USPTO Introduces Glossary Pilot Program

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On March 27, 2014, the United States Patent and Trademark Office (USPTO) introduced the Glossary Pilot Program, which is intended to study how the inclusion of a glossary section in a patent specification at the time of filing improves the clarity of the patent claims and facilitates examination.  Under this pilot program, computer-related inventions that would be examined in Tech Centers 2100, 2400, 2600 and the Business Methods area of 3600 can receive expedited processing and examining up to the first action on the merits.

To participate in the program, an applicant must file a petition to make special using Form PTO/SB/436 (Certification And Petition To Make Special Under The Glossary Pilot Program) at the time of filing the patent application.  No fee is required for filing the petition.

The following additional conditions must be met in order to qualify for the program:

  • The application must be (a) an original (non-reissue, non-provisional) utility application filed under 35 U.S.C.  § 111(a) that does not claim priority to a prior-filed non-provisional U.S. Application; or (b) a continuation-in-part application claiming the benefit of an earlier filed non-provisional utility application under 35 U.S.C. § 120 or 365(c) filed for the purpose of providing a glossary.
  • The specification must be an English-language specification containing a glossary under its own heading at the beginning of the detailed description section.
  • The application must contain at least one claim and no more than four independent claims and 30 claims total.
  • The application and all follow-on papers must be filed via EFS-Web.
  • The glossary must not rely on other parts of the specification for completeness, and the definitions in the glossary cannot be disavowed elsewhere in the specification. 
  •  The glossary definitions should establish a positive statement of what the glossary term means and cannot consist solely of a statement of what the term does not mean.
  • The glossary definitions may include examples and synonyms but cannot consist solely of examples and synonyms.
  • The glossary should include definitions that will assist in clarifying the claimed invention and creating a clear prosecution record.  Suggested definitions include key claim terms, abbreviations, acronyms, evolving technological nomenclature, relative terms and terms of degree, and functional terms including 35 U.S.C. § 112(f) functional terminology.

This program will begin June 2, 2014 and will run for six months or until the USPTO accepts 200 applications under the program.  The USPTO may extend the program an additional six months.

 

Topics:  Patent Reform, Patents, USPTO

Published In: Intellectual Property Updates, Science, Computers & Technology Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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