[Federal Register Volume 79, Number 59 (Thursday, March 27, 2014)]
[Notices]
[Pages 17137-17139]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-06792]



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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2013-0041]


Glossary Pilot Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) is initiating a Glossary Pilot Program to study how the 
inclusion of a glossary section in the specification of a patent 
application at the time of filing the application improves the clarity 
of the patent claims and facilitates examination of patent applications 
by the USPTO. Currently, there is no requirement that a glossary 
section be provided by an applicant as part of the patent application 
specification. In order to participate in the Glossary Pilot Program, 
an applicant will be required to include a glossary section in the 
patent application specification to define terms used in the patent 
application. The pilot is testing to see if definitions in the glossary 
section enhance patent quality and improve the clarity of patent 
claims, by enabling the USPTO and the public to more fully understand 
the meaning of the patent claims. This notice outlines conditions, 
eligibility requirements, and guidelines of the pilot program, which 
will govern acceptance of an application into, and examination under, 
the Glossary Pilot Program. Applications accepted into this pilot 
program will receive expedited processing by placing them on an 
examiner's special docket prior to the first Office action, and will 
have special status up to issuance of a first Office action.

DATES: Effective Date: June 2, 2014.
    Duration: The Glossary Pilot Program will run for six months from 
its effective date or until the USPTO accepts 200 grantable petitions 
under this pilot program, whichever occurs first. The USPTO may extend 
the pilot program (with or without modification) for an additional six 
months. The USPTO reserves the right to terminate the pilot program at 
any time.

FOR FURTHER INFORMATION CONTACT: Seema Rao, Director Technology Center 
2100, by telephone at 571-272-0800; by facsimile transmission to 571-
273-0800; or by electronic mail at [email protected].

SUPPLEMENTARY INFORMATION: 

I. Background

    On June 4, 2013, the White House Office of the Press Secretary 
issued a press release titled ``FACT SHEET: White House Task Force on 
High-Tech Patent Issues,'' which listed a series of Legislative 
Recommendations and Executive Actions ``designed to protect innovators 
from frivolous litigation and ensure the highest-quality patents in our 
system.'' See The White House Web site at http://www.whitehouse.gov/the-press-office/2013/06/04/fact-sheet-white-house-task-force-high-tech-patent-issues. Executive Action 2 relates to developing strategies 
to improve claim clarity, specifically with regard to functional 
claiming in the context of software, such as by the use of glossaries 
in patent application specifications.
    In response to this executive action, the USPTO sought public input 
on the idea of using glossaries to improve claim clarity, particularly 
a pilot program focused on the use of glossaries in patent 
applications. The USPTO held a Software Partnership Meeting on October 
17, 2013, at U.C. Berkeley School of Law about Strategies for Improving 
Claim Clarity through the use of glossaries that included presentations 
from the USPTO and members of the public. The meeting announcement, 
agenda, presentations, and video transcript of the meeting are 
available on the USPTO Web site at http://www.uspto.gov/patents/init_events/glossary_initiative.jsp. Eight written comments were received 
and also are available on the Web site at the above link. After 
considering the public input, the USPTO designed the Glossary Pilot 
Program outlined herein to be flexible, accommodate various application 
drafting styles, and provide useful glossary information for examiners 
to utilize during examination.

II. Glossary Pilot Program Structure

    Applicants who wish to participate in the Glossary Pilot Program 
must provide, upon the filing date of an eligible patent application: 
(1) A petition to make special using Form PTO/SB/436 (titled 
``Certification And Petition To Make Special Under The Glossary Pilot 
Program''); and (2) a formal glossary section as part of the patent 
application specification. Form PTO/SB/436 is available at http://www.uspto.gov/patents/init_events/glossary_initiative.jsp. Use of 
this form will help the USPTO to quickly identify Glossary Pilot 
Program submissions and facilitate timely processing of such 
submissions. The Office of Management and Budget (OMB) has determined 
that, under 5 CFR 1320.3(h), Form PTO/SB/436 does not collect 
``information'' within the meaning of the Paperwork Reduction Act of 
1995.
    No fee is required for submission of petitions using Form PTO/SB/
436. The $130.00 fee for a petition under 37 CFR 1.102 (other than 
those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for 
petitions to make special based upon the procedure specified in this 
notice.
    As explained further in Section III of this notice, the glossary 
section should contain definitions of claim terms as well as any other 
terms applicant deems appropriate that satisfy the requirements of this 
notice. The requirements placed upon glossary definition submissions 
are designed to promote participation by providing participants the 
flexibility to select which terms to define and how best to define the 
selected terms. Receiving a variety of glossary submissions from 
different participants will afford the USPTO the opportunity to 
evaluate their effectiveness in clarifying claim language. The pilot 
program will be limited to certain software-related technology 
examination areas within the USPTO.
    The Glossary Pilot Program will run for six months or until the 
USPTO accepts 200 grantable petitions under this pilot program, 
whichever occurs first. Applications eligible for participation in the 
pilot program must be classified in technological fields that fall 
under the examination jurisdiction of USPTO Technology Centers 2100, 
2400, and 2600 or the Business Methods area of Technology Center 3600. 
In order for the USPTO to accept an application into the pilot program, 
the application must meet all of the conditions and requirements set 
forth in Section III of this notice, and applicant also must submit a 
completed Form PTO/SB/436. The USPTO may reevaluate the workload and 
resources needed to administer the pilot program at any time. The USPTO 
will provide notice of any substantive changes to the program at least 
thirty (30) days prior to implementation of the change.
    Applications that meet the conditions and requirements of this 
notice will be accepted into the Glossary Pilot Program. Although new 
patent applications are normally taken up for examination in the order 
of their United States filing date, applications accepted into this 
pilot program will receive expedited processing by placing them on an 
examiner's special docket prior to the first Office action, and will 
have special status up to issuance of a first Office action. These 
applications will then be placed on the examiner's regular amended 
docket after applicant's

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response to the first Office action, unless designated special in 
accordance with another established procedure (e.g., Accelerated 
Examination, Prioritized Examination, Special Based on Applicant's Age, 
etc.).

III. Conditions and Requirements for Participation in the Glossary 
Pilot Program

    A. Conditions: A petition to make special under the Glossary Pilot 
Program (Form PTO/SB/436) will be granted in an application if the 
requirements in Section III.B and the following conditions are all 
satisfied:
    (1) The application must be: (a) An original, non-reissue, non-
provisional utility application filed under 35 U.S.C. 111(a) that does 
not claim the benefit of a prior filed U.S. application (i.e., cannot 
be a continuation or divisional application), except the application 
can claim benefit of a provisional application; or (b) a continuation-
in-part application claiming the benefit of a prior non-provisional 
utility application under 35 U.S.C. 120 or 365(c) filed for the 
purposes of providing a glossary in accordance with this program. The 
application cannot be an international application, national stage 
application filed under 35 U.S.C. 371, design application, or plant 
application. Further, the application cannot also participate in any 
Patent Prosecution Highway (PPH) program.
    (2) Upon filing, the application must contain a specification in 
the English language including a glossary section that meets all the 
Requirements in section III.B of this notice.
    (3) Upon filing, all benefit and priority claims must be included 
in an application data sheet (see 37 CFR 1.76 and 1.78). If the 
application claims priority to one or more foreign applications, a copy 
of each such foreign application must be submitted concurrently with 
the filing of the application. If any prior-filed application (U.S. or 
foreign) is not written in the English language, an English-language 
translation of such prior-filed application must be submitted 
concurrently with the filing of the application with a statement that 
the translation is accurate. This requirement is intended to assist the 
examiner, by ensuring that the examiner is timely provided with the 
documentation needed to confirm that the definitions in the glossary 
are supported in the priority document(s). In order to make and perfect 
benefit and priority claims, the application must still satisfy all 
applicable conditions and regulations, including 37 CFR 1.55, 1.76, and 
1.78.
    (4) A completed Form PTO/SB/436 (titled ``Certification and 
Petition To Make Special Under the Glossary Pilot Program'') must be 
filed concurrently with the filing of the application. Form PTO/SB/436 
is available at http://www.uspto.gov/patents/init_events/glossary_initiative.jsp.
    (5) Upon filing, the application must contain at least one claim, 
but no more than four independent claims, and thirty total claims. The 
application must not contain any multiple dependent claims. For 
applications containing more than four independent claims or thirty 
total claims, or any multiple dependent claims, applicant must file a 
preliminary amendment in compliance with 37 CFR 1.121 canceling the 
excess claims and/or the multiple dependent claims at the time the 
application is filed.
    (6) In order to be eligible for the Glossary Pilot Program, the 
application must be classified in one of the U.S. patent 
classifications (USPCs) examined by USPTO Technology Centers 2100, 
2400, or 2600 or the Business Methods area of Technology Center 3600 
when the petition decision is rendered. The USPTO Office of Patent 
Classification provides listings of the USPCs that are examined by 
particular art units, and makes these listings available at http://www.uspto.gov/patents/resources/classification/index.jsp, under the 
heading ``Relationships between classifications and organizations.'' 
The applicant may not know the classification of the application at the 
time of filing the application. The USPTO will determine whether this 
requirement is satisfied once the application is in condition for 
examination and the petition is being decided.
    (7) The application and all follow-on papers must be filed via EFS-
Web.
    (8) If applicant also requests advancement of examination based on 
another established procedure (e.g., Accelerated Examination, 
Prioritized Examination, Special Based on Applicant's Age, etc. in 
addition to the Glossary Pilot Program), then the application must 
satisfy all of the conditions and requirements of the other 
procedure(s), including payment of any fees required by the other 
procedure(s), in addition to the conditions and requirements specified 
herein for the Glossary Pilot Program. For example, if applicant is 
requesting participation in both the Glossary Pilot and Accelerated 
Examination programs, then the application must comply with the lower 
claim cap (i.e., 3 or fewer independent claims and no more than 20 
claims total) for the Accelerated Examination program in order to be 
accepted into both programs.
    B. Requirements: A timely petition to make special under the 
Glossary Pilot Program (Form PTO/SB/436) will be granted in an 
application that satisfies all the conditions of Section III.A and 
complies with all the following requirements:
    (1) The glossary must be placed at the beginning of the detailed 
description portion of the original specification, identified with a 
heading, and presented on filing the application. The glossary cannot 
be, for example, a separate paper, an appendix to the specification, or 
part of an information disclosure statement. Additionally, the glossary 
cannot be a follow-on submission made after the filing date of the 
application.
    (2) The glossary definitions cannot rely upon other parts of the 
specification for completeness, or upon any incorporation by reference 
to other sources such as patents, published patent applications, or 
non-patent literature references.
    (3) A glossary definition establishes limits for a term by 
presenting a positive statement of what the term means. A glossary 
definition cannot consist solely of a statement of what the term does 
not mean, and cannot be open-ended.
    (4) Definitions provided in the glossary cannot be disavowed 
elsewhere in the application. For example, a definition cannot be 
presented in the glossary along with a sentence that states that the 
definition is not to be considered limiting.
    (5) A glossary definition may include the usage of examples, 
synonyms, and exclusions. However, the glossary definition cannot 
consist solely of a list of examples, synonyms, and/or exclusions.
    (6) 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 including 35 U.S.C. 112(f) functional 
limitations (previously 35 U.S.C. 112, sixth paragraph). If a 
definition is provided in the glossary for any 35 U.S.C. 112(f) 
functional limitations, then an additional suggestion would be to 
include the identification of the corresponding structure for 
performing the claimed function, in addition to any disclosure of the 
structure elsewhere in the specification.

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    C. Decision on Petition To Make Special Under the Glossary Pilot 
Program (Form PTO/SB/436): If applicant files a petition using Form 
PTO/SB/436, the USPTO will decide the petition once the application is 
ready for examination. If the petition is granted, the application will 
receive expedited processing up until the time of the first Office 
action, in accordance with all applicable laws, regulations, and 
policies. In particular, the application will be placed on the 
examiner's special docket prior to the first Office action, and will 
have special status up to issuance of the first Office action. 
Thereafter, the application will be placed on the examiner's regular 
amended docket, unless designated special in accordance with another 
established procedure (e.g., Accelerated Examination, Prioritized 
Examination, Special Based On Applicant's Age, etc.).
    If applicant files an incomplete Form PTO/SB/436, or if an 
application accompanied by Form PTO/SB/436 does not comply with the 
requirements set forth in this notice, the USPTO will notify the 
applicant of the deficiency by issuing a notice, and applicant will be 
given only one opportunity to correct the deficiency, if correctable. 
If applicant still wishes to participate in the Glossary Pilot Program, 
applicant must make appropriate corrections within one month or thirty 
(30) days of the mailing date of the notice, whichever is longer. The 
time period for reply is not extendable under 37 CFR 1.136(a). If 
applicant fails to correct the deficiency indicated in the notice 
within the time period set forth therein, the application will not be 
eligible for the Glossary Pilot Program, and the application will be 
taken up for examination in accordance with standard examination 
procedures, unless designated special in accordance with another 
established procedure (e.g., Accelerated Examination, Prioritized 
Examination, Special Based On Applicant's Age, etc.). An originally-
filed glossary providing explicit definitions on the record will 
control the interpretation of the relevant claim terms, whether or not 
the petition is granted.
    D. Interviews: Standard interview practice and procedures 
applicable to regular ex parte prosecution will be available for 
applications participating in the Glossary Pilot Program. Applications 
accepted into the Glossary Pilot Program that also participate in the 
First Action Interview (FAI) Pilot Program must meet all the 
requirements and procedural limitations of the FAI Pilot Program.
    E. Examination: During examination, in applications claiming 
benefit of an earlier application under 35 U.S.C. 119, claims that 
include terms defined in the glossary section will be examined to 
ensure they comply with the requirements of 35 U.S.C. 112(a) in order 
to determine their effective filing date in accordance with standard 
examining procedure. An applicant cannot subsequently disavow the 
meaning of any term that has already been defined in the glossary 
section submitted on filing. Except for the correction of typographical 
errors, the glossary definitions cannot be amended or deleted during 
examination. The examiner will consider the glossary section as 
controlling for the meaning of the terms defined in the glossary 
section.

    Dated: March 24, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-06792 Filed 3-26-14; 8:45 am]
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