CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent

Glossaries Encouraged for Software Patents

USPTO
Launches glossary program
For software patents

The US Patent and Trademark Office has announced a pilot program to encourage applicants to use glossaries in software-related patent applications.

The program will launch on June 2 and run until December 12.

According to a PowerPoint Presentation at a Software Partnership Meeting held in October of 2013, the use of glossaries is intended to clarify “potentially ambiguous, distinctive, and specialized terms.”

The USPTO noted the majority of patent applicants oppose the use of glossaries, as in the following comment:

Requiring 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, limited the language that could be used in the claims.

Thus, the USPTO is offering expedited treatment for applications using glossaries as an incentive to overcome this opposition.

According to the Federal Register Notice setting forth the general glossary requirements:

1. 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.

2. 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.

3. 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.

4. 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.

5. 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.

6. The glossary should include definitions that will assist in clarifying the claimed invention and creating a clear application file wrapper record. 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.

Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, said that the USPTO recognizes “that a patent with clearly defined boundaries provides notice to the public to help avoid infringement, as well as avoid costly and needless litigation down the road.”

Related Articles

Patent and Trademark Offices Publish Study on NFT IP Issues

The US Patent and Trademark Office (USPTO) and the Copyright Office have published the results of their joint study on non-fungible tokens (NFTs) and intellectual property (IP). ...
Read More

Fourth Circuit Overturns $1 Billion Copyright Infringement Verdict

The Fourth Circuit has overturned a $1 billion verdict in a copyright case against Cox Communications. As the court explained, Defendant Cox Communications sells internet, ...
Read More

Will Federal Circuit Soften Test for Design Patent Obviousness?

An en banc panel of the Federal Circuit recently heard arguments in a case that could change how courts assess design patents for “obviousness.” LKQ ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

SERVICES

PROTECT

DEAL

DEFEND