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USPTO to Roll Out Glossary Pilot Program

The United States Patent and Trademark Office has announced the initiation of a pilot program to study the effectiveness of glossaries in specifications of US patent applications. The program is part of an overall White House initiative aimed at improving the clarity of patent claims, particularly with respect to functional claiming of software and business methods.

To qualify for participation, a petition is required in addition to the following:

  • The application must be classified in technological fields that fall under examination jurisdiction of USPTO Technology Centers 2100, 2400, and 2600, or the Business Methods area of Technology Center 3600.
  • The application must include a formal glossary section as part of the specification. Each glossary definition must present a positive statement of what the term means and cannot consist solely of a statement of what the term does not mean. Furthermore, the definitions cannot rely upon other parts of the specification or incorporation by reference for completeness. The definitions in the glossary also cannot be disavowed in other parts of the specification.
  • The application cannot claim priority to an earlier filed non-provisional US application or be a national stage of an international application. However, it can claim priority to a US provisional application.
  • The application cannot have more than four independent claims or thirty total claims.

The program begins on June 2, 2014 and will run for six months or until the first 200 petitions have been accepted. Accepted applications will receive expedited processing by placing them on an examiner’s special docket prior to the first Office Action and will retain special status up to issuance of the first Office Action.