By: Robert R. Sachs
Humpty Dumpty smiled contemptuously. “Of course you don't—till I tell you. I meant ‘there’s a nice knock-down argument for you!’”
“But ‘glory’ doesn't mean ‘a nice knock-down argument,’” Alice objected.
“When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.”
“The question is,” said Alice, “whether you can make words mean so many different things.”
“The question is,” said Humpty Dumpty, “which is to be master—that’s all.”
Lewis Carroll, Through the Looking-Glass (1872) p. 72.
At last month’s Software Partnership Meeting in Berkeley, the USPTO discussed its proposed inclusion of glossary sections in patent applications to assist examiners in claim interpretation.
The USPTO asked for comments on a number of different criteria for a glossary:
a. The glossary must be a separate section in the specification with its own heading entitled “Glossary.” The glossary cannot be an appendix or submitted as an Information Disclosure Statement (IDS).
b. The glossary definitions must “stand alone” and cannot simply refer to other sections or text within the specification or incorporate by reference a definition (or portion) from another document.
c. A definition in the glossary cannot be disavowed by the disclosure or during prosecution; for example, by stating “the definition presented in the glossary is not limiting.”
d. Alternative definitions for the same claim term that are inconsistent with each other are not permissible.
e. The glossary, at least at a minimum, must define functional claim terms, the structure associated with any claimed function, abbreviations/acronyms, evolving technology nomenclature, relative terms, terms of art, and unique words that lack an ordinary and customary meaning.
f. A definition cannot consist only of a list of synonyms or examples.
Like Humpty Dumpty, the USPTO has implicitly adopted the view that language can be mastered and controlled, that the meaning of individual words can be constrained and defined by their user in an arbitrary manner. Just as Alice questions whether the old egg can make words mean what he wants them to mean, we too should question the wisdom of using, let alone requiring, glossaries in patents. The following three-part series is based on my formal comments submitted to the USPTO.