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Practitioners: Glossary Program A Good Start But More Is Needed To Improve Patent Clarity Patents

Publication Date: 
May 21, 2014
Source: 
Patent Trademark & Copyright Law Daily - BNA
Author: 
Joyce E. Cutler

Professor Mark Lemley weighs in on new developments in streamlining patent applications for Bloomberg BNA. 

The Patent & Trademark Office's offer of expedited processing to encourage patent applicants to participate in the agency's glossary program is a start and not a panacea, intellectual property attorneys said May 16.

The PTO's glossary pilot program is one of many new programs that the agency hopes will improve the quality of examination to address issues at the application stage, Drew Hirshfeld, the PTO's deputy commissioner for patent examination policy said during a panel discussion at a Stanford Law School conference on IP and the biosciences.

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Mark Lemley, Stanford Law professor and director of the Stanford Program in Law, Science, and Technology, said the glossary program is a good idea.

“But I want to caution you that this is not a panacea. Many of the cases that present indefiniteness issues don't present them because you use the term and nobody knows what it means or scientists have two different meanings for it. It's because you use terms that don't actually give us the information we might want,” Lemley said.

Lemley said a second problem of trying to define inventions is that “replacing those unclear words with other theoretically clear words doesn't get us where we want to go.”

“We are going to have ambiguity as long as what we're doing is not looking at what it is the patentee invented, what the patent actually made, but at the words the lawyers wrote to try to define a parameter around what was invented,” Lemley said.

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Lemley pointed to the recent argument at the Supreme Court in Nautilus, Inc. v. Biosig nstruments, Inc., No. 13-369 (U.S., argued April 28, 2014) (82 PTD, 4/29/14) as evidence of the rampant uncertainty in the area. During oral argument, the parties and justices disputed whether the U.S. Court of Appeals for the Federal Circuit had even applied its traditional “insolubly ambiguous” standard when it reversed a district court's invalidity judgment (83 PTD, 4/30/13). But regardless of whether the standard had been used, there seemed to be general agreement that the standard fails to provide clear guideline.

“What's interesting I think is that while there is very little reason to believe that the Federal Circuit's insolubly ambiguous test is going to survive, I suspect the Supreme Court is looking for something a lot less dramatic than what the petitioner was looking for,” Lemley said.

“If the test is: can lawyers come up with arguments on the both sides of this issue, [then] not many patents will survive,” Lemley said.