USPTO Software Partnership Meeting on October 17 at U.C. Berkeley School of Law

By Renee Dopplick, ACM Director of Public Policy
October 16, 2013

The U.S. Patent and Trademark Office (USPTO) will hold a Software Partnership Meeting tomorrow, October 17, 2013, from 8:30 am to 12:30 pm Pacific Time, at the U.C. Berkeley School of Law. The meeting will provide a forum for the software and high-tech communities to hear about governmental activities to improve patent policies and examinations and to discuss the potential use of glossaries in software-related patent applications. Members of the public are invited to attend in person. Space is limited. The meeting also will be online via WebEx.

The meeting topics will include:

  • A summary of the feedback from the Software Partnership listening sessions held in February
  • An overview of the White House Task Force on High-Tech Patent Issues
  • A discussion of the possible use of glossaries in patent applications
  • Proposed next steps by the USPTO

The USPTO has provided the following discussion questions regarding glossaries for the participants to consider:

  • What impacts on prosecution have you seen from using glossaries (e.g., efficiency, clarity, number and type of rejections)?
  • How do you evaluate the impact of glossaries on prosecution?
  • Please provide specific examples where the use of a glossary was helpful during and/or after prosecution (i.e., litigation, re-exam, re-issue, licensing).
  • Do you utilize a particular format for the definitions within the glossary (e.g., tables, formulae, bulleted list)? Why or why not? If possible, please provide an example of your preferred format.
  • Do you foresee any issues or concerns with the use of glossaries during and/or after prosecution? If so, what issues or concerns?
  • What incentives, if any, could the USPTO provide to encourage you to participate in a glossary pilot program and provide a glossary for claim terms in applications under the pilot?
  • For the technological areas where you practice, which specific areas would benefit from the use of a glossary in the specification? Why?

See the full list of discussion questions and meeting details.