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(Scrabble letters graphics courtesy of Antoniu at the impressively creative and always fun, fuzzimo.com)

     Earlier this month, the United States Patent Office (“PTO”) officially began its ‘Glossary Pilot Program”, which will run from June 2 to December 31, 2014. The initiative is in response to President Obama’s June 2013 executive actions ordering the PTO to formulate strategies to improve patent claim clarity. While not explicitly stated, the President’s executive actions, and much of the criticism of patents in general these days, seem to be directed to software patents.

     In October 2013, officials from the PTO had held a roundtable with stakeholders in Berkeley, California to get their thoughts and input on the new glossary initiative (two-part video of the meeting can be found at link here).  Those adding input either at the meeting or via letter to the PTO included Google, Dan Lang of Cisco, James Hallenbeck at the AIPLA, BSA/The Software Alliance, The Electronic Frontier Foundation and Manny W. Schecter, Chief Patent Counsel for IBM.

     The PTO’s presentation (see slideshow link here) included the results of two studies that looked at the correlation between: (1) the presence/absence of a glossary in the application and “patentability errors”; and (2) the presence/absence of a glossary and pendency time of the patent application. For some bizarre reason, perhaps only known to the PTO, only 36 applications were included in each group for the first study.  The second study included 129 patent applications having a labeled glossary section that were filed between 2002-2008.

     The results of the first study showed that there was “no significant difference in occurrence of patentability errors based on the presence/absence of glossaries.”  The second showed that the “presence of a glossary section did not impact either pendency or ultimate disposition.”  The PTO’s “take home” from the studies it had conducted is that there “[were] too many variables for a controlled evaluation.” And thus was born the PTO’s glossary initiative pilot program.

     Each business that participated in the PTO’s roundtable had different comments and suggestions for the pilot program (see IBM’s, here. Other letters to the PTO can be found here under “Comments” section). Most agreed that some sort of glossary requirement would improve patent clarity. Many, however, also noted that any such program would need to take into account the potential burden on patentees in terms of time, money and the narrowing effect it could have on claims scope.

     Before instituting the glossary pilot program in June, the PTO also considered patent examiner/SPE feedback as to what parameters the program should include. As for the format of any Glossary Section included in an application, the examiners indicated that they wanted to see the following:

  • Easily identifiable (e.g. header, document code) and divided in subsections;
  • Structured as a table/list;
  • Specific preset location in all applications;
  • Require definitions of claim terms and technology-specific terms;
  • Include reference numbers;
  • Flag terms that are contrary to their normal meaning.

With regard to criteria for the individual definitions in a glossary section, the examiners’ wishlist included the following:

  • No limit on number of definitions;
  • Definitions should have a limit on their length;
  • Definitions should be self contained- can’t refer back to specification;
  • Don’t allow changes to meaning of legal terms;
  • Define functional language;
  • Avoid negative limitations;
  • Cite technical sourcing within definition and provide sourcing in an Information Disclosure Statement;
  • No inconsistent alternatives and may need to limit the number of alternatives;
  • No exemplary language;
  • Don’t define relative terms with other relative terms; give actual numeric ranges where appropriate;
  • No disavowal of definitions elsewhere in the specification.

For now, the Glossary Pilot program is temporary and voluntary for applicants who apply to the program by filing a Petition to Make Special. If accepted into the program, applications will receive special status up until the first Office Action is issued (including any restriction requirements). The programs runs until the end of 2014, unless the limit of 200 applications is reached before then. Applications must be original (e.g. not a reissue) and may not claim priority to prior-filed non-provisional applications. One exception, though, is that the application may be a continuation-in-part if filed to include the glossary. No more than 4 independent claims and no more than 30 total claims are allowed.

Only certain technology areas/art units are included in the program (e.g. computer/software development, optical communications).  A full list of the included art units is here. The glossary must be included with the application upon filing, which must be done through the PTO’s electronic filing system, EFS-Web.

For more information on the PTO’s Glossary Pilot Program, see the Federal Register notice, here.  Have you filed an application that is part of the Glossary Pilot program? Tell us about your experience.

 

This post is intended to convey general information only and should not be construed as a legal opinion or legal advice.  We disclaim liability for any errors or omissions and readers should not take any action that relies upon the information contained herein. Readers should consult their own attorney concerning their own situation and  any specific legal questions. The writing herein does not establish any form of attorney-client relationship with us.

 

 

 

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