Patent Glossary Pilot Program

By Dennis Crouch

In a new pilot program, the USPTO will offer expedited processing of patent applications that include a proper Glossary-of-Terms that define the terms used in patent claims.

Details: The pilot program is limited only to computer-related inventions (Tech Centers 2100, 2400, 2600, and the Business Methods area of 3600) and may be limited to 200 applications that petition to participate. The program runs from June-December 2014. At the time of filing, the application must include a glossary of terms within the specification that presents “positive statement[s] of what [each] term means. A glossary definition cannot consist solely of a statement of what the term does not mean, and cannot be open-ended.” The glossary is not required to define every word found in the claim set. However, it should provide definitions for key claim terminology, terms with a special definition, abbreviations, relative terms, terms of degree, and functional terminology (including means-plus-function limitations).

The pilot program is intended to provide some information about how patent applicants would use the glossaries and whether they will be useful in both better facilitating examination and result in patents with more clarity of scope. On the examination point, many patent attorneys complain that patent examiners apply unduly broad meaning to patent claim terms during the examination process. The glossary would ideally serve to head-off that initial confusion and round of prosecution that is often wasted in merely understanding the claims as submitted.

It will be interesting to see how patent applicants work within this new proposal.

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96 thoughts on “Patent Glossary Pilot Program

  1. Where does it end? A few years ago, I had an application pending on a business method relating to lease of property. The examienr found art that related to mortgages. Two rounds of Reply to OA, and just a reprint of the previous OA.

    So I phone.

    The examienr tells me, “Oh, a lease is the same thing as a mortgage.” I had to explain “in a lease, the money flows in to the owner. In a mortgage, the money flows out from the owner.”

    The idea that a contract or agreement is different than a naked, unaccepted offer — foreign territory.

    The problem is that the examienrs in these groups (especially 3680 and 3690, the business method groups) don’t know the most basic vocabulary. Where would I have to end the definiton processs when the examiners are TOTALLY clueless about the basics of their art?

  2. Given their response to this extraordinarily modest pilot program, you’d think the patent teabaggers were being asked to define their inventions in “5 words or less.”

    What a pack of pathetic crybabies. As usual, we are left to wonder: will the computer-implemented “arts” ever grow up? How much more kicking and screaming will we have to endure?

    It’s a glossary of terms. Practitioners in the non-bullshirt arts have been using glossaries in their specifications to define terms in their specification for a long, long time. It’s really not that big of a deal. They can be quite helpful. They can be especially helpful to applicants who are educated and thoughtful and possess the ability to anticipate where the meaning of a claim term is likely to be an issue during litigation or examination.

    Here we have a group (the patent teabagging computer-implementer types) who incessantly complain about their claims being construed too broadly by Examiners. Is anyone surprised that they would object to the idea of defining their terms in advance? Nobody should be surprised. The teabaggers want to kneecap the Patent Office at every turn. You think they will approve of any change that would help Examiners? That would make it more difficult for them to kick dust in the PTO’s face? C’mon. We know them better than that.

    Check out this guy “Tourbillion” in the thread below:

    You make a glossary ab initio that locks in definitions. Nothing wrong with that, right? Well, how does that glossary get made?

    Shorter Tourbillion: “What’s a glossry, Mommy? It sounds weally hard!!!”

    Time for the computer-implementers to grow up. The PTO might want to consider building a separate room to store all the discarded pacifiers and blankies they’ll be collecting.

      1. what the discussion is about

        Please tell everyone “what the discussion is about”, Patent Jeebus, so we may sin no more!!!

  3. Terminological confusion is often the tip of the iceberg of substantial confusion. The “software patent” concept itself is a fine example. Should it be replaced by “computer-implemented inventions”? The fact of the matter is that details of the actual implementation are irrelevant as long as they are not needed by the PHOSITA to “carry out” the invention.

    Another fine example is the “invention” concept itself. Unlike European patent law, in U.S. patent law there is no normative invention concept. In EU, applications must be tested first for being an invention, a test similar to the “patentable subject matter” test in the US (§ 101). Or does 101 also imply some “invention” test? It is one of the areas of confusion in CLS v. Alice

    1. A causal reader of slashdot or techdirt will readily recognize that “terminological confusion” is often used as a tool to create more confusion in order to proselytize and import philosophical agenda’s that would not be supported under a clear view of the law.

      Tell me Reinier, of this ‘normative concept’ in European patent law. Is it the same concept with an undefined “technical,” whose very definition is meant to be undefined so as to allow goalpost movements? What type of “norm” is such from an undefined term?

      Then remind me again of the limited value of separate sovereignty legal comparisons.

      Are you familiar with our 1952 Act and what Congress did there in relation to the “normative concept?” Are you familiar with the fact that Congress had prior to that given the US courts the authority to use common law evolution to define ‘invention?’ Are you familiar with our doctrine of separation of powers? Are you familiar with why it is such a big deal that the Court dances mightily in this area of mashed 101 wax noses, straining beyond belief to find an implicit way (and how deep the rabbit hole of implicit?) so as to not appear to go directly against the words of Congress (btw, the very same reason the Stevens and the Court could not explicitly rewrite the words of Congress in Bilksi is the reason why the Court cannot legitimately rewrite the words of Congress in Alice).

      1. Given their response to this extraordinarily modest pilot program, you’d think the patent teabaggers were being asked to define their inventions in “5 words or less.”

        What a pack of pathetic crybabies. As usual, we are left to wonder: will the computer-implemented “arts” ever grow up? How much more kicking and screaming will we have to endure?

        It’s a glossary of terms. Practitioners in the non-bullshirt arts have been using glossaries in their specifications to define terms in their specification for a long, long time. It’s really not that big of a deal. They can be quite helpful. They can be especially helpful to applicants who are educated and thoughtful and possess the ability to anticipate where the meaning of a claim term is likely to be an issue during litigation or examination.

        Here we have a group (the patent teabagging computer-implementer types) who incessantly complain about their claims being construed too broadly by Examiners. Is anyone surprised that they would object to the idea of defining their terms in advance? Nobody should be surprised. The teabaggers want to kneecap the Patent Office at every turn. You think they will approve of any change that would help Examiners? That would make it more difficult for them to kick dust in the PTO’s face? C’mon. We know them better than that.

        Check out this guy “Tourbillion” in the thread below:

        You make a glossary ab initio that locks in definitions. Nothing wrong with that, right? Well, how does that glossary get made?

        Shorter Tourbillion: “What’s a glossry, Mommy? It sounds weally hard!!!”

        Time for the computer-implementers to grow up. The PTO might want to consider building a separate room to store all the discarded pacifiers and blankies they’ll be collecting.

      2. Are you familiar with why it is such a big deal that the Court dances mightily in this area of mashed 101 wax noses, straining beyond belief to find an implicit way (and how deep the rabbit hole of implicit?) so as to not appear to go directly against the words of Congress

        It’s only a “big deal” to the patent teabaggers, anon. A lot of patent attorneys (and the vast majority of the public) greatly appreciate the Supreme Court stepping in to rein in the incredibly st00pit decisions made by lower courts on your behalf.

        Then again, you’re the same coward who won’t even tell people whether you believe that purely mental processes should be eligible for patenting or not. Or claims that recite purely mental processes and simply fold in an old conventional data-gathering step. Are you going to step up and share your beliefs with everyone now, anon? Or are you going to simply retreat into your sooperdooper “principled” shell and pretend that there are junk patents out there that you do not enjoy fluffing?

      3. anon, I fully agree with MM’s replies to you, but would add that you are full of it with your continuing effort to tell us what the ’52 Act did or did not do.

        Graham v. John Deere held that 103 was a codification of its law save for the Cuno Decision — that was covered by the Second Sentence of 103.

        A number of Obviousness decisions by the Supreme Court subsequent to ’52 have continued to rely on pre-52 case law.

        1. MM’s replies to me are pure B$.

          You agreeing with such is not a shocker.

          You do realize that you are resorting to pure dicta in your reliance on Graham, right? Need I cart out again the very reference you brought forward in our Bilski discussion explicating the very real danger of that you continuously run afoul of – your over-reading and mis-characterization of Supreme Court cases in your pursuit of your Agendas.

          1. anon, your BS is beyond belief. The ’52 Act codified the Supreme Courts jurisprudence on “novelty” and “invention.” The SC said so. It also continued to cite its cases from prior to ’52. Only Rich and his acolytes, such as yourself, remain in denial — nay, defiance. Defiance is what characterizes your position.

            You constantly say there is nothing like point of novelty in 103 analysis. That is bull. Take Graham itself and the analysis of the Cook Chemical patent. Cook contended that the patent covered a combination of old elements and relied on long felt need and commercial success. The Supreme Court noted that the only differences between the claimed combination and the prior art related to a rib seal located above shaft threads that abutted a shoulder on an overcap — and ultimately held this very rib seal was disclosed in the art.

            As to the “claim as a whole” and old combination argument, the Supreme Court said this:

            “Here, the patentee obtained his patent only by accepting the limitations imposed by the Examiner. The claims were carefully drafted to reflect these limitations and Cook Chemical is not now free to assert a broader view of Scoggin’s invention. The subject matter as a whole reduces, then, to the distinguishing features clearly incorporated into the claims.”

            Thus, the point of novelty IS considered under 103.

            Regarding the rib seal, the Supreme Court concluded:

            “The substitution of a rib built into a collar [for a gasket] likewise presents no patentable difference above the prior art. It was fully disclosed and dedicated to the public in the Livingstone patent. Cook Chemical argues, however, that Livingstone is not in the pertinent prior art because it relates to liquid containers having pouring spouts rather than pump sprayers. Apart from the fact that respondent made no such objection to similar references cited by the Examiner,[18] so restricted a view of the applicable prior art is not justified. The problems confronting Scoggin and the insecticide industry were not insecticide problems; they were mechanical closure problems. Closure devices in such a closely related art as pouring spouts for liquid containers are at the very least pertinent references. ”

            “The Scoggin invention, as limited by the Patent Office and accepted by Scoggin, rests upon exceedingly small and quite nontechnical mechanical differences in a device which was old in the art. ”

            Now, note that the differences were deemed “non technical.” Now just what did the Supreme Court imply with that statement?

            Max, take a look and let us have your views. But I think the Supreme Court was saying that this was a distinction without a difference.

            1. The SC said so.

              Of course it backs up its addictive view – but Ned- it said so only in dicta.

              Do we need to go down that route on the difference of dicta and law again?

  4. so this is what my superiors are doing instead of anything helpful.
    As an examiner, any program that offers “expedited” or “accelerated” examination is a BAD idea. It means I get less time to do a proper examination and have to spend more time filling out administrative forms and attending training that doesn’t teach me how to fill out said forms but gives me a bunch of confusing powerpoint slides about the rules of the program which we can’t really enforce because i get a completely different interpretation of the rules depending on which SPE i ask, so it’s always easier just to let things slide. If I do enforce the rules, I end up going back and forth with the attorney over the rules of the program rather than the metes and bounds of the invention. Any stats that show these things improve the speed of examination are from doctored numbers so that the exec who had the idea can use it to get a promotion or pad their resume stroke their ego.
    In my experience, glossaries can be helpful if I’m not familiar with some of the terminology but this is rarely the case and most often they are abused by attorneys to throw in more disclaimer type language to gob up how the claims are interpreted so they can weasel around prior art. Despite the “positive definition” business, I expect no different from the lawyers.

    Oh and in response to the “unduly broad” interpretations, try to understand, rejections are made to protect the american people from patent applicants.

    1. What are you talking about? You get an accelerated case, it goes into your Special Programs New tab, you work it, you mail it. There’s no other forms to fill out, it’s the same thing. Maybe the LIE’s don’t like it very much, but that’s not your problem as an examiner.

      The alternative to all of these pilots is to conduct business as usual without any attempt at getting better at serving the stakeholders. Might this be a bad idea? Yea. Sure. Just like I don’t really like AFCP2.0. But at least the higher-ups are trying.

      What I don’t like about the expedited cases is that there is a lot of potential 102(e) art that I can’t use b/c it hasn’t been published yet. That doesn’t seem to be very fair, but that is neither here nor there.

    2. In this particular case, you needn’t worry about it.

      No one will use a program that says define the words, but define them the way I tell you to, which is to what all the restrictions amount.

      1. Never say “no one.”

        Better phrased would be “no one to any meaningful level.”

        Much like several of the ‘crowd-sourcing’ efforts of the past that attempted to get the public to help do the examiners’ job, these types of programs will be called “success” no matter how poorly they actually perform, and how impossible it would be to scale up to have them ‘working’ across the entire patent system.

        This is nothing but meaningless window dressing.

  5. Here’s why this idea is nonsense on stilts.

    You make a glossary ab initio that locks in definitions. Nothing wrong with that, right? Well, how does that glossary get made? The inventor and his attorney, shooting from the hip as to what their best guess is at how one of skill in the art would construe a term? Or is it done correctly, with a canvassing of the relevant literature and declarations from multiple experts in the field, at a cost in both money and, more importantly, time, that would not be entirely inconsequential? Because without that, guesses – which is what these glossaries would amount to – as to the full scope and precise meaning of critical terms in the claims is nonsensical. Claim meaning gets refined during prosecution in light of the prior art and other evidence as it emerges.

    If it were math equations, glossaries would be wonderful. But the English language is far too nuanced and complex to pour cement and then stand in it as it hardens using a glossary at filing. It is a fast lane ticket to malpractice.

    1. Example: I want to claim an apple.

      Glossary: apple = fruit. Oops. Prior art search reveals banana. OK, apple – red fruit. Strawberries. Well then apple = crisp red fruit. Crap, what if we didn’t about them on filing but the examiner finds a pomegranate? OK, apple = any red fruit EXCEPT for (dear associate, research the known universe of red fruits that are crispy but are not apples and insert as negative limitations into glossary.)

      What about crabapples boss? Dunno. Inventor not sure. Must hire three experts and distill their opinions into the glossary. Hoo boy wait until the client sees the bill for this one!

      This hare-brained scheme can have been concocted only by a government drone unburdened with “scrivening” patents on a limited budget in a limited amount of time without either one of those realities available as an excuse for malpractice.

        1. yes they are.
          “A glossary definition cannot consist solely of a statement of what the term does not mean.”
          Challenge: insert a technically-not-meaningless positive statement in a mostly negative definition.

        2. Read it again.

          The definition cannot be SOLELY a list of things the word does not mean.

          The outline above, includes other elements… e.g., Red, Crispy.

          The problem is,
          What does Red mean? What does Crispy mean?

        1. An apple is a fruit.

          But not surprising a gummint mole regards that simple statement as “incompetent”.

          I doubt you’ve even examined 1000 patents grasshopper. I have more than that number issued. Because mindless drones like you make statements like you just made so easy to undress on appeal. Honestly, the job of vanquishing absurd examiner statements is so trivial and has been for so many years, sometimes I’m a little embarrassed to take money for it. But really I should be thanking you. So: thank you 6. You and your colleagues have made me comfortable without having had to break a sweat for it.

          1. “I doubt you’ve even examined 1000 patents grasshopper. I have more than that number issued.”

            Yay you’re old! Congrats!

            “Because mindless drones like you make statements like you just made so easy to undress on appeal.”

            Sure, your incompetence is very easy to undress on appeal.

    2. “Well, how does that glossary get made? ”

      The inventor sets forth what he wants the term to mean. It’s really that simple folks.

      “The inventor and his attorney, shooting from the hip as to what their best guess is at how one of skill in the art would construe a term?”

      No.

      “Or is it done correctly, with a canvassing of the relevant literature and declarations from multiple experts in the field, at a cost in both money and, more importantly, time, that would not be entirely inconsequential?”

      Why do all that when you can just set forth what you want the term to mean?

      “Because without that, guesses – which is what these glossaries would amount to – ”

      They’re not guesses, they’re direction from the applicant as to what a term means.

      How is this so hard for you to understand?

      “Claim meaning gets refined during prosecution in light of the prior art and other evidence as it emerges.”

      This is an attempt to let you not have to do that.

      “But the English language is far too nuanced and complex to pour cement and then stand in it as it hardens using a glossary at filing. It is a fast lane ticket to malpractice.”

      Only if you’re incompetent or are trying to claim things you don’t actually have possession of. But a lot of folks are/do that right now so it’s fine, we’re accommodating that behavior still.

      1. The inventor sets forth what he wants the term to mean. It’s really that simple folks.

        You are still missing the point 6.

        Even after being informed, you seem incapable of understanding this.

          1. LOL – 6 cannot even understand the simple things at a topic level that he does not understand.

            You may want to really hurry and note this to your doctor 6.

    3. But the English language is far too nuanced and complex to pour cement and then stand in it as it hardens using a glossary at filing. It is a fast lane ticket to malpractice.
      Extremely well said.

  6. “My, this smacks of an attempt at controlling everyone through your sharing of a selective view that patents are not welcome.”

    Wait wait wait, what do you think I’m trying to control everyone into doing re re? All I did was share the perception exhibited by this one guy as a representation of what pops into the mind of the everyman when they hear certain news.

    But you’re sure stuck on this new notion of control that you’re just now discovering for the first time in your life. I’m glad to know your horizon has extended and I’m glad to see that you’re trying to understand. But the rest of us aren’t always trying to control others with everything we do like you do anon. That’s why you’re called a psycho, and we’re not. So don’t get paranoid that everyone else is always doing this like you do.

    Also I’m unaware of any new leaf I’ve supposedly just turned.

      1. Yes it’s totally a sarcastic situation when someone thinks someone else is trying to control the public via sharing a skewed view of patents and that someone else can’t even identify what the original person is attempting to control the public into doing. Especially when the someone else is well known as someone who cannot understand what those around him are thinking or feeling.

        1. The well-knownness of your traits is becoming ever more clear, 6.

          You might want to get that thorough examination sooner rather than later.

  7. Jonas – As delighted as I am to have someone speaking up for what I, as a member of the American public, support in terms of government policy, I think you have made a couple of misjudgments.

    1. This, as others have already pointed out, is a blog devoted to discussions of government-issued patents, which seems unrelated to your brief essay.

    2. I think I (a member of the American public), might actually prefer a bit more xenophobic isolationism. Maybe that’s just me, though.

    1. Hedge,

      To your point 2, to the extent that “We the people” remain guided by those principles in our Constitution, and not subject to an unvoted New World Order, I agree with you.

  8. Jonas, laddie, you are bewildered, no? This is a patent blog, child. You want Daily Kos or whatever other similar m00nbat website you can surf to while passing time in your mom’s basement.

    Also, clean your room.

  9. Glossaries are intended to benefit the public, not the applicant.

    Glossaries are not viewed as a benefit, but as a curse to most patent prosecutors.

    Therefor, why don’t you do this, Michelle: waive all patent fees through issuance, put participants applications on steroids all the way through examination, etc., etc., etc. Even then you may not get any “volunteers.”

    1. I would think some patent litigators would be even more upset to see patents “Glossaries” in a spec., as it could put a real crimp in “nose of wax” games in patent litigation, and even increase the odds of attorney fee sanctions for objectively unreasonable infringement assertions under the pending legislation. It could even reduce the [increasing important] sales-to-PAEs-values of such patents.
      But a more immediate problem is this. How does one draft a definition that is as broad as possible yet distinguishes unintended claim term reading on prior art when the application is being filed as a “shot in the dark” with no, or no serious, prior art search, as so many applications are now?

      1. It goes (well) beyond that Paul Morgan, as even those applications that do a decent search (and provide a sizable IDS) are often confronted with examiner provided art that simply would not be presented under the Reasonable auspices of the claimed invention.

        Even Prof. Crouch ran an article some time back that showed that examiners use the provided art rather infrequently.

        Therefore, I would – without dismissing outright – put your ‘more immediate problem’ in the context that such is not likely to be a true driver here.

        1. “Reasonable auspices of the claimed invention.”

          Well now you get to tell us what those reasonable auspices are in your glossary and avoid all that.

            1. I know I know, you’re concerned about ta rdation. But you’re a ta rd yourself, so I’m particularly concerned about this. The whole point of the glossary is to make what they’re saying more clear. If they just circle around to something else that needs reasonable interpretation in their glossary then the whole point of the glossary is lost and they may as well have not used it in the first place. Remember, the choice to use it or not is solely up to them.

            2. You are missing the point, 6.

              Hmm, you seem to be exhibiting a new symptom in your psychosis. You might want to make a note of that and check yourself.

            3. “You are missing the point, 6.”

              Oh yes, I’m missing a point, that you’re going to now keep a super secrit. Riiiiiiight re re. Remember, you’re the one that is incapable of understanding other people’s thoughts or feelings.

            4. Funny that 6, you are the one exhibiting those traits in the immediate circumstances.

              Hmmm, quite possibly, you have been projecting your symptoms all along.

              You might want to write this down as part of your symptoms also include delusions of denials.

            5. Remember, the choice to use it or not is solely up to them.

              That is a non sequitur to the issue 6. Yes 6, undoubtedly those choosing the program, choose it. A rather unremarkable observation on your part.

              Words – be they in a claim or in a glossary – still need to be understood by the examiner. What devise then, will the examiner use in giving meaning to the words used in the definitions listed in the glossary?

              Adding a glossary does not remove the application of BRI, but appears to merely shift it.

              In an “Enemy of the State” analogy, it would be like the government setting up a program of watching freeee! data. But the question remains, “Who is watching those watching the watchers? (or in Carla Dean tones: Well who’s gonna monitor the monitors of the monitors?)”

              link to youtube.com

              link to thomhartmann.com

              link to zerohedge.com

            6. “Words – be they in a claim or in a glossary – still need to be understood by the examiner. What devise then, will the examiner use in giving meaning to the words used in the definitions listed in the glossary?”

              The english language, in precisely the same amount of specificity with which you use it. If you’re not very specific, then they won’t be very specific. If you’re more specific, they’ll be more specific.

            7. LOL – the same English language which controls the words in claims that have BRI applied to them…

              6,

              You appear extremely befuddled on the simplest of topics. Are you feeling OK today?

        2. Yes, the art cited by applicants themselves seems to be frequently ignored, even when better. But if claims have been presented with distinguishing terms that distinguish over the prior art found in a decent prior art search [instead of filing extremely broad claims with little clue as to the validly patentable invention], then logically the likelyhood of the examiner citing art from “out of left field” [from a computer key word search] that will “stick” should be reduced, and the specification should be better as well.

      2. “being filed as a “shot in the dark” with no, or no serious, prior art search, as so many applications are now?”

        Maybe you don’t take a shot in the dark anymore.

        1. 6 (inadvertently) commits yet another Duell-ism character suicide: “Maybe you don’t take a shot in the dark anymore.

          With examination as it is, ALL applications are a shot in the dark, relatively speaking.

          Inventors simply are not PHOSITA, and do not – and cannot – have that level of actually knowing all prior art. It is impossible not to have some element of a ‘shot in the dark.’

        2. “ALL applications are a shot in the dark,”

          But not all applications are a shot in the dark the way he used the term re re. You’re just changing the term, or misunderstanding how he used the term in the first place (more likely).

          “Inventors simply are not PHOSITA, and do not – and cannot – have that level of actually knowing all prior art.”

          In my art there are plenty of guys that are so deep and involved in their sub-art they know all the rest of the guys in their sub-art and generally what has been published by their own and the other gangs of people working. Certainly not all are that way, but many are.

          Just because you deal with the lowest of the low on the totem pole, or more likely are the lowest of the low on the totem pole doesn’t mean that everyone else suffers your affliction of ignorance about their field.

          1. the way he used the term

            Sorry 6, but you appear not to be understanding the way he used the term.

            Your misunderstandings are reaching epic proportions. It appears that you are also suffering from your projections symptoms. You may want to see your doctor immediately.

  10. But, have you figured out yet Jonas that the people who want to get rid of the patent system are generally the large corporations who have gotten their way on every other type of law.

  11. The only people that will likely take advantage of this are pro se applicants and perhaps some applicants represented by very inexperienced attorneys.

    Is potentially narrowing the scope of your invention worth $4800 ($2400 small entity), which is the cost for Track I examination?

    1. “Is potentially narrowing the scope of your invention worth $4800 ($2400 small entity), which is the cost for Track I examination?”

      You know there are some people that know exactly what their invention is and what they want to claim and disclose. Those folks will be fine using a glossary.

        1. Oh really mr. I can’t understand the thoughts or feelings of others?

          Please, go ahead, tell us all what you think it was that I thought of his post, if you think that what I thought of his post is other than what his actual point was.

          I won’t hold my breath for an answer since you can’t understand my thoughts or feelings on the matter and thus this will be impossible for you.

          1. 6,

            Not only are you missing points left and right, it appears that your delusions and projections are exhibiting themselves as well. You may want to note this outbreak and get yourself checked thoroughly.

            1. “Not only are you missing points left and right”

              Get used to thinking that I’m “missing points left and right”. That’s just you unable to understand my thoughts or feelings re re psycho.

            2. I think I see another symptom of yours manifesting itself 6.

              Yup. Definitely another symptom manifesting.

              You might want to hurry to the doctor.

      1. You know there are some people that know exactly what their invention is and what they want to claim and disclose. Those folks will be fine using a glossary.
        That comment is based upon ignorance. The English language is complex and nuanced. Anybody who believes he or she knows “exactly” what needs to be claimed is very likely to be wrong.

        I am reminded of the comments I heard from classmates coming out of final exams in law school. There were some that said “that test was easy, I knew it all,” and there were some that were saying to themselves “shoot, I think I messed up questions 3, 6, and 7 because I forgot about X, Y, and Z.” Invariably, the ‘know it all’ bombed the test and the people who were worried about every last detail did extremely well.

        What good lawyers LEARN is that despite your best intentions, you cannot draft a perfect document. Those that think they can are ill-informed and/or just sloppy. As such, the good lawyers will take great pains to put enough leeway into the language to help their client out. However, the glossary envisioned by the USPTO puts the inventor in a straight-jacket.

        While I have no problems putting some definitions in my patent applications, it has to be done with great care. If, for example, I am using a term of art but define it in a manner much more narrow than how it is used, I could potentially lose my client a significant amount of claim scope. I’m not going to potentially screw my client to get a quick examination.

        1. Is it any surprise that Malcolm “I-know-it-all-and-always-draft-meaningless-too-detailed-picture-claims-so-why-would-anyone-else-need-anything-but-a-picture-claim” operates with such a misunderstanding of reality?

  12. Do B.2. and B.6 present a paradox?

    B.6 indicates the defined term be in the glossary and elsewhere in the specification, while B.2 is much more limiting – only in the glossary. Since this is supposedly a non-substantive rule making (?), I do not see how a glossary term proposing to defines a means element can override the statutory direction to take the meaning of such a term from the specification (the whole specification).

  13. Will the terms used in the glossary section be exposed to the doctrine of Broadest (un)Reasonable Interpretation?

    1. So sorry Jonas, but that was a serious question.

      The glossary will be controlling for the words in the claims.

      But the glossary will be using other words to define the words (used by the glossary) that will be controlling.

      Those other words – will those other words have BRI applied to them?

      The program is silent to this.

  14. As to this new pilot program, indeed it will be interesting.

    ” On the examination point, many patent attorneys complain that patent examiners apply unduly broad meaning to patent claim terms during the examination process. The glossary would ideally serve to head-off that initial confusion and round of prosecution that is often wasted in merely understanding the claims as submitted. ”

    But but but then they’ll be limited to those now definitions for those terms in the glossary which they could have just put in the claims to begin with. It would be the worst thing evar if you had to actually clearly put what your invention was in words.

    1. actually clear

      Reminds me of one of my favorite Einstein quotes:
      Everything should be made as simple as possible, but not simpler

      It also reminds me of the general principle of the ladders of abstraction and the (rightful) attempt to claim as much as one has a right to.

      It also reminds me of the Office’ doctrine of BRI – funny how 6 has no problem with that concept. Hmmm, 6, you appear to want to have this type of unilateral control over language. Have you looked into that?

      1. “Hmmm, 6, you appear to want to have this type of unilateral control over language.”

        I don’t have to look into it. I know I want it. Not only do I want it, but under the miyazaki regime I substantially have it in nearly every situation where the issue comes up. And I enjoy it. And it helps applicants get their patents. It helps prosecution speed right along, getting rid of nonsense arguments that never needed to take place between examiner and applicant. The applicant puts down x in his application. The government says ok, we hear you, and this is what we took from it: y (note y could be x or might not be exactly x). Applicant can then be free to say nah nah nah I mean x and expound upon what they’re saying when they say x. The office can then reply: a. ok. or b. ok now put the additional stuff you just said into the claims. This system works out quite well. Exceedingly well in fact. Giving the office the power over that language in the claims is what should have been done a long long time ago and is substantially achieved under the miyazaki regime.

          1. Sigh, what do you want to know re re?

            Look anon, I don’t mind if you try to direct attention to me and away from your own behavior. I really don’t mind at all. You feel under siege. I understand. And I understand you hold me in contempt for attempting to understand you. But your trying to cast attention to me isn’t going to change you brosef. No matter how negatively people ever come to view me it isn’t going to change how other people perceive you now that your condition is known.

            1. Under siege? Not at all 6. You are clearly misunderstanding how I feel.

              Gasp – you are doing it again, aren’t you? I suggest you write down this projecting thing down before your delusions of denials sets in.

            2. “Under siege? Not at all 6. You are clearly misunderstanding how I feel.

              Gasp – you are doing it again, aren’t you? I suggest you write down this projecting thing down before your delusions of denials sets in.”

              Contempt of those that try to understand them and attempts to con the same. Textbook behavior anon.

        1. 6 errs (again) with “The government says ok, we hear you, and this is what we took from it

          Do you not recall what I said in regards to an examiner actually engaging in a claim construction during examination and that it is the Office that has said that it will not go that route?

          Another sign that you are projecting this “not understanding” thing from your little psych book.

  15. Just heard an interview on the radio on my way home that illuminates quite nicely how the public feels about patents.

    The interviewer was interviewing one of the guys that worked at bell labs on the first mobile phones (that happened to be car phones apparently, which they ditched after not too long and went full on mobility). The interviewer asked when did they get a patent on the original apparatus. The interviewer replied that the patent had issued in 1973. He went on to note though that by the time the tech had been developed and implemented the term was almost up. Thus he noted that the patents didn’t hold anyone up or generate any income.

    The reviewer’s reply is priceless when it comes to the everyday person’s understanding of patents. He replied:

    “Excellent”

    And then he continued on with the interview.

    Apparently, to him, it’s excellent that the patent didn’t block anyone else or generate any income.

        1. Jonas is most likely the same guy I sent out to find even one example of a modern advanced society that has chucked its IP laws.

          A rose by any other name…

          1. Correct me if I’m wrong, anon, but a country cannot be post-Adam Smith, ie modern and advanced, unless it trades with other countries. But for reciprocal trade with other countries to any worthwhile extent, it has to be a member of the World Trade Organisation. Now, to be admitted as a WTO Member, you have to have a functioning patent system in place. Is it any wonder then, that it is hard to find any modern and advanced economy that does not feature a system of patents? In reality, they all of them have no choice but to have patents.

            Mind you, on whether the patent system that any particular WTO Member has set up is flawless, opinions differ. Is it not a matter of legitimate debate, whether or not any particular implementation of a patent system is beyond criticism, even when some commentators opine that it is the one and only “Gold Standard” amongst patent systems? To be useful though, any such debate has to be rational, lucid and well-informed.

            1. Sorry MaxDrei, but your ‘logic’ would indicate that individual sovereignty does not exist.

              But we all know that it does, n’est-ce pas?

              In fact, since this ‘golden realm’ is sooo ardently believed, my request for one example could be expanded to a request for several, all of whom can set their foreign trading regime to match those ardent beliefs.

              Wherefore art thou, oh mystical kingdoms?

              (and yes, the notion of rational, lucid and well-informed likewise would leave my shifting friend Jonas out in the dark – but he does have the lemming hill that he can still march upon)

            2. “Sorry MaxDrei, but your ‘logic’ would indicate that individual sovereignty does not exist.”

              Or it just indicates that many sovereign states are being strong armed into having patent systems due to other huge interests in trade being denied them if they do not.

              Either way.

        2. “Prop.
          A.
          Ganda.”

          Lulz, the guy was just doing an interview and unintentionally let on his feelings about the system. It wasn’t like he planned to say “excellent”, he was just ad libbing through the interview and it just popped into his mouth as that was his reaction to that news.

          1. Are you sure the interviewer didn’t just let slip his grade of the answer….that is, that it was just as detailed as he had hoped and even addressed the blockage issue. I mean, could it be the interviewer was happy the answer removed the need for three follow-up questions and let him move on to another topic about cell phones? Mightn’t he have exclaimed Excellent, even if the guy said the patent issued in ’73 and blocked 6 competitors, thereby allowing the patent owner to charge enough to fund further development of mobile phone systems away from a shortwave, few reception station based system and toward the current millimeter wave, base station every kilometer based system?

    1. So very Duell of you and your identified public, 6.

      My, this smacks of an attempt at controlling everyone through your sharing of a selective view that patents are not welcome.

      Since you have ‘turned’ a new leaf of late (snort, chuckle), perhaps you can help your fellow examiner Jonas on his quest?

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