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How to Speed Up Patent Prosecution: Add a Glossary of Terms

By Stephen B. Schott

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The White House’s recent executive actions related to patent applicationsincluded one proposal for adding a glossary of terms. In response, the USPTO held a hearing and invited comments on a proposal for how such a glossary might look and last week, released its Glossary Pilot Programrules.

The pilot program, which is optional, starts on June 2, 2014 and will be available to the first 200 accepted applications or for 6 months, whichever comes first. The program comes with a nice reward: If you provide a glossary and enter the program, the USPTO will review your application as if it was filed with a Petition to Make Special. This could reduce the application’s prosecution time by more than a third.

There are several requirements for participating in the program and also some requirements for the glossary itself, all of which are available from the USPTO.

Requirements for Program Participation

  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 below.
  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 the 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.
  4. The applicant must file a completed Form PTO/SB/436 titled ‘‘Certification and Petition To Make Special Under the Glossary Pilot Program’’ with the application filing.
  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.
  6. In order to be eligible for the Glossary Pilot Program, the application must be classified as a computer-related or business method patent application. This decision is made by the USPTO post-filing.
  7. The application and all following papers must be filed electronically with the USPTO via EFS-Web.
  8. If the applicant also requests advancement of examination based on another established procedure (e.g., Accelerated Examination, Prioritized Examination), 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.

6 Requirements for the Glossary

The glossary itself must meet 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, that is, an applicant cannot add the glossary after the initial filing.
  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 reference.
  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. The glossary definition cannot, however, 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. The USPTO suggests that 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 the glossary provides a definition for 35 U.S.C. 112(f) functional limitations, then the USPTO also suggests including the identification of the corresponding structure for performing the claimed function, in addition to any disclosure of the structure elsewhere in the specification.

The Patent Glossary Danger

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Most of the comments in support of the glossary section were vehemently positive, pointing out the need for clearer patents and defined terms that accused infringers can rely on. That said, the flip side of the glossary is a patent owner getting stuck with an ill-crafted definition in litigation. If you take advantage of this program, make sure that you work with your patent attorney to carefully craft the glossary and be sure not to include narrower definitions than you intend.

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