Avoiding Section 112(b) Rejections With Patent Drafting Tools

Dec 27, 2020

Featured Image-Avoiding Section 112 (b) Rejections With Patent Drafting Tools

One of the most important jobs performed by the United States Patent and Trademark Office (USPTO) and its patent examiners is to ensure that the patents they issue make it clear to the public exactly what invention is being protected. Giving the public notice of the boundaries of patent subject matter is critical for both fostering innovation and raising confidence in the patent process. When a patents scope is not clear, readers of the patent may have a hard time discerning what the inventor regards as the invention, which can give rise to patent infringement lawsuits that could otherwise be avoided. 

Section 112(b) of Title 35 of the United States Code is one of the main vehicles used to ensure a certain level of clarity is achieved through the patent process. The second paragraph of Section 112(b) requires that patent applications point out and distinctly claim what the inventor regards as the invention. As such, claim language must be definite, and instances when a patent examiner determines a claim to be indefinite result in Section 112(b) rejections that must be resolved by the patent applicant. 

35 U.S.C. 112(b)—“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. 

Well-drafted patent applications are the key to avoiding Section 112(b) rejections. Patent professionals should confirm before submission to the USPTO that none of their patent claim language is vague or ambiguous, and, ideally, that the specification will support any terms used in the claims by serving as a glossary, so patent examiners and the public can easily ascertain their meanings. When patent claim elements misuse indefinite articles or are not supported by the specification, they can be said to have no antecedent basis. A lack of an antecedent basis could be evidence of indefiniteness and could also trigger a Section 112(b) rejection. 

What Happens When I Receive a Section 112(b) Rejection?

Fortunately for patent professionals and patent applicants, issues with indefiniteness or a lack of antecedent basis are not usually fatal. When a Section 112(b) rejection is issued, patent examiners are expected to lay out the specific term or phrase that they consider to be indefinite and the rationale behind their opinion. It is also their duty to work with patent applicants in a positive and constructive way to resolve Section 112(b) issues. Patent applicants are allowed to amend ambiguous claims and amend patent descriptions to provide clear support or antecedent basis for the claim terms they use. Even though indefiniteness can often be remedied, all rejections come at a cost. Not only do rejections cost time and money to overcome (the average office action response costs $3,000 to patent applicants), they also delay the conclusion of the patent process and the eventual issue date of the patent at issue. 

Avoiding Section 112(b) Rejections With Patent Drafting Tools

Avoiding Section 112(b) Rejections With LexisNexis PatentOptimizer®

Section 112(b) rejections are avoidable by drafting with definiteness in mind, and through thorough reviews of patent drafts before submission to the USPTO. Thorough reviews can be done manually, but the time it takes for a person to perform a full-scale check can also be costly. Patent drafting tools like PatentOptimizer® provide a more effective, automated alternative to manual reviews. The PatentOptimizer toolbar is available on Microsoft® Word and other word processors commonly used for patent drafting. The toolbar includes many features, such as the autogeneration of a Summary Report that captures all the anomalies detected by PatentOptimizer. To help address Section 112(b) issues, the Check Claims feature identifies terms and phrases that are used in claims that are not found elsewhere in the patent document, and the Check Terms feature identifies terms and phrases that could be construed as vague or indefinite. 

Patent professionals who use PatentOptimizer have the power to improve the quality of their patents quickly, with many patent drafting tools and features. Patent applications can be reviewed efficiently, helping patent applicants avoid mistakes and issues throughout the patent process. By addressing definiteness and a lack of antecedent basis before submission to the USPTO, patent professionals can avoid patent prosecution delays and save their clients money. 

Learn more about the PatentOptimizer patent claim analysis and patent writing software by reading Rejection is Nothing to Fear and Patent Drafting Tools: Three Key Advantages. Access the On-Demand Webinar Patent Drafting Tips for Avoiding and Arguing 112 Rejections here. Find PatentOptimizer resources here.  

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