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USPTO’s New “Glossary Initiative”


By
Smith & Hopen PA

Introduction

For the past two years, we at Smith & Hopen have been including a glossary of claim terms in a vast majority, if not all, of our patent applications. Glossaries were included to clarify claim scope, facilitate examination during prosecution of the patent application, and enhance quality of the resulting patent. On June 2nd, 2014, the U.S. Patent and Trademark Office ("USPTO") is implementing the Glossary Pilot Program for high-tech (e.g., software, communications, etc.) patent applications. If an application is accepted into this program (see the requirements below), the application will receive expedited examination at no cost.

 

Summary of conditions and requirements

The major requirements and limiting factors for acceptance into the Glossary Pilot Program are that the application must be a new application, must contain a maximum number of claims (4 independent, 30 total), and must be directed to high technology (Technology Centers 2100, 2400, 2600, or 3600 (business methods section)). From an administrative standpoint, only a petition needs to be completed and filed concurrent with the application. There is no charge for the petition or entry into the program. See below for a full list of the conditions and requirements for acceptance into the Glossary Pilot Program.

 

Duration

The Glossary Pilot Program will run for six (6) months after the effective date or until 200 patent applications are accepted into the program, whichever comes first. If the USPTO finds this program to be successful, the program duration can be extended.

 

Conclusion

Though we can't say that the USPTO implemented this program because of Smith & Hopen's use of glossaries for years, we also can't say that they didn't! All jokes aside, I anticipate that the Glossary Pilot Program will be successful, so long as the patent applications in the program do include substantively helpful glossaries that clarify claim scope, facilitate prosecution, and enhance patent quality. I would hope that the program is extended, as 200 grantable petitions or 6-month duration, whichever comes first, is a relatively short time period.

 

Conditions for Acceptance into Glossary Pilot Program

  • New nonprovisional patent application (may claim priority to a provisional application) or new continuation-in-part patent application
  • Application must be in English.
  • Claims for priority must be contained in the Application Data Sheet.
  • Completed Form PTO/SB/436, titled "Certification and Petition To Make Special Under the Glossary Pilot Program"
  • Maximum of four (4) independent claims and thirty (30) total claims; no multiple dependent claims
  • Application must be eligible for classification in one of the following high-tech Technology Centers:
    • 2100 (computer architecture, software and information security)
    • 2400 (computer networks, multiplex communication, video distribution, and security)
    • 2600 (communications)
    • 3600 (business methods section only)
  • Application must be filed electronically.
  • Compliance with any other USPTO program, if applicable

 

Requirements for Acceptance into Glossary Pilot Program

  • Glossary placed at the beginning of the detailed description section of the original specification.
  • Glossary cannot rely on other references or other portions of the specification for completeness.
  • Each claim term must be positively defined in the glossary, rather than simply stating what the claim term is not. Definition also cannot be open-ended.
  • Definitions in the glossary cannot be disavowed elsewhere in the application.
  • Glossary definition cannot be only examples, synonyms, or exclusions, though these can be used to clarify the glossary definition.
  • Glossary should include definitions that clarify the scope of the claimed invention.





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