USPTO Pilot Program for Glossaries Defining Claim Terms Begins June 2, 2014

The U.S. Patent and Trademark Office (USPTO) announced the launch of its new Glossary Pilot Program as part of ongoing efforts to strengthen the U.S. patent system. The pilot program, which will begin on June 2, 2014 and run through December 31, 2014, is designed to enhance claim clarity in the specification of software-related patent applications by encouraging and gauging the use of glossaries by patent applicants. Participation in the Glossary Pilot Program requires an applicant to include a glossary section in the patent application specification to define terms used in the patent claims. Applications accepted into this pilot program will receive expedited processing, be placed on an examiner’s special docket prior to the first office action and have special status up to issuance of the first office action.

A Federal Register notice for the Glossary program may be obtained by clicking here.

To be eligible for the program, an application must be assigned to the USPTO Technology Centers 2100, 2400 or 2600 or the Business Methods area of technology Center 3600. The USPTO has waived the petition fee for this pilot program.

Applicants who wish to participate in the Glossary Pilot Program must provide, upon the filing date of an eligible patent application: (1) A petition to make special using Form PTO/SB/436 (titled ‘‘Certification And Petition To Make Special Under The Glossary Pilot Program’’); and (2) a formal glossary section as part of the patent application specification. Form PTO/SB/436 is available at http://www.uspto.gov/patents/init_events/glossary_initiative.jsp. Use of this form will help the USPTO to quickly identify Glossary Pilot Program submissions and facilitate timely processing of such submissions.

If the application claims priority to one or more foreign applications, a copy of each such foreign application must be submitted concurrently with the filing of the application. If any prior-filed application (U.S. or foreign) is not written in the English language, an English-language translation of such prior-filed application must be submitted concurrently with the filing of the application with a statement that the translation is accurate. This requirement is intended to assist the examiner, by ensuring that the examiner is timely provided with the documentation needed to confirm that the definitions in the glossary are supported in the priority document(s).

Upon filing, the application must contain at least one claim, but no more than four independent claims, and 30 total claims. The application must not contain any multiple dependent claims.

The glossary section should contain definitions of claim terms, as well as any other terms applicant deems appropriate that satisfy the requirements of this notice. The glossary must be placed at the beginning of the detailed description portion of the original specification, identified with a heading and presented on filing the application. The glossary cannot be, for example, a separate paper, an appendix to the specification or part of an information disclosure statement. Additionally, the glossary cannot be a follow-on submission made after the filing date of the application.

Whether to participate in the Glossary Pilot Program is a decision that should be made on a case-by-case basis. Clearly, participation will speed up prosecution and will likely increase the chances of having an application allowed quickly. On the other hand, the glossary itself will likely be used to construe a narrower definition of the claim terms.

 

Topics:  Patent Applications, Patent Reform, Patents, Software, 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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