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Glossaries Encouraged for Software Patents

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.”

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