In an effort to combat criticisms about poor quality and ambiguity in software and business method patents, the USPTO has announced a new “Glossary Pilot Program” that encourages applicants to provide a glossary of clear definitions for important claim terms.
Patent applicants who include such a glossary can benefit from expedited processing up to the first Office Action. In addition, the USPTO is hopeful that the clarity resulting from the use of a glossary will improve examination and patent quality, resulting in more certainty for patent applicants and those who are accused of infringing the patents.
Here are the key features of the new Glossary Initiative that patent applicants need to know:
- Only new applications filed on or after June 4, 2014 are eligible. The Glossary Pilot Program is only available to original, non-provisional applications. Continuation, divisional, reissue and national stage applications are not eligible. However, continuations-in-part and utility applications that claim priority to a provisional application may be eligible for the program. The request to participate in the Program must accompany the original filing.
- Only certain technologies are eligible. The Program is only open to applications that the USPTO assigns to its Technology Center 2100 (Computer Architecture, Software, Information Security), 2400 (Computer Networks, Multiples Communication), 2600 (Communications), or the Business Methods area of Technology Center 3600. Although an applicant may suggest a particular classification, Technology Center assignment is ultimately a decision of the USPTO. So, an applicant won’t know whether it will satisfy this requirement until after it files the application.
- Act fast – supplies are limited. The Pilot is only available to the first 200 applicants, or until December 31, 2014, whichever occurs first.
- Limit your claims. The application may contain no more than 4 independent claims, no more than 30 total claims, and no multiple dependent claims.
- Formatting requirements apply. The glossary must be at the beginning of the Detailed Description section of the specification, identified with a heading, and presented on filing the application. The glossary can’t be a separate filing, an appendix, or added after the filing date.
- The definitions must be useful. According to the USPTO: “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 (such as a term with a special definition), substantive terms within the context of the invention, abbreviations, acronyms, evolving technological nomenclature, relative terms, terms of degree, and functional terminology.”
- The definitions must not be open-ended or incomplete. The glossary can’t refer to or rely on other parts of the application, nor may it incorporate other documents by reference. The glossary may include examples, but a particular definition may not rely solely on examples. In addition, the glossary cannot define a term solely by what it doesn’t mean.
- The applicant must not contradict the definitions. The description may not disavow or contradict the claim terms, such as by stating that the definitions aren’t limiting. This requirement applies to other parts of the application, as well as subsequent communications with the USPTO.
- Use the form and file electronically. The application must include a completed USPTO Form PTO-SB-436, and it must be filed through the USPTO’s electronic filing system.
- The Glossary Pilot Program provides a quicker, but not necessarily the fastest, option. Expedited processing is likely to result in a much shorter wait time than the current 19-to-24 month average wait for first action in software and business method patent applications. However, expedited processing is not a guarantee of action within any particular time period. Other options, such as the USPTO’s Track One Examination Program, typically yield a final result within one year of the filing date. That said, the Glossary Pilot is certainly a less expensive option: Track One requires a substantial ($2,000 – $4,000) additional filing fee.