United States Patent and Trademark Office to Launch Glossary Pilot Program
April 17, 2014
Hamilton Brook Smith Reynolds Alert
- The new program currently is available only by petition for certain software-oriented patent applications.
- Applicants are required to include a glossary of patent term definitions in return for expedited prosecution.
- Claim scope and definiteness of the issued patent may ultimately be affected, along with the cost of patent prosecution.
On June 2, 2014, the United States Patent and Trademark Office (“USPTO”) will launch its optional Glossary Pilot Program, which is only for certain software-related or business method patent applications. The pilot program encourages patent applicants to include a glossary of terms used in their patent applications, in return for which applicants receive expedited processing of their applications, if accepted into the pilot program. This pilot program stems from executive action by the White House to address concerns about clarity of functional claim terms, particularly in software-related patents. The pilot program is scheduled to run for six months or until 200 applications have been accepted into the program, whichever occurs first.
An eligible patent application must:
i. be an original, utility, U.S. non-provisional application (cannot be a continuation or divisional);
ii. be in Technology Center 2100, 2400 or 2600 (software-related), or in Technology Center 3600 (business method related); and
iii. have no more than four independent claims and 30 total claims.
How to Request Participation in the Glossary Pilot Program
At the time of filing an eligible patent application, an applicant would need to file a petition to make special and include a formal glossary section as part of the patent application specification. No additional fee is required to participate in the pilot program. The applicant will not know if the application is accepted until the USPTO decides the petition, which is not reviewed until the application is ready for examination.
Requirements for the Glossary
The glossary section should contain definitions of claim terms, as well as any other terms, the applicant deems appropriate. The USPTO asserts that applicants have a certain degree of flexibility in choosing how best to define the chosen terms, but still must abide by the following restrictions, among others:
- A definition establishes limits for a term by presenting a positive statement of what the term means.
- A definition cannot consist solely of a statement of what the term does not mean, and cannot be open-ended.
- A definition 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.
- A definition may include the usage of examples, synonyms, and exclusions. However, the definition cannot consist solely of a list of examples, synonyms, and/or exclusions.
What Expedited Processing Means
Applications accepted into the 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.
A number of commenters on the initiative that led to the Glossary Pilot Program raised valid concerns regarding the addition of a glossary to a patent application. These concerns include that adding a glossary would unduly raise the expense associated with preparing and filing a patent application, as well as would give rise to concerns that the definitions within the glossary would be used to narrow the scope of the claim terms during litigation. Rather than mitigate these concerns, the USPTO instead chose to pursue clarity by, among other things, requiring that the definitions in the glossaries not be open-ended and disallowing statements that the definitions are not to be considered limiting.
Applicants considering the Glossary Pilot Program should also consider the other USPTO programs, each with particular requirements, which may allow expedited processing of examination of an application. The links below provide detailed information regarding the requirements for these programs.
- Track 1 Prioritized Patent Examination Program
- Patent Prosecution Highway Pilot Program
- Accelerated Examination