United States: The USPTO Glossary Pilot Program

In a Federal Register Notice published March 27, 2014, the USPTO announced a Glossary Pilot Program that will offer expedited examination to new patent applications in certain technology areas that include a glossary of terms that meets certain formal requirements. The program will commence on June 2, 2014, and run for six months or until the USPTO accepts 200 applications into the program (whichever comes first).

The USPTO Glossary Pilot Program

The Glossary Pilot Program falls under one of the "Executive Actions" promulgated by the White House Task Force on High-Tech Patent Issues on June 4, 2013, which calls for "developing strategies to improve claim clarity, specifically with regard to functional claiming in the context of software, such as by the use of glossaries in patent application specifications."

According to the Federal Register Notice, the USPTO Glossary Pilot Program is designed "to study how the inclusion of a glossary section in the specification of a patent application at the time of filing the application improves the clarity of the patent claims and facilitates examination of patent applications by the USPTO."

To be eligible for the Glossary Pilot Program, a patent application "must be classified in technological fields that fall under the examination jurisdiction of USPTO Technology Centers 2100, 2400, and 2600 or the Business Methods area of Technology Center 3600."

According to the USPTO:

Applications accepted into this pilot program will receive expedited processing by placing them on an examiner's special docket prior to the first Office action, and will have special status up to issuance of a first Office action.

Specific Requirements of the USPTO Glossary Pilot Program

The Federal Register Notice sets forth a number of formal requirements that an application must satisfy in order to be accepted into the USPTO Glossary Pilot Program. As noted above, the program only is open to applications examined in specific Technology Centers. Additionally, the application must be "[a]n original, non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a)" that is not a continuation or divisional application, although it can be a continuation-in-part application "filed for the purposes of providing a glossary in accordance with this program." The program is not open to PCT applications, national stage applications, design applications, or plant applications.

The application and all supporting documents must be filed electronically (via EFS-web), must include an English language specification with a glossary section that complies with the program requirements, and must include at least one claim, but no more than four independent claims, and thirty total claims, and no multiply dependent claims.

The application must be filed with a petition to make special under the program, but no fee is required.

The Glossary Requirements

The glossary requirements are designed to "promote participation" and provide "participants the flexibility to select which terms to define and how," so that the USPTO can evaluate the effectiveness of different types of glossaries.

The Federal Register Notice sets forth the following six general glossary requirements:

  1. 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.
  2. The glossary definitions cannot rely upon other parts of the specification for completeness, or upon any incorporation by reference to other sources such as patents, published patent applications, or non-patent literature references.
  3. A glossary definition establishes limits for a term by presenting a positive statement of what the term means. A glossary definition cannot consist solely of a statement of what the term does not mean, and cannot be open-ended.
  4. Definitions provided in the glossary cannot be disavowed elsewhere in the application. For example, a definition cannot be presented in the glossary along with a sentence that states that the definition is not to be considered limiting.
  5. A glossary definition may include the usage of examples, synonyms, and exclusions. However, the glossary definition cannot consist solely of a list of examples, synonyms, and/or exclusions.
  6. The glossary should include definitions that will assist in clarifying the claimed invention and creating a clear application file wrapper record. Suggestions for definitions include key claim terminology (such as a term with a special definition), substantive terms within the context of the invention, abbreviations, acronyms, evolving technological nomenclature, relative terms, terms of degree, and functional terminology including 35 U.S.C. 112(f) functional limitations (previously 35 U.S.C. 112, sixth paragraph). If a definition is provided in the glossary for any 35 U.S.C. 112(f) functional limitations, then an additional suggestion would be to include the identification of the corresponding structure for performing the claimed function, in addition to any disclosure of the structure elsewhere in the specification.

Effect of Glossary Definitions

According to the Federal Register Notice, an applicant will not be permitted to "subsequently disavow the meaning of any term that has already been defined in the glossary section." Moreover," [e]xcept for the correction of typographical errors, the glossary definitions cannot be amended or deleted during examination." Thus, "[t]he examiner will consider the glossary section as controlling for the meaning of the terms defined in the glossary section."

Watching From the Sidelines

Since I don't usually oversee the prosecution of patent applications examined in Technology Centers 2100, 2400, 2600 or 3600, I likely will not have the opportunity to participate in the USPTO Glossary Pilot Program. Nevertheless, I will be watching with interest from the sidelines.

In other news from the USPTO, the USPTO has published an updated version of the MPEP that reflects changes to patent laws and rules in effect as of November 29, 2013 (including the America Invents Act and the Technical Corrections Act, but not the Patent Law Treaty Implementation Act).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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