USPTO to trial new Glossary Pilot Program
The USPTO is to trial a new Glossary Pilot Program [1] that will offer expedited prosecution of patent applications that have an appropriate glossary of terms included within the specification. The trial is due to begin on 2 June 2014 and will last for an initial duration of six months, or until the USPTO accepts 200 grantable petitions under the program, whichever occurs first. During the initial trial period the pilot program is limited to computer-related inventions or business methods (applications examined under USPTO Technology Centres 2100, 2400, 2600 or the Business Methods section of Technology Centre 3600).
Normally, US applications are processed for examination in order of their US filing date. An application which is accepted onto the pilot program, however, will receive expedited processing by being placed onto an Examiner’s special docket prior to the first office action being issued. The expedited processing is somewhat limited however, as once a response to the first office action has been filed, the application will then be placed on the Examiner’s regular docket (barring the use of any other established procedures such as Accelerated Examination, Prioritized Examination etc.).
For an application to be accepted onto the program, the glossary section should contain definitions of claim terms as well as other terms the applicant deems appropriate. It has been suggested that suitable terms to be defined include abbreviations and acronyms and functional terminology, including functional limitations under 35 U.S.C. 112(f). It is a requirement that terms be defined by a positive statement of what the term means and cannot be defined solely by what the term doesn’t mean, nor can the definition consist solely of an open ended statement. However, a glossary definition can include examples, synonyms and exclusions.
Currently, there is no requirement for the specification of a US patent application to include a glossary of terms. The pilot program is being introduced to test whether a glossary can improve the quality of issued patents and to enhance the clarity of patent claims by enabling both the USPTO and the public to better understand the meaning of claim terms. Applicants may also benefit from a more restricted interpretation of claim terms in relation to prior art under the “broadest reasonable interpretation” employed by US examiners during examination.
[1] http://www.uspto.gov/patents/init_events/glossary_initiative.jsp
