details of an agreement, if reached
    3. Including a description of the next steps that will follow the interview
  1. Claim Interpretation
    1. 112(f) Limitations

i.         Explaining 112(f) presumptions and how the presumptions were overcome (when applicable)ii.         Using the appropriate form paragraphsiii.         Identifying in the specification the structure that performs the function

  1. 102 and 103 Rejections

i.         Clearly addressing all limitations in 102 rejections when claims were grouped together

ii.         Explaining the treatment of intended use and non-functional descriptive material (printed matter) limitations in 103 rejections

  1. Reasons for Allowance
    1. Identify specific allowable subject matter or where found, if earlier presented, during prosecution
    2. Confirm applicant’s persuasive arguments
    3. Address all independent claims

At this point, Examiners are not required to abide by the best practices identified above.  However, these best practices will be the basis of ongoing recommendations to Examiners to provide better clarity in the record for improved prosecution.