The United States Patent and Trademark Office (USPTO) recently announced that it is continuing to accept applications into the Glossary Pilot. The Glossary Pilot will run until June 2, 2015, or until the USPTO accepts 200 grantable petitions, whichever occurs first. To date, the USPTO has granted more than 100 petitions and has more than 50 others pending.

Beginning on January 2, 2014, the Patent Office initiated the so-called “Glossary Pilot Program” to study how the inclusion of a glossary section in the specification of a patent application at the time of filing the application would improve the clarity of the patent claims and facilitate examination of patent applications by the USPTO. There is no requirement that a glossary section be provided by an applicant as part of the patent application specification, and terms that are not defined are given their ordinary plain meaning as would be understood by one of skill in the art. In order to participate in the Glossary Pilot Program, an applicant is required to include a glossary section in the patent application specification to define terms used in the patent application. Applications accepted 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.

Participation in the Glossary Pilot is relatively straightforward, with only three requirements. First, the application containing a glossary must be classified in software-related technological fields under the jurisdiction of Technology Centers 2100, 2400, 2600, or the Business Methods area of Technology Center 3600. Second, the application must be filed electronically using EFS-Web, which is how over 98% of applications are filed anyway. Third, the application must include a petition to make special using Form PTO/SB/436. No special fee is required.

The requirements for the glossary itself include:

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, but 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, 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.

For more information please see the USPTO’s webpage titled Glossary Initiative.

Tags: glossary pilot program, patent, Patent Prosecution, patents, USPTO

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