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.
There are a number of formal conditions that must be satisfied for participation in the Glossary Pilot Program:
- 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.
- The application must contain a specification in the English language.
- 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.
- A Certification and Petition to Make Special under the Glossary Pilot Program must be filed concurrently with the application.
- The application cannot contain more than four independent claims and 30 claims in total.
- 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.
- Finally, the application must be electronically filed.
A timely petition will be granted in an application that satisfies the conditions discussed above and complies with the following requirements:
- The glossary must be placed at the beginning of the detailed description section of the specification and identified with its own heading.
- The glossary definitions cannot rely upon other parts of the specification for completeness or upon any incorporation by reference to other sources.
- 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.
- The glossary definitions cannot be disavowed elsewhere in the application.
- The glossary definitions may include examples, synonyms and exclusions, but cannot consist solely thereof.
- The glossary should include definitions that will assist in clarifying the claimed invention and creating a clear application file wrapper record.
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.