A New Program Starts
On March 27, 2014, USPTO published a notice in the Federal Register announcing its Glossary Pilot Program. The program offers accelerated examination through the First Office Action to 200 patent applications that contain a glossary at the beginning of the application's specification section.
First Things First
Cutting to the chase, there is the patent bomb buried in the last sentence of the last paragraph of the Federal Register announcement,
An applicant cannot subsequently disavow the meaning of any term that has already been defined in the glossary section submitted on filing. Except for the correction of typographical errors, the glossary definitions cannot be amended or deleted during examination. The examiner will consider the glossary section as controlling for the meaning of the terms defined in the glossary section.This is the paramount issue before USPTO. Are inventors and their supporting cast willing to create a definition for a term used in their patents and then stick with it for the next 20 years? Will the glossary have the effect of narrowing the scope of a patent? (The answer is probably yes.) This is the make or break aspect of adding the glossary to the specification to improve the clarity and quality of patents. First, inventors and the firms they work for need to participate. The real question is will they?
Glossaries are Fundamental
Way Better Patents endorses adding the glossary to the specification. Inventors are their own lexicographers when defining their inventions.
..a patentee or applicant is free to be his or her own lexicographer, a patentee or applicant may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings if the written description clearly redefines the terms.And as one of our most favorite quotes on the matter states,
If the inventory of ready-made words in our language determines which concepts you are able to understand, how would you ever learn anything new?
One of the first things patent technicians do when getting ready to do battle on an infringement litigation or when doing the final check on an important patent application that may define the scope of a company's innovation going forward is to construct their own glossary to check what terms mean and how they are used in the claims and the rest of the patent. Claim construction professionals create glossaries as a framework for understanding what claims mean. Plenty of patent examiners have their own cheatsheets that point to important defintions within an application, regardless of how foggy the terms are, to assist in understanding a patent application. Adding formal glossaries to a specification should be a fundamental enhancement to patents covering new and emerging technologies.
The question before USPTO is whether they can encourage (force) inventors to add a glossary to the specification. USPTO and its cohorts at the Federal Trade Commission, the Government Accountability Office, and the Federal Courts have all pointed out that new and emerging technology needs more clarity on what the words mean. It would simplify many of the proceedings surrounding patents if the time spent simply understanding the meaning of the words could be significantly reduced.
The initial Federal Register Notice outlined the key program requirements. USPTO is initiating a,
Glossary Pilot Program to study how the inclusion of a glossary section in the specification of a patent application at the time of filing the application improves the clarity of the patent claims and facilitates examination of patent applications by the USPTO.The pilot is testing to see if definitions in the glossary section enhance patent quality and improve the clarity of patent claims, by enabling the USPTO and the public to more fully understand the meaning of the patent claims.
Start — The program is effective June 2, 2014.
Duration — The program duration is six (6) months from the effective date or until USPTO accepts 200 applications grantable petitions. USPTO hs the option to extent the program with or without modification for an additional six months or they can decide to terminate it at any time.
Forms — Applications need to have a Petition to Make Special Under the Glossary Pilot Program (Form PTO/SB/436 As of this writing the link to the form wasn't active.) and a formal glossary section in the Specification.
The Glossary — The glossary section should contain definitions of claim terms as well as any other terms applicant deems appropriate that satisfy the requirements of the program. Muted text is our editorial commentary.
- The glossary must be placed at the beginning of the detailed description portion of the original specification, identified with a heading, and presented on filing the application. The glossary cannot be, for example, a separate paper, an appendix to the specification, or part of an information disclosure statement.
- Additionally, the glossary cannot be a follow-on submission made after the filing date of the application. No sending it in later.
- The glossary definitions cannot rely upon other parts of the specification for completeness, or upon any incorporation by reference to other sources such as patents, published patent applications, or non-patent literature references. No relying on what someone else said.
- A glossary definition establishes limits for a term by presenting a positive statement of what the term means. A glossary definition cannot consist solely of a statement of what the term does not mean, and cannot be open-ended. The lexicongraphic spin doctors are in trouble here.
- Definitions provided in the glossary cannot be disavowed elsewhere in the application. For example, a definition cannot be presented in the glossary along with a sentence that states that the definition is not to be considered limiting. Nice.
- A glossary definition may include the usage of examples, synonyms, and exclusions. However, the glossary definition cannot consist solely of a list of examples, synonyms, and/or exclusions. glossary | noun ( pl. -ries) — an alphabetical list of terms or words found in or relating to a specific subject, text, or dialect, with explanations; a brief dictionary.
- The glossary should include definitions that will assist in clarifying the claimed invention and creating a clear application file wrapper record. Suggestions for definitions include key claim terminology (such as a term with a special definition), substantive terms within the context of the invention, abbreviations, acronyms, evolving technological nomenclature, relative terms, terms of degree, and functional terminology including 35 U.S.C. 112(f) functional limitations (previously 35 U.S.C. 112, sixth paragraph). If a definition is provided in the glossary for any 35 U.S.C. 112(f) functional limitations, then an additional suggestion would be to include the identification of the corresponding structure for performing the claimed function, in addition to any disclosure of the structure elsewhere in the specification. They were doing so well and then the patent mumbo jumbo erupts
Software Related Technology Only — The pilot program will be limited to certain software-related technology examination areas within the USPTO. Applications eligible for participation in the pilot program must be classified in technological fields that fall under the examination jurisdiction of USPTO Technology Centers 2100, 2400, and 2600 or the Business Methods area of Technology Center 3600. (USPTO didn't specify if the Business Methods area of Technology Center 3600 is limited to Class 705, but the link takes you to the Classifications by Art Unit which shows Class 705. Interestingly USPTO didn't specify the new CPC classifications but we digress.)
Four independent claims, no more than 30 claims — Upon filing, the application must contain at least one claim, but no more than four independent claims, and thirty total claims. The application must not contain any multiple dependent claims. For applications containing more than four independent claims or thirty total claims, or any multiple dependent claims, applicant must file a preliminary amendment in compliance with 37 CFR 1.121 canceling the excess claims and/or the multiple dependent claims at the time the application is filed.
Special to First Office Action — Applications accepted into this pilot program will receive expedited processing by placing them on an examiner’s special docket prior to the first Office action, and will have special status up to issuance of a first Office action. The applications accepted into the pilot program will be placed on the examiner's regular amended docket after the response to the first office action unless it's designated special for all the usual reasons - accelerated examination, prioritized examination, special based on the applicant's age.
Electronic Filing Only — The application and all follow-on papers must be filed via EFS-Web. Papers??
One to Watch
One of the more important aspects of this program that wasn't in the Federal Register Notice was how USPTO will evaluate the program and what will constitute success. Because it will be at least 18 months before the patent applications accepted under the program will be available for public review, it will be a long time before the public can weigh in on whether the presence of a glossary enhanced the understandability of patents. It may be beneficial if some of the program participants are asked to allow early publication of their applications. It will also be interesting to see how many of the most vocal organizations seeking to make changes in how patents for software related inventions are handled participate in the program. The other interesting aspect to keep an eye out for will be the extent to which patent geekery takes over. After all this is the land of the Portable Law Enforcement Data Processing Devices (handheld parking ticket issuing devices), Single Action Ordering System (one click purchases) and send social expression communications (greeting cards).
We'll keep this page updated as the program progresses and report on the results as they become available.