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—By Dinesh N. MelwaniAaron Johnson and Les Bookoff, Bookoff McAndrews PLLC

Law360, New York (May 05, 2014, 1:00 PM ET) — On June 2, 2014, the United States Patent and Trademark Office will begin accepting requests for participation in its Glossary Pilot Program. The program represents the USPTO’s response to a White House executive action “designed to protect innovators from frivolous litigation and ensure highest-quality patents.”[1] The program is designed to “see if definitions in [a] glossary section enhance patent quality and improve the clarity of patent claims, by enabling the USPTO and the public to more fully understand the meaning of the patent claims.”[2]

Applications accepted into the program will receive expedited processing only up to the issuance of a first office action. Thus, participation in the program can yield a first office action in a matter of months as compared to, e.g., the five years the USPTO currently estimates for business method inventions in Class 705/73. This article discusses the requirements for participating in the program, benefits and drawbacks of including specific definitions in patent applications, and tips when considering whether to include definitions.

The Glossary Pilot Program

The program will be effective through Dec. 2, 2014, or until the program accepts a total of 200 applications. Though no additional fees are required, to participate in the program, applicants must electronically file an eligible application with (1) a petition to make special, (2) no multiple dependent claims, and (3) no more than four independent claims and 30 total claims.

Eligible applications include original, non-reissue, nonprovisional applications that do not include a continuing or divisional priority claim. Priority claims to provisional and foreign applications are acceptable as long as they are made at filing. If an application claims priority to a foreign application, a copy of the foreign application (and any translation) must be submitted concurrently with the filing of the application.

In addition, continuation-in-part applications claiming the benefit of an earlier filed non-provisional application are eligible for participation in the program as long as the application is filed to provide a glossary according to the program. Patent Cooperation Treaty (PCT), Section 371 national stage, design, and plant applications, and applications participating in a Patent Prosecution Highway program, are excluded from the program.

Further, only applications that are to be examined in Technology Centers (TC) 2100, 2400, 2600, or the business methods area of TC 3600 will be accepted. Based on this limitation, the program is only available for inventions in the software field. Finally, the application must be filed with a glossary section at the beginning of the detailed description portion and identified with a heading. “The glossary section should include definitions that will assist in clarifying the claimed invention and creating a clear application file wrapper record.”[3]

Each definition in the glossary section should be able to stand on its own. That is to say, a definition cannot rely upon other parts of the specification or any subject matter incorporated by reference. In addition, a glossary definition should establish “limits for a term by presenting a positive statement of what the term means.”[4] The USPTO specifically precludes a definition from being open-ended or consisting solely of what a term does not mean. Further, definitions provided in a glossary cannot be disavowed in another portion of the application.

In other words, “a definition cannot be presented in the glossary along with a sentence that states that the definition is not to be considered limiting.”[5] Further, a definition can include examples, synonyms, and exclusions, so long as the definition does not solely consist of them. The USPTO suggests definitions include key claim terms, substantive terms, abbreviations, acronyms, evolving technological nomenclature, relative terms, terms of degree, and functional terminology/limitations. For functional limitations, the USPTO suggests including corresponding structure for performing the claimed function, in addition to the disclosure of such structure in the detailed description.

Benefits of Including Definitions

While some applicants and practitioners currently avoid explicit definitions in the specification of a patent application, providing definitions may be worthwhile in some circumstances. One benefit may include possible time and cost savings from streamlining prosecution. During the prosecution of applications, examiners sometimes misunderstand claim terms, causing them to apply unreasonably broad or narrow interpretations.

Doing so may lead the examiner to apply unrelated art, which then causes the applicant to respond (e.g., via an interview) to explain the intended or accepted meaning of the claim terms. The examiner’s misunderstanding can lead to protracted prosecution and increased costs. Such cases may be alleviated with the aid of glossary definitions. Similarly during litigation, glossary definitions may reduce the dependence on dueling experts and simplify the issues for a Markman hearing, thereby reducing costs.

Further, particular inventions may call for semantic precision. In a crowded art, for example, the definition of an otherwise broad term can be crafted to exclude known prior art. Further, if key claim terms sound generic and are not terms of art, an examiner may take wide latitude with the application of prior art. In these situations, specific definitions may help keep the examiner focused on a desired interpretation. The applicant also may simply be concerned about semantic drift as the patent ages. For example, a “phone” today is quite different from a “phone” circa late 1990s.

Specific definitions also can provide certainty in the uncertain world of claim construction. Courts differ, and the case law is in flux, over whether claim terms should be given principally a plain and ordinary claim meaning, or a reading that factors in the specification.

The former approach tends to favor extrinsic evidence such as dictionary definitions, and often leads to broader interpretations. The latter approach, taking the specification into account, tends to consider intrinsic evidence, and often results in claim interpretations closer to “the invention.” In an en banc ruling in 2005 in Phillips v. AWH, the Federal Circuit seemed to endorse this latter approach, stating that the specification is “always highly relevant to the claim construction analysis. Usually, it is dispositive.”[6]

In recent years, however, appeals have had a high reversal rate, usually in the broadening direction.[7] The Federal Circuit has returned to emphasizing a “strong presumption of ordinary meaning.”[8] The preferred claim construction methodology may thus vary from judge to judge, and over time, but both methodologies typically find specific definitions dispositive. Indeed, as stipulated by the USPTO, “[a]n originally-filed glossary providing explicit definitions on the record will control the interpretation of the relevant claim terms, whether or not the petition is granted.”[9]

Drawbacks of Including Definitions

Specific definitions also carry certain risks, perhaps principally the loss of semantic flexibility. It may indeed be best to allow the claim language to flow with semantic drift, as definitions that appear reasonably broad now may turn out to be unnecessarily limiting later. For example, a definition of a “switch” as “a hardware device that forwards data on a network” may have been appropriate in the early 2000s, but would cause the claims to lose relevance with the rise of virtual switches. Some critics of the program have argued that this loss of “wiggle room” is unfair. Applicants are not required to include concepts that would be within the purview of the ordinary artisan, yet the Program seems to require applicants to define these concepts, and take the associated risks.[10]

As discussed above, including specific definitions of key terms can bring cost and time savings. On the other hand, the production of the glossary itself can add to the costs of preparing the application, given the time and care required to avoid definitions that are (or may become) unnecessarily limiting.

A practitioner may be tempted to make definitions very broad to preserve the wiggle room, but may create another problem. A broadly defined claim term necessarily reads on a greater amount of prior art. In response to a rejection based on that art, the practitioner may be forced to insert additional limitations that otherwise would have been unnecessary to obtain allowance. Post-allowance, the broader definition may also increase the patent’s exposure to validity challenges.

Practice Tips and Conclusion

A few practice tips may be gleaned from these benefits and hazards. As a general rule, specific definitions should be used only when the practitioner is experienced with the art. A practitioner with deep knowledge of the art will have a better sense of which terms are and are not terms of art, and what a reasonable definition would (and would not) comprise.

Specific definitions may be useful in crowded arts, principally to avoid known prior art. A carefully crafted definition can allow a practitioner to avoid the sprawling claims that are common in crowded areas. Tautological definitions, i.e., definitions that effectively include everything, however, should be avoided. Tautologies open the door to more prior art, and therefore more rejections from the examiner.

If the practitioner decides not to include specific definitions, a number of nonlimiting examples in the specification can act as a middle ground to give life to claim terms without the risks of a glossary. While some judges may ignore the examples, other judges, and the examiner, may not. Examples, especially those including lists of alternative embodiments and technologies, also can help expand the doctrine of equivalents that a court may apply.

To conclude, specific definitions are a useful tool that may be appropriate in some circumstances. However, practitioners having reservations regarding the inclusion of definitions should not participate in the program solely for the expedited examination. The expedited examination can be obtained with a Track One prioritized examination (which provides expedited benefits past the issuance of the first office action), without the risks associated with explicit definitions in a glossary.

—By Dinesh N. Melwani, Aaron Johnson and Les Bookoff, Bookoff McAndrews PLLC

Dinesh MelwaniAaron Johnson and Les Bookoff are patent attorneys with Bookoff McAndrews in Washington, D.C.

The opinions expressed are those of the authors and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] Glossary Pilot Program. 79 Fed. Reg. 17137 (March 27, 2014).

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).

[7] 12 J. Marshall Rev. Intell. Prop. L. 583, 585, 601.

[8] Steven Carlson and Uttam Dubal, Federal Circuit Boosts Patent Owners on Claim Construction, Managing Intellectual Property, Oct. 9, 2013.

[9] Id. at 17139.

[10] Edward J. Kessler et al., Requested Comments Regarding Strategies for Improving Claim Clarity Using Glossaries to Define Claim, Oct. 29, 2013. Available at: http://www.uspto.gov/patents/init_events/swglossary_d_kessler_2013oct29.pdf

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