On March 26 the U.S. Patent and Trademark Office (USPTO) announced that it will launch a new Glossary Pilot Program in which expedited processing of patent applications will be offered to applications that include a glossary of terms that defines the terms used in patent claims. The pilot program is limited to software-related inventions (Classified in Technology Centers 2100, 2400, 2600, and the Business Methods area of 3600). Early participation over the initial six-month trial period (June 2-December 2) will be limited to 200 applications.

To participate in the pilot program, applications must include a glossary of terms at the time of filing within the specification that presents “positive statement[s] of what [each] term means. A glossary definition cannot consist solely of a statement of what the term does not mean, and cannot be open-ended.” The intent of the Glossary Pilot Program is to develop strategies to improve claim clarity, specifically with regard to functional claiming in the context of software and business methods.

Clarifying Claims

Protecting software has been following a path that the USPTO has gone down before with other technologies. Historically, patent law has paid far less attention to what an inventor actually invented than to the patent “claims”—the legal definition of the scope of the patent protection drafted by lawyers, who have a natural tendency to broaden patent claims as much as possible in order to secure the strongest possible rights for their clients.

Rather than claiming a particular machine, article of manufacture, or series of steps that achieved or produced a desired function, claim drafters inevitably attempted to claim just the function itself, in the abstract as much as possible. Broad functional claiming developed into a problem in the 1940s as claim drafters attempted to use “means-plus-function” claims to cover any and all means that performed a particular function—effectively claiming rights and ownership to the function itself. When Congress rewrote the Patent Act in 1952, it narrowed the scope of “means-plus-function” claims to only the particular means of implementing the function specifically described by the patentee and equivalents thereof.

The Glossary Pilot Program faces a similar problem that “means-plus-function” claims presented; however, the proposed solution—applicants providing their own glossary of terms—is a bit concerning.

Section 2111.01 of Manual of Patent Examining Procedures (MPEP) provides guidance to patent examiners as to how words in claims are to be interpreted and begins with the statement that “[u]nder a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification.”

MPEP §2111.01 also states that “the greatest clarity is obtained when the specification serves as a glossary for the claim terms.” However, this reference to clarity addresses situations when a patent applicant relies upon a different definition than a word’s “plain meaning.”

Potential Problems

The proposal under the Glossary Pilot Program to have applicants include their own glossary of terms seems like a potential quagmire. First, the “plain meaning” rule of MPEP §2111.01 would no longer apply to any word or phrase included in an applicant’s glossary of terms. This result alone could result in similar words or terms in different applications being accorded different meanings, it being understood that the possibility of even slightly different meanings fails to achieve the goals of the Glossary Pilot Program.

Further, there is an inherent danger of using words to define words, especially when patent attorneys have a natural tendency to try to broaden patent claims, including terms used in claims.

The Federal Register notice of the Patent Term Glossary (Federal Register/Vol. 79, No. 59/ March 27, 2014) states that: “A glossary definition cannot consist solely of a statement of what the term does not mean, and cannot be open-ended.”

If a definition of a term included in a glossary of terms is deemed to be “open-ended,” and thus fails to comply with the Glossary Pilot Program, it would seem that a rejection of such an application could be made as failing to provide a concise written description or as being indefinite. Trying to correct the problematic definition could easily result in a “new matter” rejection. When I was a patent examiner, an applicant attempted to change a general definition that was used to identify a group of several chemical elements by deleting an element taught by the prior art. As a result, on appeal, the applicant’s attempt to change the general definition was held to incur “new matter,” which is strictly prohibited.

A more serious concern is that if the USPTO eventually determines that a glossary of terms is justifiable, such a requirement may be extended to all patent applications and not just software-related inventions and business methods. The potential quagmire could seriously effect U.S. patent applications that are filed in other countries that do not require glossary of terms and add complications to the litigation of patents in the U.S. 

Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.