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Glossary Pilot Program
Presented at Software RoundtableOctober 17, 2013
Berkeley, CA
Janet Gongola Seema Rao
Associate Commissioner for Patent Examination Policy
Director, Technology Center 2100
[email protected] [email protected]
Direct dial: 571-272-8734 Direct dial: 571-272-0800
Agenda
Time Topic
10 minutes Introduction and Background
30 minutes Stakeholder Views•Andy Piatnicia, Piatnicia Law•Kevin Greenleaf, ABA-IPL Section•Dan Lang, Cisco Systems•James Hallenbeck, AIPLA
10 minutes Attendee Poll
30 minutes Open Discussion•Requirements for Glossaries/Definitions •Possible Pilot Structure
10 minutes Closing Remarks
Patent Quality
• Scope of each claim should be clear on filing of a patent application to:
o delineate boundaries of patent protected subject matter;
o facilitate examination; and
o serve public notice function
• Specification should clearly define the claim language so that the scope of each claim can readily be determined
Timeline of Events Concerning Glossaries
Date Event
January 2013 USPTO Federal Register Notice on Patent Quality
June 2013 White House Initiatives Announcement
July to September 2013 USPTO Studies on Glossary Usage
August 2013 Software Roundtable Announcement Focusing on Glossaries
September to October 2013
Focus Sessions with USPTO Examiners and Supervisory Patent Examiners
Federal Register Notice on Patent Quality78 Fed. Reg. 2960 (Jan. 2013)
• Focused on potential practices that applicants can employ in drafting a patent application to:
o facilitate examination; and
o bring more certainty to the scope of issued patents
• Comments sought on various practices including:
o “use of a glossary in the specification for potentially ambiguous, distinctive, and specialized terms particularly for inventions related to certain technologies such as software”
Response to Comments
• 12 public comments received about the use of glossaries
• Some favor glossary usageo “The use of applicant-generated glossaries to define
key claim terms is a best practice that should be encouraged by the Office.”
• Majority against glossary usageo “[R]equiring an applicant to put a glossary of
‘potentially ambiguous, distinctive and specialized terms’ in the specification seems to handcuff an applicant to using terms that are actually defined, limiting the language that could be used in the claims.”
White House Initiative on Glossaries
• Executive Action 2: Tightening Functional Claiming
• “The PTO will * * * over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.”
Historical Review of Glossary Usage in Patent Applications
• 2 studies conducted by USPTO to assess impact that presence/absence of a glossary in previously-filed applications had on:
o Quality (i.e., via assessment of errors in patentability determinations by examiners);
o Pendency; and
o Ultimate disposition of application (i.e., allowance vs. abandonment)
Glossary Study #1: Overview
• Purpose = determine whether the presence/absence of a glossary in a patent application had any correlation with quality via the patentability error rate in the application
• Sampled 72 applications from FY 2013:
o 36 randomly-selected applications with errors; and
o 36 randomly-selected applications with no errors
Glossary Study #1: Use of Glossary or Definitions
• Whether the specification contained a designated “Glossary” or “Definition” section
• If there was no “Glossary/Definition” section, whether definitions were presented in another section of the specification, such as Detailed Description
• If there was no “Glossary/Definition” section and if there were no definitions presented in another section of the specification, whether the meanings of claim terms could be discerned from the specification
Glossary Study #1: Findings on Use of Glossary or Definitions
Glossary Study #1: Conclusion
• No significant difference in the occurrence of patentability errors based on the presence/absence of glossaries or definitions
Glossary Study #2: Overview
• Purpose = determine whether the presence/absence of a glossary in a patent application had any correlation with the pendency or the ultimate disposition of the application
• Sampled 129 applications containing a labeled glossary section that were filed between 2002 and 2008
Glossary Study #2: Conclusion
• Presence of the glossary section did not impact either pendency or the ultimate disposition
• Average total pendency and abandonment to allowance rate was comparable to that for applications that did not contain a glossary section over the same time period
Glossary Studies #1 and 2: Take Home
• Definitions were not standardized in any way as to format and content
• Definitions were not standardized in terms of placement in the specification
• Too many variables for a controlled evaluation, thus necessitating a glossary pilot
Stakeholder Presentations
Kevin Greenleaf
On Behalf of the ABA-IPL Section
Schwegman Lundberg WoessnerAssociate
Telephone: 408-660-2013 or [email protected]
Dan Lang
Cisco Systems
Vice President, Intellectual Property and Deputy General Counsel
Quantitative Information
Attendee Poll: Purpose
• Collect quantitative information about attendees’ experience with glossaries and definitions in patent specifications
Attendee Poll: Form
Attendee Poll: Access Instructions
• WebEx Audience: http://www.uspto.gov/patents/init_events/software_partnership.jsp
• WebEx Submissiono Email: [email protected] Postal Mail: Mail Stop Comments—Patents, Commissioner
for PatentsP.O. Box 1450 Alexandria, VA 22313-1450 Attention: Seema Rao, Director, TC 2100
Qualitative Information
Focus Groups
• 4 sessions conducted with examiners and supervisory patent examiners (SPEs)
• Collected information and suggestions regarding:
o Form and content for definitions to be included in a glossary section; and
o Structure and features of a possible glossary pilot program
Requirements for Glossaries/Definitions
Question 1: Format of Glossary Section
If a glossary section of definitions is included in a patent application,
what restrictions should be placed on the format of the section?
Question 1: Examiner/SPE Feedback on Format of Glossary Section
• Glossary should be easy identifiable (e.g., header, doc code) and possibly divided into subsections, as appropriate
• Structured as a table or list
• Specific preset location in all applications
• No limitations on number of definitions
• Require definitions of claim terms and technology specific terms
• Include reference numbers (especially for mechanical)
• Flagging terms that are contrary to their normal meaning
Question 2: Criteria for Individual Definitions
If a glossary section of definitions is included in a patent application,
what criteria should be required for the individual definitions?
Question 2: Examiner/SPE Feedback on Criteria for Individual Definitions
• No limit on the number of definitions
• Concise: limit the length of definition
• Self-contained: should not refer back to the specification
• Don’t allow changes to the meaning of legal terms
• Define functional language
• Avoid negative limitations
• Cite technical sourcing within definition and provide sourcing in an IDS
• No inconsistent alternatives and may need to limit the number of alternatives
• No acronyms
• No exemplary language
• Don’t define relative terms with other relative terms; give actual numeric ranges where appropriate
• No disavowal of definitions elsewhere in specification
Possible Glossary Pilot
Question 4: Technological Areas for Pilot
For the technological areas where you practice,
which specific areas would benefit from the use of a glossary in the
specification? Why?
Question 4: Examiner/SPE Feedback on Technological Areas for Pilot
• Software areas
• Areas with foreign translation
• Areas with fast changing terminology
• Less need for glossaries in hardware areas
• Select certain Art Units and require glossary in every application to assess for improvement in performance over time
Question 5: Structure and Features of Pilot
What recommendations do you have for the structure and features of a glossary pilot?
Question 5: Examiner/SPE Feedback on Structure and Features of Pilot
• Run pilot for limited period of time
• Limit number of applications in pilot
• Only new applications eligible for pilot to avoid new matter issues
• Use expedited examination to get faster feedback
• Evaluate effectiveness of pilot via compact prosecution metrics, surveys, types of rejections, quality metrics
• Track applications beyond pilot
Question 6: Applicant Incentives
What incentives, if any, could the USPTO provide to encourage applicants to participate in a glossary pilot program and provide a glossary for claim terms in applications under the pilot?
Question 7: Other Ideas for Glossary Pilot
What other information regarding the requirements or criteria for definitions and/or a glossary pilot should the USPTO consider that have not already been discussed?
Question 7: Examiner/SPE Feedback on Other Ideas for Glossary Pilot
• Use of a Rule 105 requirement to provide a glossary or definition would be complicated
• Can be advantageous to define relative, technical, and proprietary terms as well as 112(f) terms
• If the definition comes from a source, cite the version of the source
Closing
Comments Due
• Due by COB Thursday, October 24, 2013
• Email: [email protected]
• Postal Mail:o Mail Stop Comments—Patents, Commissioner
for PatentsP.O. Box 1450 Alexandria, VA 22313-1450 Attention: Seema Rao, Director, TC 2100
Next Steps
• Evaluate quantitative and qualitative information collected via attendee polls and internal and external focus sessions
• Develop structure for glossary pilot
• Negotiate with Patent Office Professional Association (POPA) regarding glossary pilot
• Likely introduce glossary pilot in FY2014
Thank You!
Janet Gongola Seema Rao
Associate Commissioner for Patent Examination Policy
Director, Technology Center 2100
[email protected] [email protected]
Direct dial: 571-272-8734 Direct dial: 571-272-0800