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(Scrabble letters graphics courtesy of Antoniu at the impressively creative and always fun, fuzzimo.com)

     The United States Patent Office (“PTO”) officially began its ‘Glossary Pilot Program”, in the summer of 2014.  As noted in an earlier post (link here), the program responds to President Obama’s June 2013 executive actions ordering the PTO to formulate strategies to improve patent claim clarity (to view the PTO’s 2-part video from the October 2013 roundtable re, see link here).  For the moment, we’ll put aside the obvious potential problems that that could arise for patentees in the program (e.g. the potential burden on patentees in terms of time, money and the narrowing effect it could have on claims scope).

     The program was initially scheduled to end in December 2014, but the program was extended, probably because the 200 application limit had not yet been reached. According to the PTO, it will continue accepting applications into the Glossary Pilot Program until June 2, 2015. Applications that are accepted into the Glossary Pilot Program get expedited examination up to the mailing of the First Office Action.  According to the PTO’s recent press release:

It is simple to participate in the Pilot; there are only three requirements. First, the application containing a glossary must be classified in software-related technological fields under the jurisdiction of Technology Centers 2100, 2400, 2600, or the Business Methods area of Technology Center 3600. Second, the application must be filed electronically using EFS-Web. Third, the application must include a petition to make special using Form PTO/SB/436.

     For some detail as to what the Patent Examiners and Supervisors will be looking for in participating patent applications, see our prior post, here.

     Applications that are accepted into the program will receive special status up until the first Office Action is issued (including any restriction requirements). Applications must be original (e.g. not a reissue) and may not claim priority to prior-filed non-provisional applications. One exception, though, is that the application may be a continuation-in-part if filed to include the glossary. No more than 4 independent claims and no more than 30 total claims are allowed.  Be sure however, to check the PTO’s latest updates and rules regarding the Glossary Pilot Program in the event that any of these rules have changed. 

     Only certain technology areas/art units are included in the program (see PTO cite above).  A full list of the included art units is here. The glossary must be included with the application upon filing, which must be done through the PTO’s electronic filing system, EFS-Web.

For more information on the PTO’s Glossary Pilot Program, see the Federal Register notice, here.  Have you filed an application that is part of the Glossary Pilot program? Tell us about your experience.

This post is intended to convey general information only and should not be construed as a legal opinion or legal advice.  We disclaim liability for any errors or omissions and readers should not take any action that relies upon the information contained herein. Readers should consult their own attorney concerning their own situation and  any specific legal questions. The writing herein does not establish any form of attorney-client relationship with us.

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