Software patents – New USPTO Pilot program to expedite examination
The USPTO has announced the launch of a new Glossary Pilot program designed to enhance claim clarity in patent specifications of software-related inventions. The pilot program commenced on 2 June 2014 and will run for an initial period of six months or until the USPTO has accepted 200 grantable petitions under the program whichever occurs first.
To qualify for admission to the Glossary Pilot program, the application must not be a divisional, continuation or re-issue application. Unfortunately, the application can also not be a US national phase application from a preceding PCT application. The application can be a continuation-in-part application that has been filed for the specific purpose of adding a glossary. The application and the petition to make special under the program must be filed on or after 2 June 2014 and must be accompanied by the priority document, if applicable. No additional fee is required and the normal fee for a petition to make special has been waived.
Importantly, the program is applicable only to software-related inventions and must fall within one of the specified Art Areas. More information regarding the relevant Art Areas can be obtained here.
The application must include a glossary containing definitions that will assist in clarifying the claimed invention. The glossary must be placed at the beginning of the detailed description portion of the original specification of the application, be identified with a heading and be presented on filing of the application. The glossary should contain definitions of claim terms as well as any other terms which the applicant deems appropriate to satisfy the requirements of the program.
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. 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. 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. If a definition is provided in the glossary for any functional limitations, then it is suggested 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.
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.
If a petition to make special under this pilot program is accepted, the application will receive special status resulting in expedited issuance of a first office action on the merits. After a response has been filed, the application will revert to the examiner’s normal amended docket.