Guidelines for Applicants under the Glossary Pilot Program
These guidelines provide information to assist applicants and their representatives in preparing an application and petition to make special for entry into the Glossary Pilot Program. Applications accepted into the Glossary Pilot Program will receive special status up to the issuance of the first Office action. Applicant is advised that a written restriction requirement is considered an Office action. The Glossary Pilot Program begins June 2, 2014 and will run for six (6) months or until the USPTO accepts 200 grantable petitions, whichever occurs first. These guidelines provide general information on specific requirements under this pilot program and are merely supplemental to the program requirements as set forth in the Federal Register notice, Glossary Pilot Program FR 79, 17137 (March 27, 2014) [PDF] . It is recommended that applicant(s) and their representatives review the notice in detail and specifically make note of the Glossary Pilot Program’s conditions and requirements when considering whether to participate.
For further information or assistance with specific questions, please visit the Glossary Initiative and/or call Seema S. Rao, Director, Technology Center 2100 at (571) 272-0800 or send email to: Glossary@uspto.gov.
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Conditions and Requirements of the Glossary Pilot Program.
To qualify for the Glossary Pilot Program, all of the conditions and requirements set forth in the Federal Register Notice dated March 27, 2014 must be satisfied. In particular, applicants are reminded that:
1. The application must be an original, non-reissue, non-provisional utility application that does not claim benefit of a prior filed non-provisional U.S. application, unless the application is a continuation-in-part application filed for the purposes of providing a glossary.
2. The application and the petition to make special using Form PTO/SB/436 must be filed on or after June 2, 2014 and before either 200 petitions are granted and/or six months after the June 2, 2014 start date, whichever occurs first.
3. The claimed invention must be classified in one of the following Art Areas (see USPC class [PDF] ) information to determine if the utility application would be subject to examination by one of the technology areas listed).
4. The application must include a glossary that is placed at the beginning of the detailed description portion of the original specification of the application, identified with a heading, and presented on filing of the application. The glossary should include definitions that will assist in clarifying the claimed invention, creating a clear application file wrapper history, and must comply with all of the requirements set forth in Section III.B of the notice. [PDF]
5. The applicant must file the application, the petition to make special, and all follow-on papers using EFS-Web.
6. The application must contain at least one claim, but no more than four independent claims, and no more than 30 claims total.
Status of the petition to make special:
7. The applicant can determine the status of a petition by electronically accessing the file history of the application via “Private PAIR.”
8. The applicant will receive a written (Grant or Dismissal) decision in response to the petition to make special, and can view the following document in the file history of the application via “Private PAIR”.
A. Glossary Pilot Request Granted (GPRG)
B. Glossary Pilot Request Dismissed/Denied (GPRD)
9. The applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing a petition to make special in order to participate in the Glossary Pilot Program is not proper. Applicant should review the reason(s) stated in the decision dismissing the petition to make special and make a determination that an error was made by the Office in not granting the petition before filing a petition under 37 CFR 1.181. It is recommended for the applicant to contact the person who signed the decision dismissing the petition if further explanation is needed.
Decision on petition to make special:
10. The petition will be decided by a Point of Contact in the Technology Centers (TC-Glossary-POC) to which the application is assigned. To ensure uniformity to the maximum extent possible, all of the deciding officials for the pilot program within each Technology Centers have received the same initial training. If the petition and supporting materials are deemed to be deficient in any manner, the petition will be dismissed and applicant will be provided with an explanation of the deficiency. Applicant will be provided an opportunity to correct the deficiency and resubmit the petition for inclusion into the pilot program. The renewed petition will be reviewed by the TC-Glossary-POC for approval if all deficiencies are corrected. If the renewed petition is found to be insufficient, the petition will be denied and the decision will again include an explanation for the denial. Under this pilot program it is possible that correction of the deficiencies may require the filing of a Continuation-in-Part application, if new matter is necessary to correct the deficiencies.
11. Any preliminary amendment filed after the application has entered into the pilot program (i.e., after the mailing date of the decision granting the petition to make special) but before the issuance of the first Office action will be entered unless such amendment causes the application to be non-compliant with the pilot program’s requirements.