USPTO has announced a Glossary Pilot Program to Promote Patent Claim Clarity. The program promises to push your patent application to the front of the line (make it “special”) if you provide a glossary in the detailed description portion of the specification, providing a definition of each important term used in the application. This Glossary Program is a fascinating concept and it provides yet another reminder that there are smart people inside of the USPTO who are willing to try all kinds of approaches in the hope that some of the approaches will turn out to help with our shared goals such as promoting science and the useful arts. Should you recommend this Glossary Program to your clients?
The Glossary Program is, as a I say, a fascinating program. It will start on June 2, 2014 and will run for six months or until 200 grantable petitions have been filed. To use this program, you will have to satisfy several conditions:
- you have to include Form PTO/SB/436 (which does not yet exist) “Certification And Petition to Make Special Under the Glossary Pilot Program”
- you have to provide a glossary on filing day
- your case has to get classified so that it ends up in 2100, 2400, 2600, or the Business Methods area of 3600
- your case has to not be a reissue application, or a plant application, or a design application, or a national stage of a PCT application, or a PCT application
- your case has to not claim domestic benefit from any prior US non-provisional application (there is an exception for certain CIP situations)
- on filing day your case has to be in English
- if there are any priority claims or domestic benefit claims, they must be in the application on filing day (in an ADS of course)
- if there is any priority claim, a copy of the foreign priority document must be in the application on filing day
- if any foreign priority document copy is provided that is not in English, a translation into English (and accuracy statement) must be in the application on filing day
- your case has to have no more than four independent claims on filing day
- your case has to have no more than thirty total claims on filing day
- your case has to have no multiple dependent claims on filing day
- your case has to be e-filed in EFS-Web
There is no fee charged for this program.
The program makes a number of very sensible requirements for this glossary:
- the glossary definitions cannot refer to other things like other parts of the specification or things incorporated by reference
- you have to say what each term means, not what it does not mean
- you can’t have it both ways by disavowing the definition somewhere else in the patent application (you can’t say “the definition is not to be considered limiting”)
- the definition cannot solely be a list of examples, synonyms, and/or exclusions
- you can’t amend the glossary later
The “special” status from GP is not as good as regular “special” status. The GP case is only “special” until the first office action. After the first office action, the case reverts to ordinary (slow) prosecution. So for example the “special” status does not carry through to an RCE. And the “special” status does not help at all with getting a PTAB appeal decided faster.
If you screw up the Glossary “special” petition you get one chance to clean up the mess within one month (non-extendable). This reminds us of the similar one-chance-in-one-month that we know from PPH petitions.
If you have a PCT application and you were thinking about entering the US national phase, then for this program you might consider filing a bypass continuation (arguably a bypass CIP if the glossary is newly added).
How should the practitioner counsel a client as to whether or not to use the Glossary program?
The overarching concern of course is what will happen later in litigation. It is safe to assume that the patent owner who is now in litigation, who made use of this glossary program back when the application was filed, will have little or no wiggle room at litigation time around the meanings and construction of particular patent terms.
Some patent applications are lucky. The inventor is clear in explaining what the invention is. The practitioner understands the invention itself and is also in complete mastery of the underlying technology. The technology is well enough developed that terminology is unambiguous and understood by everyone in the technology area. The practitioner draws upon substantial experience and avoids the usual blunders when claiming software or business methods or algorithms. The client is able to pay to have the case drafted well. Each participant turns around his or her part of the drafting process with time to spare for others to do their part. The subject matter and people involved might have prepared a glossary anyway even without this program as a motivator.
Maybe the Glossary Program would be worth considering for such a lucky patent application.
Then there are those less lucky patent applications. The drafting is being done for a (not very generous) fixed fee. No one knows what prior art exists now, let alone what may some day develop. The inventor’s disclosure never quite said what the invention was, nor did the provisional patent application that was filed hastily fifty weeks ago. The practitioner never quite reached a level of confidence as to the subject matter. The area is rapidly evolving and each player in the area uses its own unique names for each of the pieces and building blocks used to build systems in the area.
I’d suggest that the Glossary Program would not be a good choice for such an application.
And keep in mind that “special” in GP is not nearly as good as “special” in PPH or PCT-PPH. The specialness of GP evaporates the day the Examiner mails the first Office Action.
I think there are many applicants which, if they decided they wanted a particular application to be “special”, would choose instead to obtain the specialness by means of PCT-PPH. Just file a PCT first, get a favorable Written Opinion, and you can enter the national phase later the same day and be special shortly thereafter. And that specialness lasts through RCEs and appeals.
And if you didn’t get a favorable WO, maybe it wasn’t patentable anyway in which case better to get the bad news early so you can stop throwing money at it.
The granted case that had been “special” due to the Patent Prosecution Highway won’t have this pesky glossary inside, the glossary that would otherwise deny the patent owner any wiggle room at litigation time.
I’d welcome reader comments about all of this.
I respectfully dissent. I think “each player in the area uses its own unique names … the Glossary Program would not be a good choice for such an application.” exactly misses the point. The only situation when an internal glossary serves any real purpose is when the patentee has to be his own lexicographer because established terminology is NOT available. When the “terminology is unambiguous and understood by everyone in the technology area,” the internal glossary is merely duplicative of extrinsic dictionaries.
This is a very good point and it is a good reason for the applicant to define his or her terms clearly in areas where there is a risk of unclear meaning. Having said that, I’d be reluctant to do so in a glossary in this program (just to get the limited “specialness”). I’d go out of my way to do it in a way that could not be construed (misconstrued) as an effort to qualify for this program. That way I could choose how much to lock myself in on the one hand or to preserve some wiggle room on the other hand, for this term or that term.