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

Janet.Gongola@uspto.gov Seema.Rao@uspto.gov

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

Andy Piatnicia

Piatnicia Legal

Founder and PrincipalTelephone: 408-641-1747andy@piatnicialegal.com

Kevin Greenleaf

On Behalf of the ABA-IPL Section

Schwegman Lundberg WoessnerAssociate

Telephone: 408-660-2013 or 916-838-0291kgreenleaf@slwip.com

Dan Lang

Cisco Systems

Vice President, Intellectual Property and Deputy General Counsel

dlang@cisco.com

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: SoftwareRoundtable2013@uspto.govo 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: SoftwareRoundtable2013@uspto.gov

• 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

Janet.Gongola@uspto.gov Seema.Rao@uspto.gov

Direct dial: 571-272-8734 Direct dial: 571-272-0800