Glossary Pilot Program for Software Patents Begins on June 2, 2014

Intellectual Property Update

Date: April 03, 2014

The United States Patent and Trademark Office (USPTO) has announced a pilot program to determine if including a glossary section in the specification of the patent application may improve patent quality. The pilot program begins on June 2, 2014 and lasts for six months or until the first 200 petitions have been accepted. The program was announced on March 27 in the Federal Register.

Applications accepted into the pilot program will receive expedited processing and will be placed on an examiner’s special docket prior to the first Office Action, giving them special status up to issuance of the first Office Action. After the response to the first Office Action is filed, the applications will be placed on an examiner’s regular amended docket.

The pilot program is limited to applications for computer-related and business method inventions (Tech Centers 2100, 2400 and 2600, and Business Methods area 3600). The application also must be an original, non-reissue, non-provisional utility application that does not claim the benefit of another application (except a provisional or continuation-in-part application). The application may not include more than four independent claims or 30 total claims.

Applicants who wish to participate in the pilot program must provide the following:

  • A petition to make special using Form PTO/SB/436 titled “Certification And Petition To Make Special Under The Glossary Pilot Program.’’ The $130 fee for a petition under 37 CFR 1.102 is waived.
  • A formal glossary section as part of the patent application specification. The glossary must be placed at the beginning of the detailed description portion of the original specification, and should be clearly identified with a heading.

With the exception of correcting minor typographical errors, the glossary definitions may not be amended or deleted during examination, nor may they be disavowed in the disclosure or during prosecution. Therefore, an applicant should carefully weigh the benefits (i.e., expedited prosecution) against the risks of including a glossary. It is further expected that including a glossary will greatly affect enforcement of a patent because it will be used in claim construction during litigation.

FOR MORE INFORMATION

For more information, please contact:

Megan D. Dortenzo
216.566.5636
Megan.Dortenzo@ThompsonHine.com

Ava Billimoria
937.443.6972
Ava.Billimoria@ThompsonHine.com

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