USPTO Issues Supplementary Examination Guidelines Regarding 35 U.S.C. § 112

Originally published on March 22, 2011.

The United States Patent and Trademark Office (USPTO) recently published supplementary examination guidelines for determining compliance with 35 U.S.C. § 112 ("the § 112 Guidelines").  Similar to the 2010 KSR Guidelines Update released last year, the § 112 Guidelines provide best practices for examiners as well as examples of compliant and non-compliant claims from recent case law.  USPTO Director David Kappos noted that "[o]ptimizing patent quality by providing clear notice to the public of the boundaries of the inventive subject matter protected by a patent grant fosters innovation and competitiveness."  

The § 112 Guidelines broadly provide a three step framework for examining claims with respect to § 112, and in particular with respect to § 112, second paragraph.  In the first step, claims should be interpreted in order to "fully understand the subject matter of the invention," and "ascertain the boundaries of that