Glossary Pilot Program Presented at Software Roundtable October 17, 2013 Berkeley, CA

1. Glossary Pilot ProgramPresented at Software RoundtableOctober 17, 2013Berkeley, CA

2. Agenda

3. Patent Quality • Scope of each claim should be clear on filing of a patent application to: • delineate boundaries of patent protected subject matter; • facilitate examination; and • serve public notice function • Specification should clearly define the claim language so that the scope of each claim can readily be determined

4. Timeline of Events Concerning Glossaries

5. 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: • facilitate examination; and • bring more certainty to the scope of issued patents • Comments sought on various practices including: • “use of aglossaryin the specification for potentially ambiguous, distinctive, and specialized terms particularly for inventions related to certain technologies such as software”

6. Response to Comments • 12 public comments received about the use of glossaries • Some favor glossary usage • “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 usage • “[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.”

7. 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 glossariesin patent specifications to assist examiners in the software field.”

8. 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: • Quality (i.e., via assessment of errors in patentability determinations by examiners); • Pendency; and • Ultimate disposition of application (i.e., allowance vs. abandonment)

9. 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: • 36 randomly-selected applications with errors; and • 36 randomly-selected applications with no errors

10. 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

11. Glossary Study #1: Findings on Use of Glossary or Definitions

12. Glossary Study #1: Conclusion • No significant difference in the occurrence of patentability errors based on the presence/absence of glossaries or definitions

13. 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

14. 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

15. 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

16. Stakeholder Presentations

17. Andy Piatnicia Piatnicia Legal Founder and PrincipalTelephone: 408-641-1747andy@piatnicialegal.com

18. Kevin Greenleaf On Behalf of the ABA-IPL Section Schwegman Lundberg Woessner AssociateTelephone: 408-660-2013 or 916-838-0291kgreenleaf@slwip.com

19. Dan Lang Cisco Systems Vice President, Intellectual Property and Deputy General Counsel dlang@cisco.com

20. Quantitative Information

21. Attendee Poll: Purpose • Collect quantitative information about attendees’ experience with glossaries and definitions in patent specifications

22. Attendee Poll: Form

23. Attendee Poll: Access Instructions • WebEx Audience: http://www.uspto.gov/patents/init_events/software_partnership.jsp • WebEx Submission • Email: SoftwareRoundtable2013@uspto.gov • Postal Mail: • Mail Stop Comments—Patents, Commissioner for PatentsP.O. Box 1450 Alexandria, VA   22313-1450 Attention: Seema Rao, Director, TC 2100

24. Qualitative Information

25. Focus Groups • 4 sessions conducted with examiners and supervisory patent examiners (SPEs) • Collected information and suggestions regarding: • Form and content for definitions to be included in a glossary section; and • Structure and features of a possible glossary pilot program

26. Requirements for Glossaries/Definitions

27. 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?

28. 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

29. 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?

30. 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

31. Possible Glossary Pilot

32. 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?

33. 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

34. Question 5: Structure and Features of Pilot • What recommendations do you have for the structure and features of a glossary pilot?

35. 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

36. 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?

37. 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?

38. 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

39. Closing

40. Comments Due • Due by COB Thursday, October 24, 2013 • Email: SoftwareRoundtable2013@uspto.gov • Postal Mail: • Mail Stop Comments—Patents, Commissioner for PatentsP.O. Box 1450 Alexandria, VA   22313-1450 Attention: Seema Rao, Director, TC 2100

41. 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

42. Thank You!