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

However, the factors traditionally considered in evaluating “undue experimentation” omit thiscommercial perspective.Recommendation. Determinations regarding whether a disclosure requires undueexperimentation should give recognition to the competitive significance of thetime required for experimentation; when product life-cycles are short, greaterdisclosures may be needed in order to be competitively meaningful.Defining claim terms. One concern raised repeatedly during the hearings was that claimsfrequently use terms with no apparent definition in the specification. Litigants disputing claiminterpretation may turn to different dictionaries to find a favorable definition. The problem isexacerbated for fast-moving technologies lacking widely-accepted terminology. Notice would beimproved through undisputed claim term definitions.Recommendation. The Commission recommends that patent applicants berequired either (i) to designate a dictionary for use in assigning meaning to termsnot defined in the application or (ii) to acknowledge acceptance of a PTOdesignateddefault dictionary for that purpose. The PTO-designated defaultdictionary could vary by art unit.Recommendation. The Commission urges the PTO to continue to look for waysto press patent applicants to include definitions or contextual explanations of keyterms. Mechanisms that could accomplish this include (i) requiring applicants toprovide a glossary defining any key terms that are not covered by a designated ordefault dictionary or that the applicant chooses to define differently than in such adictionary or (ii) requiring that applicants include key claim terms in thespecification and provide a ready means for identifying where they appear.Recommendation. The Commission urges that the PTO convene agovernment/industry task force or hold a workshop to explore ways of fosteringgreater uniformity in the methodology or language used for describing andclaiming software inventions.Improving the Ability to Understand Existing Claims: Enhancing the Value of theProsecution History for Claim ConstructionIn addition to the language of the patent itself, important evidence relevant to a claim’smeaning may appear in the prosecution history. Panelists registered considerable support forincreasing and recording exchanges between examiners and applicants pertinent to patent scope.They explained that engaging the applicant in ways that build a prosecution history record13