Glossary Pilot Report – It’s a Matter of Semantics?

Under Executive Action #2 issued by the White House in June 2013, the USPTO initiated a Glossary Pilot Program on June 2, 2014, to promote patent claim clarity “by use of glossaries in patent specifications to assist examiners in the software field.” Since then, the USPTO has received 214 total filings under the Glossary Pilot Program.

Now that the program has ended, the USPTO has released the preliminary results for the program. According to the USPTO, out of the 214 total filings received, 168 petitions had been granted to participate in the Glossary Pilot Program, and to date all of the 168 applications under the pilot program have completed a first office action.

As expected, most of the filings relate to software or business method applications, and their distribution among the four technology areas comprises:

• 41% of the applications in the pilot program are in Technology Center 2100 (i.e., Computer Architecture, Software, and Information Security);
• 26% are in Technology Center 2400 (i.e., Computer Networks, Multiplex communication, Video Distribution, and Security);
• 15% are in Technology Center 2600 (i.e., Communications); and
• 18% are in Technology Center 3600 (i.e., Business Method).

According to the USPTO, most applicants used the glossaries to address functional terms, structural elements, and other substantive terms in the applications.

Out of the total number of applications, a quarter of them defined 6-10 terms, while others varied between less than 5 terms to over 11 terms. The chart below shows the distribution of definitions per glossary.

So was the initiative successful? The answer may depend on your perspective. According to the USPTO, the Office of Patent Quality Assurance found “no significant difference in quality review score of first Office actions when comparing pilot and non-pilot applications” and “no significant difference in quality review score across pilot applications when correlated to descriptive statistics of glossaries.” However, from the examiners’ perspective, most found the additional definitions helpful in 61% of the submissions. And from the applicants’ perspective, “virtually all respondents indicated that the glossary facilitated compact prosecution and improved claim clarity.”