THE USPTO ANNOUNCES A NEW GLOSSARY PILOT PROGRAM IN RESPONSE TO AN EXECUTIVE ORDER FROM THE PRESIDENT

In June 2013, the White House issued a series of Executive Actions concerning high-tech patent issues. Executive Action No. 2 concerned functional claiming, specifically, improving functional claim clarity, and possible glossary usage in patent specifications. The White House assigned Executive Action No. 2 to the USPTO, stating: “The AIA made important improvements to the examination process and overall patent quality, but stakeholders remain concerned about patents with overly broad claims—particularly in the context of software. The PTO will provide new targeted training to its examiners on scrutiny of functional claims and will, over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.”

On March 26, 2014, the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced the launch of its new Glossary Pilot Program. The pilot will begin on June 2 and run through December 31, 2014 (or until the USPTO accepts 200 grantable petitions under this pilot program), and 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. “We recognize that a patent with clearly defined boundaries provides notice to the public to help avoid infringement, as well as avoid costly and needless litigation down the road,” said Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO.

Currently, there is no requirement that a glossary section be provided by an applicant as part of the patent application specification.

To participate in the Glossary Pilot Program, an applicant will be required to include a glossary section in the patent application specification to define terms used in the patent application. The program is testing to see if definitions in the glossary section enhance patent quality and improve the clarity of patent claims, by enabling the USPTO and the public to more fully understand the meaning of the patent claims. Applications accepted into this pilot program will receive expedited processing and be placed 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.

The USPTO designed the Glossary Pilot Program to be flexible, accommodate various application drafting styles, and provide useful glossary information for examiners to utilize during examination. Applications eligible for participation in the pilot program 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. 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.

Also, the application must be: (a) an original (non-reissue, non-provisional) utility application filed under 35 U.S.C. § 111(a) that is not a continuation or divisional 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.

Other conditions for the glossary include:

  • 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.

For more information about the Glossary Pilot Program, please visit

https://www.uspto.gov/patent/initiatives/glossary-initiative