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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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USPTO Prepares to Launch "Clarity of the Record" Pilot

In a recent blog post, PTO Director Lee announced that the USPTO is preparing to launch a "Clarity of the Record Pilot."  As part of this pilot "examiners will include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims."  The USPTO plans "to develop best examiner and applicant practices for enhancing the clarity of the record" based on the information learned from the pilot.  The blog post further explains that "[t]hrough 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."

It is unclear whether Examiners will themselves be defining key terms or providing claim constructions as part of this pilot.  If Examiners will be taking such actions themselves, it is also unclear how the definitions and constructions provided by the Examiners will interplay with the "broadest reasonable construction" framework used during prosecution, 35 U.S.C. 112 P2 and associated case law regarding the onus of the applicant to provide claims particularly pointing out and distinctly claiming the subject matter regarded as the invention, and the process of construing the claims during litigation.