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ABA-IPL Considerations on Glossary Pilot Program

This document discusses critical aspects of the Glossary Pilot Program designed to improve clarity in patent applications. It highlights the importance of precise terminology, specifies how glossaries may introduce ambiguities, and emphasizes the need for consistent definitions. The text also stresses the role of examiner training and the handling of § 112 rejections. Additionally, it addresses the process of defining terms, managing new matter, and maintaining integrity in repositories. Insights from case law and best practices for applicants are included to facilitate smoother prosecution history.

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ABA-IPL Considerations on Glossary Pilot Program

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  1. ABA-IPL Considerations on Glossary Pilot Program Kevin Greenleaf Schewgman, Lundberg & Woessner, P.A.

  2. What Controls? • Glossary • Specification • Prosecution History • Extrinsic Evidence • Admissions

  3. Glossaries Can Be Ambiguous Gradient echo: a pulse sequence that includes just a single RF pulse for refocusing of phase coherence among spin isochromats at different positions along the magnetic field gradient resulting from (1) balanced negative and positive gradient pulses, or (2) balanced gradient pulses of the same sign on opposite sides of an RF pulse. University of Virginia Patent Foundation, v. General Electric Company, 755 F. Supp. 2d 738 (W.D. VA 2011)

  4. Glossaries Can Be Ambiguous Repository: A repository is a trusted system in that it maintains physical, communications and behavioral integrity. ZTE v. Contentguard, IPR2013-00139, paper 15

  5. Which Terms Need Defining?

  6. Missing Definitions • New Matter • Transfer out of pilot • Amend glossary – if possible • Examiners require different numbers of definitions

  7. § 112 Rejections • Examiner Training

  8. Handling Ambiguity • Examiner-Initiated Interviews • Make § 112 rejections • Rule 105 • Reject request for pilot

  9. Inexperienced Applicants • Time and care in preparing glossaries • Breadth

  10. Suggestions • Make missing definitions of record • Encourage glossaries in the MPEP • Educate small inventors about pitfalls • Continue to train examiners on § 112 • Encourage examiner-initiated interviews

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