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Another Patent Acceleration Option: USPTO (United States Patent and Trademark Office) Initiates Glossary Pilot Program

Beginning June 2, 2014, patent applicants have another vehicle to accelerate examination of a newly- filed patent application – add a glossary.

The United States Patent and Trademark Office launched today a new pilot program on the use of a glossary section in a patent application for a computer-related or business method invention. The pilot aims to determine whether a glossary section in the specification of a patent application improves the clarity of patent claims and enhances patent quality by making the meaning of claims more clear to the USPTO and public. By adding a glossary and participating in the pilot program, applicants will have their applications examined out of turn.

To participate in the Glossary Pilot Program, applicants must provide the following upon the filing:

  1. Form PTO/SB/436, titled “Certification And Petition To Make Special Under The Glossary Pilot Program,” to be available here.
A formal glossary section that contains definitions of claim terms, as well as any other terms the applicant considers appropriate.

Only original non-provisional applications having no more than 30 total claims and four independent claims are eligible. 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 is waived.)

Applications must be classified in fields handled by USPTO Technology Centers 2100, 2400 or 2600, which are mainly computer-related areas, or Technology Center 3600 which covers business methods.

Applications accepted into this program 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. Afterwards, they will be placed on the examiner’s regular amended docket.

The Glossary Pilot Program will accept applications for an initial six months or until 200 grantable petitions are accepted, whichever occurs first. This pilot program arose from executive action initiated by the White House to improve claim clarity and public input received in written comments and at a Software Partnership Meeting.

Applicants interested in this program should carefully weigh the benefits and risks of including a glossary, and consider this pilot opportunity against other available options at the USPTO such as Track One examination.

Further information on various initiatives underway at the USPTO to allow applicants to advance their cases through accelerated examination, interview and after final options and Information Disclosure consideration is available at the USPTO website.

© 2023 Sterne KesslerNational Law Review, Volume IV, Number 86

About this Author

Salvador M. Bezos, Sterne Kessler Law Firm, Patent and Trademark Director

Mr. Bezos is a Director in the firm's Electronics Group where he provides services in the preparation and prosecution of patent applications before the United States Patent & Trademark Office.  His technical expertise covers many areas of computing including computer graphics, databases, networking, and complex computer architectures, as well as financial software products.

Michael V. Messinger, Patent Prosecution attorney, Sterne Kessler, law firm

Mr. Messinger is a director in the Electronics Group. He handles complex patent matters involving inter partes and post-grant review, reexamination, reissue and appeals. He works with company managers, directors and employees to identify and leverage intellectual property assets.

Mr. Messinger has extensive experience prosecuting U.S. and international patent applications and developing strategic patent portfolios. He has written and prosecuted numerous patent applications including those related to computer networking (Internet, World-Wide Web, Java technologies), communications...