Glossary Pilot Program
The USPTO is intiating a “Glossary Pilot Study” program to see whether including a glossary section in the patent application helps in clarifying just what a patent’s claimed invention is. The Glossary Pilot Program offers expedited handling (without requiring a petition fee). The participating patent
applicants would be required to use a special petition form (form PTO/SB/436), to include a formal glossary section (with section heading) in the specification, and to file the application papers on-line with the Office’s EFS filing system. The USPTO is only accepting the first 200 petitions (for the time being), and the applications have to be directed to digital or software fields, e.g., digital computers, digital video or audio, network processing, digital communications, or software-related technologies.
The stated intention is to improve patent claim clarity, specifically with regard to functional claiming in the context of software. Applicants can decide for themselves what terms, and how many terms, they want to include in their “Glossary”. The Glossary then is supposed to help the Examiner and (later on) potential infringers or licensees, understand “functional” claim terms, what physical structure is associated with a given function, abbreviations and acronyms, evolving technology nomenclature, terms of art, and unique words that do not have any ordinary and customary meaning.
Whether Glossary sections in patents have any real benefit remains to be seen, but then finding that out is the reason for any pilot program. In my recent experience of claim construction questions, at least in the context of litigated infringement cases, the claim terms where the parties disputed the meaning or construction have been what I had thought were ordinary words, like “when”, “coupled”, “connected”, “automatically”, “threshold” and “single”; terms where it was completely unforeseeable at the time the patent was filed
for that there was any question about what they meant. In most cases, claim terminology does not seem to require glossarification in order for the patent examiner to understand what the invention is. Rather it is only years after the grant of the patent that these questions seem to arise, and then it is too late to include them in a glossary.