The Evolving IP Marketplace: Aligning Patent Notice and Remedies ...

enables all participants in the patent system to better understand claim boundaries. The PTOvery recently has exhorted its examiners to take steps in these directions. 10Recommendation. The Commission urges that examiners be further encouragedto build a record that improves claim scope clarity. In part, this may be achievedthrough greater focus on Section 112 standards. Additional notice may be derivedvia indefiniteness rejections or interviews tailored to elicit information fromapplicants regarding the meaning of their claims. Beyond this, the Commission11reiterates the recommendation in its 2003 IP Report for “a concentrated effort touse examiner inquiries [under PTO Rule 105] more often and more extensively,”as a means, for present purposes, of increasing and recording examiner/applicantexchanges pertinent to patent scope.Recommendation. The Commission recommends that the PTO continue toencourage examiners to make greater and more informative use of statements ofreasons for allowance and for withdrawing indefiniteness rejections and thatcourts accord such statements due weight as prosecution history relevant to claiminterpretation.Improving the Ability to Foresee Evolving ClaimsAdequate notice requires both knowledge of those patent applications pending in the PTOthat might issue with relevant claims and an ability to foresee the evolving claims that could issueas a result of prosecution. Knowledge of the applications comes through their publication. Theability to foresee claims depends on enforcement of the Section 112 requirements. The amount oftime an application remains pending in the PTO also affects notice.Publication of applications. Until a patent application is available to public view, thirdparties have no opportunity to determine whether they have freedom to operate. Under currentlaw, most U.S. patent applications are published 18 months after filing. For applications filedonly domestically, however, the applicant may keep the application secret until the patent issues.Hearing testimony described unpublished applications as a threat to expensive R&D, althoughindependent inventors feared publication would allow large companies to appropriate theirinventions.Recommendation. The Commission recommends legislation requiringpublication of patent applications 18 months after filing, whether or not theapplicant also has sought patent protection abroad (subject to possible adjustmentsto provide any necessary protection to independent inventors). This10See USPTO, Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112,76 Fed. Reg. 7,162 (Feb. 9, 2011).112003 FTC IP Report, ch. 5, at 13-14.14