1. INTRODUCTION

The U.S. Patent and Trademark Office recently introduced a new pilot program, to start on June 2, for the purpose of improving clarity in patent claims.  The program, formally called the Glossary Pilot Program, grew out of a White House Task Force on High-Tech Patent Issues. One of a number of executive actions issued by the Task Force relates to enhancing claim clarity of software-related patent applications.

To participate in the program, applicants will be required to provide, on the filing date of the application, a petition to make special and a formal glossary section as part of the patent application specification.  In return, the application will be placed on an examiner’s special docket and receive expedited processing up to issuance of a first office action.  The program is scheduled to run for six months, until December 2, 2014, or until 200 applications are filed, whichever comes first.

  1. CONDITIONS

There are a number of formal conditions that must be satisfied for participation in the Glossary Pilot Program:

  1. The application must be a) an original, non-reissue, non-provisional utility application that does not claim the benefit of a prior-filed U.S. application, except the application can be based on a provisional application, or b) a continuation-in-part application claiming the benefit of a prior non-provisional application filed for the purpose of providing a glossary.
  2. The application must contain a specification in the English language.
  3. All priority claims must be included in an application data sheet with the filing of the application. If claiming foreign priority, a copy of each foreign application must be submitted concurrently with the filing of the application, along with a certified English translation for any foreign language priority document.
  4. A Certification and Petition to Make Special under the Glossary Pilot Program must be filed concurrently with the application.
  5. The application cannot contain more than four independent claims and 30 claims in total.
  6. As the program relates specifically to software-related patents, the application must be classified in one of USPTO Technology Centers 2100, 2400, or 2600 or in the Business Method Area of Technology Center 3600.
  7. Finally, the application must be electronically filed.
  1. REQUIREMENTS

A timely petition will be granted in an application that satisfies the conditions discussed above and complies with the following requirements:

  1. The glossary must be placed at the beginning of the detailed description section of the specification and identified with its own heading.
  2. The glossary definitions cannot rely upon other parts of the specification for completeness or upon any incorporation by reference to other sources.
  3. The glossary definitions must establish limits for a term by presenting a positive statement of what the term means. It cannot be open-ended or consist solely of a statement of what the term does not mean.
  4. The glossary definitions cannot be disavowed elsewhere in the application.
  5. The glossary definitions may include examples, synonyms and exclusions, but cannot consist solely thereof.
  6. The glossary should include definitions that will assist in clarifying the claimed invention and creating a clear application file wrapper record.
  1. CONCLUSION

Will applicants be willing to positively define their claim terms to improve clarity?

The reward for doing so will be expedited prosecution, which could be a significant time-saver in the crowded field of software-related patent applications.