Glossary Pilot Program, 17137-17139 [2014-06792]
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Federal Register / Vol. 79, No. 59 / Thursday, March 27, 2014 / Notices
I. Background
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
[Docket No.: PTO–P–2013–0041]
Glossary Pilot Program
United States Patent and
Trademark Office, Commerce.
ACTION: Notice.
AGENCY:
The United States Patent and
Trademark Office (USPTO or Office) is
initiating a Glossary Pilot Program to
study how the inclusion of a glossary
section in the specification of a patent
application at the time of filing the
application improves the clarity of the
patent claims and facilitates
examination of patent applications by
the USPTO. Currently, there is no
requirement that a glossary section be
provided by an applicant as part of the
patent application specification. In
order to participate in the Glossary Pilot
Program, an applicant will be required
to include a glossary section in the
patent application specification to
define terms used in the patent
application. The pilot is testing to see if
definitions in the glossary section
enhance patent quality and improve the
clarity of patent claims, by enabling the
USPTO and the public to more fully
understand the meaning of the patent
claims. This notice outlines conditions,
eligibility requirements, and guidelines
of the pilot program, which will govern
acceptance of an application into, and
examination under, the Glossary Pilot
Program. Applications accepted into
this pilot program will receive
expedited processing by placing them
on an examiner’s special docket prior to
the first Office action, and will have
special status up to issuance of a first
Office action.
DATES: Effective Date: June 2, 2014.
Duration: The Glossary Pilot Program
will run for six months from its effective
date or until the USPTO accepts 200
grantable petitions under this pilot
program, whichever occurs first. The
USPTO may extend the pilot program
(with or without modification) for an
additional six months. The USPTO
reserves the right to terminate the pilot
program at any time.
FOR FURTHER INFORMATION CONTACT:
Seema Rao, Director Technology Center
2100, by telephone at 571–272–0800; by
facsimile transmission to 571–273–
0800; or by electronic mail at
seema.rao@uspto.gov.
tkelley on DSK3SPTVN1PROD with NOTICES
SUMMARY:
SUPPLEMENTARY INFORMATION:
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Jkt 232001
On June 4, 2013, the White House
Office of the Press Secretary issued a
press release titled ‘‘FACT SHEET:
White House Task Force on High-Tech
Patent Issues,’’ which listed a series of
Legislative Recommendations and
Executive Actions ‘‘designed to protect
innovators from frivolous litigation and
ensure the highest-quality patents in our
system.’’ See The White House Web site
at https://www.whitehouse.gov/the-pressoffice/2013/06/04/fact-sheet-whitehouse-task-force-high-tech-patentissues. Executive Action 2 relates to
developing strategies to improve claim
clarity, specifically with regard to
functional claiming in the context of
software, such as by the use of glossaries
in patent application specifications.
In response to this executive action,
the USPTO sought public input on the
idea of using glossaries to improve
claim clarity, particularly a pilot
program focused on the use of glossaries
in patent applications. The USPTO held
a Software Partnership Meeting on
October 17, 2013, at U.C. Berkeley
School of Law about Strategies for
Improving Claim Clarity through the use
of glossaries that included presentations
from the USPTO and members of the
public. The meeting announcement,
agenda, presentations, and video
transcript of the meeting are available
on the USPTO Web site at https://
www.uspto.gov/patents/init_events/
glossary_initiative.jsp. Eight written
comments were received and also are
available on the Web site at the above
link. After considering the public input,
the USPTO designed the Glossary Pilot
Program outlined herein to be flexible,
accommodate various application
drafting styles, and provide useful
glossary information for examiners to
utilize during examination.
II. Glossary Pilot Program Structure
Applicants who wish to participate in
the Glossary Pilot Program must
provide, upon the filing date of an
eligible patent application: (1) A
petition to make special using Form
PTO/SB/436 (titled ‘‘Certification And
Petition To Make Special Under The
Glossary Pilot Program’’); and (2) a
formal glossary section as part of the
patent application specification. Form
PTO/SB/436 is available at https://
www.uspto.gov/patents/init_events/
glossary_initiative.jsp. Use of this form
will help the USPTO to quickly identify
Glossary Pilot Program submissions and
facilitate timely processing of such
submissions. The Office of Management
and Budget (OMB) has determined that,
under 5 CFR 1320.3(h), Form PTO/SB/
PO 00000
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17137
436 does not collect ‘‘information’’
within the meaning of the Paperwork
Reduction Act of 1995.
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 (other than those enumerated in
37 CFR 1.102(c)) is hereby sua sponte
waived for petitions to make special
based upon the procedure specified in
this notice.
As explained further in Section III of
this notice, the glossary section should
contain definitions of claim terms as
well as any other terms applicant deems
appropriate that satisfy the requirements
of this notice. The requirements placed
upon glossary definition submissions
are designed to promote participation by
providing participants the flexibility to
select which terms to define and how
best to define the selected terms.
Receiving a variety of glossary
submissions from different participants
will afford the USPTO the opportunity
to evaluate their effectiveness in
clarifying claim language. The pilot
program will be limited to certain
software-related technology
examination areas within the USPTO.
The Glossary Pilot Program will run
for six months or until the USPTO
accepts 200 grantable petitions under
this pilot program, whichever occurs
first. Applications eligible for
participation in the pilot program must
be classified in technological fields that
fall under the examination jurisdiction
of USPTO Technology Centers 2100,
2400, and 2600 or the Business Methods
area of Technology Center 3600. In
order for the USPTO to accept an
application into the pilot program, the
application must meet all of the
conditions and requirements set forth in
Section III of this notice, and applicant
also must submit a completed Form
PTO/SB/436. The USPTO may
reevaluate the workload and resources
needed to administer the pilot program
at any time. The USPTO will provide
notice of any substantive changes to the
program at least thirty (30) days prior to
implementation of the change.
Applications that meet the conditions
and requirements of this notice will be
accepted into the Glossary Pilot
Program. Although new patent
applications are normally taken up for
examination in the order of their United
States filing date, applications accepted
into this pilot program will receive
expedited processing by placing them
on an examiner’s special docket prior to
the first Office action, and will have
special status up to issuance of a first
Office action. These applications will
then be placed on the examiner’s regular
amended docket after applicant’s
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17138
Federal Register / Vol. 79, No. 59 / Thursday, March 27, 2014 / Notices
tkelley on DSK3SPTVN1PROD with NOTICES
response to the first Office action,
unless designated special in accordance
with another established procedure
(e.g., Accelerated Examination,
Prioritized Examination, Special Based
on Applicant’s Age, etc.).
III. Conditions and Requirements for
Participation in the Glossary Pilot
Program
A. Conditions: A petition to make
special under the Glossary Pilot
Program (Form PTO/SB/436) will be
granted in an application if the
requirements in Section III.B and the
following conditions are all satisfied:
(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 in
section III.B of this notice.
(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 such
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. This
requirement is intended to assist the
examiner, by ensuring that the examiner
is timely provided with the
documentation needed to confirm that
the definitions in the glossary are
supported in the priority document(s).
In order to make and perfect benefit and
priority claims, the application must
still satisfy all applicable conditions and
regulations, including 37 CFR 1.55,
1.76, and 1.78.
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18:40 Mar 26, 2014
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(4) A completed Form PTO/SB/436
(titled ‘‘Certification and Petition To
Make Special Under the Glossary Pilot
Program’’) must be filed concurrently
with the filing of the application. Form
PTO/SB/436 is available at https://
www.uspto.gov/patents/init_events/
glossary_initiative.jsp.
(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. For applications containing
more than four independent claims or
thirty total claims, or any multiple
dependent claims, applicant must file a
preliminary amendment in compliance
with 37 CFR 1.121 canceling the excess
claims and/or the multiple dependent
claims at the time the application is
filed.
(6) In order to be eligible for the
Glossary Pilot Program, the application
must be classified in one of the U.S.
patent classifications (USPCs) examined
by USPTO Technology Centers 2100,
2400, or 2600 or the Business Methods
area of Technology Center 3600 when
the petition decision is rendered. The
USPTO Office of Patent Classification
provides listings of the USPCs that are
examined by particular art units, and
makes these listings available at https://
www.uspto.gov/patents/resources/
classification/index.jsp, under the
heading ‘‘Relationships between
classifications and organizations.’’ The
applicant may not know the
classification of the application at the
time of filing the application. The
USPTO will determine whether this
requirement is satisfied once the
application is in condition for
examination and the petition is being
decided.
(7) The application and all follow-on
papers must be filed via EFS-Web.
(8) If applicant also requests
advancement of examination based on
another established procedure (e.g.,
Accelerated Examination, Prioritized
Examination, Special Based on
Applicant’s Age, etc. in addition to the
Glossary Pilot Program), 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.
For example, if applicant is requesting
participation in both the Glossary Pilot
and Accelerated Examination programs,
then the application must comply with
the lower claim cap (i.e., 3 or fewer
independent claims and no more than
20 claims total) for the Accelerated
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Sfmt 4703
Examination program in order to be
accepted into both programs.
B. Requirements: A timely petition to
make special under the Glossary Pilot
Program (Form PTO/SB/436) will be
granted in an application that satisfies
all the conditions of Section III.A and
complies with all 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. The glossary
cannot be, for example, a separate
paper, an appendix to the specification,
or part of an information disclosure
statement. Additionally, the glossary
cannot be a follow-on submission made
after the filing date of the application.
(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 references.
(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. However, the glossary
definition cannot 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.
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 including 35 U.S.C. 112(f)
functional limitations (previously 35
U.S.C. 112, sixth paragraph). If a
definition is provided in the glossary for
any 35 U.S.C. 112(f) functional
limitations, then an additional
suggestion would be 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.
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tkelley on DSK3SPTVN1PROD with NOTICES
Federal Register / Vol. 79, No. 59 / Thursday, March 27, 2014 / Notices
C. Decision on Petition To Make
Special Under the Glossary Pilot
Program (Form PTO/SB/436): If
applicant files a petition using Form
PTO/SB/436, the USPTO will decide the
petition once the application is ready
for examination. If the petition is
granted, the application will receive
expedited processing up until the time
of the first Office action, in accordance
with all applicable laws, regulations,
and policies. In particular, the
application 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. Thereafter, the application will
be placed on the examiner’s regular
amended docket, unless designated
special in accordance with another
established procedure (e.g., Accelerated
Examination, Prioritized Examination,
Special Based On Applicant’s Age, etc.).
If applicant files an incomplete Form
PTO/SB/436, or if an application
accompanied by Form PTO/SB/436 does
not comply with the requirements set
forth in this notice, the USPTO will
notify the applicant of the deficiency by
issuing a notice, and applicant will be
given only one opportunity to correct
the deficiency, if correctable. If
applicant still wishes to participate in
the Glossary Pilot Program, applicant
must make appropriate corrections
within one month or thirty (30) days of
the mailing date of the notice,
whichever is longer. The time period for
reply is not extendable under 37 CFR
1.136(a). If applicant fails to correct the
deficiency indicated in the notice
within the time period set forth therein,
the application will not be eligible for
the Glossary Pilot Program, and the
application will be taken up for
examination in accordance with
standard examination procedures,
unless designated special in accordance
with another established procedure
(e.g., Accelerated Examination,
Prioritized Examination, Special Based
On Applicant’s Age, etc.). An originallyfiled glossary providing explicit
definitions on the record will control
the interpretation of the relevant claim
terms, whether or not the petition is
granted.
D. Interviews: Standard interview
practice and procedures applicable to
regular ex parte prosecution will be
available for applications participating
in the Glossary Pilot Program.
Applications accepted into the Glossary
Pilot Program that also participate in the
First Action Interview (FAI) Pilot
Program must meet all the requirements
and procedural limitations of the FAI
Pilot Program.
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E. Examination: During examination,
in applications claiming benefit of an
earlier application under 35 U.S.C. 119,
claims that include terms defined in the
glossary section will be examined to
ensure they comply with the
requirements of 35 U.S.C. 112(a) in
order to determine their effective filing
date in accordance with standard
examining procedure. An applicant
cannot subsequently disavow the
meaning of any term that has already
been defined in the glossary section
submitted on filing. 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.
Dated: March 24, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of
the United States Patent and Trademark
Office.
[FR Doc. 2014–06792 Filed 3–26–14; 8:45 am]
BILLING CODE 3510–16–P
CONSUMER PRODUCT SAFETY
COMMISSION
[Docket No. CPSC–2009–0092]
Submission for OMB Review;
Comment Request—Clothing Textiles,
Vinyl Plastic Film
Consumer Product Safety
Commission.
ACTION: Notice.
AGENCY:
The Consumer Product Safety
Commission (Commission or CPSC)
announces that it has submitted to the
Office of Management and Budget
(OMB) a request for extension of
approval of a collection of information
from manufacturers and importers of
clothing, textiles, and related materials
intended for use in clothing under the
Standard for the Flammability of
Clothing Textiles (16 CFR part 1610)
and the Standard for the Flammability
of Vinyl Plastic Film (16 CFR part 1611)
under the Paperwork Reduction Act of
1995 (44 U.S.C. Chapter 35).
DATES: Written comments on this
request for extension of approval of
information collection requirements
should be submitted by April 28, 2014.
ADDRESSES: Submit comments about
this request by email: OIRA_
submission@omb.eop.gov or fax: 202–
395–6881. Comments by mail should be
sent to the Office of Information and
Regulatory Affairs, Attn: OMB Desk
SUMMARY:
PO 00000
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17139
Officer for the CPSC, Office of
Management and Budget, Room 10235,
725 17th Street NW., Washington, DC
20503. In addition, written comments
that are sent to OMB also should be
submitted electronically at https://
www.regulations.gov, under Docket No.
CPSC–2009–0092.
FOR FURTHER INFORMATION CONTACT:
Robert H. Squibb, U.S. Consumer
Product Safety Commission, 4330 East
West Highway, Bethesda, MD 20814;
telephone: 301–504–7923 or by email to
rsquibb@cpsc.gov.
SUPPLEMENTARY INFORMATION: In the
Federal Register of June 14, 2013 (78 FR
35875), the Consumer Product Safety
Commission (CPSC or Commission)
published a notice in accordance with
provisions of the Paperwork Reduction
Act of 1995 (44 U.S.C. Chapter 35) to
announce the CPSC’s intention to seek
extension of approval of a collection of
information from manufacturers and
importers who furnish guaranties for
products under 16 CFR parts 1610 and
1611.
A. Background
Clothing and fabrics intended for use
in clothing (except children’s sleepwear
in sizes 0 through 14) are subject to the
Standard for the Flammability of
Clothing Textiles (16 CFR part 1610).
Clothing made from vinyl plastic film
and vinyl plastic film intended for use
in clothing (except children’s sleepwear
in sizes 0 through 14) are subject to the
Standard for the Flammability of Vinyl
Plastic Film (16 CFR part 1611). The
standards set forth in 16 CFR parts 1610
and 1611 prescribe a test to help ensure
that articles of wearing apparel, and
fabrics and film intended for use in
wearing apparel, are not dangerously
flammable because of rapid and intense
burning. Children’s sleepwear and
fabrics and related materials intended
for use in children’s sleepwear in sizes
0 through 14 are subject to other, more
stringent flammability standards
codified at 16 CFR parts 1615 and 1616.
Pursuant to the Flammable Fabrics Act
of 1953 (FFA) (Pub. L. 83–88, 67 Stat.
111; June 30, 1953), the testing
procedures in 16 CFR parts 1610 and
1611 are mandatory for those firms that
issue guaranties.
Section 8 of the FFA (15 U.S.C. 1197)
provides that a person who receives a
guaranty in good faith that a product
complies with an applicable
flammability standard is not subject to
criminal prosecution for a violation of
the FFA resulting from the sale of any
product covered by the guaranty. For
example, a distributor or importer may
rely on a guaranty issued by another
E:\FR\FM\27MRN1.SGM
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Agencies
[Federal Register Volume 79, Number 59 (Thursday, March 27, 2014)]
[Notices]
[Pages 17137-17139]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-06792]
[[Page 17137]]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2013-0041]
Glossary Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) is initiating a Glossary Pilot Program to study how the
inclusion of a glossary section in the specification of a patent
application at the time of filing the application improves the clarity
of the patent claims and facilitates examination of patent applications
by the USPTO. Currently, there is no requirement that a glossary
section be provided by an applicant as part of the patent application
specification. In order to participate in the Glossary Pilot Program,
an applicant will be required to include a glossary section in the
patent application specification to define terms used in the patent
application. The pilot is testing to see if definitions in the glossary
section enhance patent quality and improve the clarity of patent
claims, by enabling the USPTO and the public to more fully understand
the meaning of the patent claims. This notice outlines conditions,
eligibility requirements, and guidelines of the pilot program, which
will govern acceptance of an application into, and examination under,
the Glossary Pilot Program. Applications accepted into this pilot
program will receive expedited processing by placing them on an
examiner's special docket prior to the first Office action, and will
have special status up to issuance of a first Office action.
DATES: Effective Date: June 2, 2014.
Duration: The Glossary Pilot Program will run for six months from
its effective date or until the USPTO accepts 200 grantable petitions
under this pilot program, whichever occurs first. The USPTO may extend
the pilot program (with or without modification) for an additional six
months. The USPTO reserves the right to terminate the pilot program at
any time.
FOR FURTHER INFORMATION CONTACT: Seema Rao, Director Technology Center
2100, by telephone at 571-272-0800; by facsimile transmission to 571-
273-0800; or by electronic mail at seema.rao@uspto.gov.
SUPPLEMENTARY INFORMATION:
I. Background
On June 4, 2013, the White House Office of the Press Secretary
issued a press release titled ``FACT SHEET: White House Task Force on
High-Tech Patent Issues,'' which listed a series of Legislative
Recommendations and Executive Actions ``designed to protect innovators
from frivolous litigation and ensure the highest-quality patents in our
system.'' See The White House Web site at https://www.whitehouse.gov/the-press-office/2013/06/04/fact-sheet-white-house-task-force-high-tech-patent-issues. Executive Action 2 relates to developing strategies
to improve claim clarity, specifically with regard to functional
claiming in the context of software, such as by the use of glossaries
in patent application specifications.
In response to this executive action, the USPTO sought public input
on the idea of using glossaries to improve claim clarity, particularly
a pilot program focused on the use of glossaries in patent
applications. The USPTO held a Software Partnership Meeting on October
17, 2013, at U.C. Berkeley School of Law about Strategies for Improving
Claim Clarity through the use of glossaries that included presentations
from the USPTO and members of the public. The meeting announcement,
agenda, presentations, and video transcript of the meeting are
available on the USPTO Web site at https://www.uspto.gov/patents/init_events/glossary_initiative.jsp. Eight written comments were received
and also are available on the Web site at the above link. After
considering the public input, the USPTO designed the Glossary Pilot
Program outlined herein to be flexible, accommodate various application
drafting styles, and provide useful glossary information for examiners
to utilize during examination.
II. Glossary Pilot Program Structure
Applicants who wish to participate in the Glossary Pilot Program
must provide, upon the filing date of an eligible patent application:
(1) A petition to make special using Form PTO/SB/436 (titled
``Certification And Petition To Make Special Under The Glossary Pilot
Program''); and (2) a formal glossary section as part of the patent
application specification. Form PTO/SB/436 is available at https://www.uspto.gov/patents/init_events/glossary_initiative.jsp. Use of
this form will help the USPTO to quickly identify Glossary Pilot
Program submissions and facilitate timely processing of such
submissions. The Office of Management and Budget (OMB) has determined
that, under 5 CFR 1320.3(h), Form PTO/SB/436 does not collect
``information'' within the meaning of the Paperwork Reduction Act of
1995.
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 (other than
those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for
petitions to make special based upon the procedure specified in this
notice.
As explained further in Section III of this notice, the glossary
section should contain definitions of claim terms as well as any other
terms applicant deems appropriate that satisfy the requirements of this
notice. The requirements placed upon glossary definition submissions
are designed to promote participation by providing participants the
flexibility to select which terms to define and how best to define the
selected terms. Receiving a variety of glossary submissions from
different participants will afford the USPTO the opportunity to
evaluate their effectiveness in clarifying claim language. The pilot
program will be limited to certain software-related technology
examination areas within the USPTO.
The Glossary Pilot Program will run for six months or until the
USPTO accepts 200 grantable petitions under this pilot program,
whichever occurs first. Applications eligible for participation in the
pilot program must be classified in technological fields that fall
under the examination jurisdiction of USPTO Technology Centers 2100,
2400, and 2600 or the Business Methods area of Technology Center 3600.
In order for the USPTO to accept an application into the pilot program,
the application must meet all of the conditions and requirements set
forth in Section III of this notice, and applicant also must submit a
completed Form PTO/SB/436. The USPTO may reevaluate the workload and
resources needed to administer the pilot program at any time. The USPTO
will provide notice of any substantive changes to the program at least
thirty (30) days prior to implementation of the change.
Applications that meet the conditions and requirements of this
notice will be accepted into the Glossary Pilot Program. Although new
patent applications are normally taken up for examination in the order
of their United States filing date, applications accepted into this
pilot program will receive expedited processing by placing them on an
examiner's special docket prior to the first Office action, and will
have special status up to issuance of a first Office action. These
applications will then be placed on the examiner's regular amended
docket after applicant's
[[Page 17138]]
response to the first Office action, unless designated special in
accordance with another established procedure (e.g., Accelerated
Examination, Prioritized Examination, Special Based on Applicant's Age,
etc.).
III. Conditions and Requirements for Participation in the Glossary
Pilot Program
A. Conditions: A petition to make special under the Glossary Pilot
Program (Form PTO/SB/436) will be granted in an application if the
requirements in Section III.B and the following conditions are all
satisfied:
(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 in section III.B of this notice.
(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 such 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. This requirement is intended to assist the
examiner, by ensuring that the examiner is timely provided with the
documentation needed to confirm that the definitions in the glossary
are supported in the priority document(s). In order to make and perfect
benefit and priority claims, the application must still satisfy all
applicable conditions and regulations, including 37 CFR 1.55, 1.76, and
1.78.
(4) A completed Form PTO/SB/436 (titled ``Certification and
Petition To Make Special Under the Glossary Pilot Program'') must be
filed concurrently with the filing of the application. Form PTO/SB/436
is available at https://www.uspto.gov/patents/init_events/glossary_initiative.jsp.
(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. For
applications containing more than four independent claims or thirty
total claims, or any multiple dependent claims, applicant must file a
preliminary amendment in compliance with 37 CFR 1.121 canceling the
excess claims and/or the multiple dependent claims at the time the
application is filed.
(6) In order to be eligible for the Glossary Pilot Program, the
application must be classified in one of the U.S. patent
classifications (USPCs) examined by USPTO Technology Centers 2100,
2400, or 2600 or the Business Methods area of Technology Center 3600
when the petition decision is rendered. The USPTO Office of Patent
Classification provides listings of the USPCs that are examined by
particular art units, and makes these listings available at https://www.uspto.gov/patents/resources/classification/index.jsp, under the
heading ``Relationships between classifications and organizations.''
The applicant may not know the classification of the application at the
time of filing the application. The USPTO will determine whether this
requirement is satisfied once the application is in condition for
examination and the petition is being decided.
(7) The application and all follow-on papers must be filed via EFS-
Web.
(8) If applicant also requests advancement of examination based on
another established procedure (e.g., Accelerated Examination,
Prioritized Examination, Special Based on Applicant's Age, etc. in
addition to the Glossary Pilot Program), 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. For example, if applicant is
requesting participation in both the Glossary Pilot and Accelerated
Examination programs, then the application must comply with the lower
claim cap (i.e., 3 or fewer independent claims and no more than 20
claims total) for the Accelerated Examination program in order to be
accepted into both programs.
B. Requirements: A timely petition to make special under the
Glossary Pilot Program (Form PTO/SB/436) will be granted in an
application that satisfies all the conditions of Section III.A and
complies with all 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. The glossary cannot
be, for example, a separate paper, an appendix to the specification, or
part of an information disclosure statement. Additionally, the glossary
cannot be a follow-on submission made after the filing date of the
application.
(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 references.
(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. However, the glossary definition cannot
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. 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 including 35 U.S.C. 112(f) functional
limitations (previously 35 U.S.C. 112, sixth paragraph). If a
definition is provided in the glossary for any 35 U.S.C. 112(f)
functional limitations, then an additional suggestion would be 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.
[[Page 17139]]
C. Decision on Petition To Make Special Under the Glossary Pilot
Program (Form PTO/SB/436): If applicant files a petition using Form
PTO/SB/436, the USPTO will decide the petition once the application is
ready for examination. If the petition is granted, the application will
receive expedited processing up until the time of the first Office
action, in accordance with all applicable laws, regulations, and
policies. In particular, the application 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.
Thereafter, the application will be placed on the examiner's regular
amended docket, unless designated special in accordance with another
established procedure (e.g., Accelerated Examination, Prioritized
Examination, Special Based On Applicant's Age, etc.).
If applicant files an incomplete Form PTO/SB/436, or if an
application accompanied by Form PTO/SB/436 does not comply with the
requirements set forth in this notice, the USPTO will notify the
applicant of the deficiency by issuing a notice, and applicant will be
given only one opportunity to correct the deficiency, if correctable.
If applicant still wishes to participate in the Glossary Pilot Program,
applicant must make appropriate corrections within one month or thirty
(30) days of the mailing date of the notice, whichever is longer. The
time period for reply is not extendable under 37 CFR 1.136(a). If
applicant fails to correct the deficiency indicated in the notice
within the time period set forth therein, the application will not be
eligible for the Glossary Pilot Program, and the application will be
taken up for examination in accordance with standard examination
procedures, unless designated special in accordance with another
established procedure (e.g., Accelerated Examination, Prioritized
Examination, Special Based On Applicant's Age, etc.). An originally-
filed glossary providing explicit definitions on the record will
control the interpretation of the relevant claim terms, whether or not
the petition is granted.
D. Interviews: Standard interview practice and procedures
applicable to regular ex parte prosecution will be available for
applications participating in the Glossary Pilot Program. Applications
accepted into the Glossary Pilot Program that also participate in the
First Action Interview (FAI) Pilot Program must meet all the
requirements and procedural limitations of the FAI Pilot Program.
E. Examination: During examination, in applications claiming
benefit of an earlier application under 35 U.S.C. 119, claims that
include terms defined in the glossary section will be examined to
ensure they comply with the requirements of 35 U.S.C. 112(a) in order
to determine their effective filing date in accordance with standard
examining procedure. An applicant cannot subsequently disavow the
meaning of any term that has already been defined in the glossary
section submitted on filing. 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.
Dated: March 24, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-06792 Filed 3-26-14; 8:45 am]
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