[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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