A
Abandon: To relinquish (explicitly or implicitly) a potential patent right.
An application becomes abandoned by failure to respond to an office
action within the required time, or by formal (“express”) declaration. A
patent right can also be abandoned by simple inaction.
Abandoned Invention: An unexploited invention on which no patent
application is filed for a long, unexplained time during which others may
have entered the field.
Abandonment of Contest: In interference cases, the concession of
priority or abandonment of the invention by a party, with the written
consent of the assignee when an assignment has been made.
Abandonment of Invention: To relinquish rights in an invention. In the
U.S., an invention is considered to be abandoned, if within a
reasonable time after the invention is completed, no actions are taken to
make the invention publicly known. MPEP 2134, MPEP 2138.03
Abandonment of Patent Application: To relinquish, either by express
abandonment or by inaction, a patent application. Abandonment by
inaction typically involves failure to take a required action (e.g., filing an
incomplete response or not paying a fee) during the statutory period for
taking the action. A U.S. patent application that was unavoidably or
unintentionally abandoned can be revived by petition. When a device is
abandoned, it is returned to the public domain. See: Petition to Revive,
Public Domain. MPEP 711
Abridgement: A summary of the disclosure of a patent specification,
formerly written by the U.K. patent Office Examiner. In the U.S., this is
called an Abstract. See Abstract of the Disclosure.
Absolute Novelty: An invention must not have been sold or disclosed
anywhere in the world (not simply the country where a patent application
is to be filed) before a valid patent can be granted. This is a requirement
of some patent offices, but not the U.S. Patent and Trademark Office.
Absolute Novelty creates an absolute bar to patentability in such
countries.
Abstract of the Disclosure: A short description of the novel features of
an invention. The abstract is written by the applicant, and appears on the
front page of a patent. See: Abridgement. MPEP 608.01(b)
Acceptance: The formal decision by the U.K. Patent Office that a patent
should be granted. See: Allowance.
Action: An official communication from a patent office, usually
requiring some response by the applicant. MPEP 707
Action, Advisory: An action (U.S.) advising an applicant of the status of
an application, typically advising him/her that the amendment filed just
prior to the mailing of the advisory action does not place the application
in condition for allowance of the claims. MPEP 714.13
Action, Examiner's: A written communication from a patent Examiner
that contains requirements and/or documents the reasons behind the
Examiner's patentability decisions and usually sets a time for response by
the applicant. MPEP 707
Action, Final: An Office action that contains a final rejection of one or
more claims or another final action. See: Final Rejection. MPEP 706.07,
MPEP 706.07(a), MPEP 706.07(b)
Action, First: The first examination on the merits of the patent claims.
Action, Office (Official Action): Notice of an Examiner's decision sent
to an inventor or his/her attorney, giving the position of the USPTO on a
pending patent application. Also known as an “Official Letter” in terms
of U.K. patents.
Action, Post-Granting: Actions that can be taken by the USPTO after
issuance of a patent. Such actions include: Adverse decisions, certificates
of correction, disclaimers, delayed fee actions, error corrections,
expirations, extensions, suit actions, actions for reissue, reexamination,
assignment or withdrawal actions.
Action, Quayle: An action requiring correction of informalities after an
application is otherwise in condition of allowance. MPEP 714.14, MPEP
706.07(f), MPEP 710.02(b)
Active Inducement to Infringe: One may be held liable for patent
infringement as a result of actively encouraging another to infringe even
though the inducer has not made, used, sold, offered for sale, or imported
the patented invention.
Adjacency Operator: A search operator that allows records to be found
where terms are present and are within a specified number of words of
each other or, are within a single sentence or paragraph. (Operators are
e.g. ‘ADJ’, ‘NEAR’ or ‘PARAGRAPH’.)
Admissions by Applicant: A statement by an applicant for a patent that
can be used to deny the patentability of an invention. In some cases, the
admission will be used regardless of whether the statement is true or not.
MPEP 2129
Affidavit: A written, sworn statement that includes facts in support of
the patentability of an invention. Under 37 CFR 1.131, an affidavit or
declaration is used to "swear back" (or stand behind) a reference and an
affidavit or declaration under 37 CFR 1.132 is used in traverse (or
dispute) a rejection. See: CFR, Declaration, Swearing Back, Traverse.
MPEP 715, MPEP 716
Agent: A person who provides professional services in patent matters;
often an attorney.
Aggregation: A ground for rejection of a patent claim that is based on a
lack of cooperation among the elements of an invention. This term is
seldom used today. MPEP 2173.05(k)
Allowance: A decision by a patent office that an applicant is entitled to a
patent on an invention. See: Acceptance. MPEP 1303
Allowance, Notice of: A written notice by a patent office that an
applicant is entitled to a patent on an invention. In the U.S., an issue fee
must be paid within the period for response or the application will
become abandoned. See: Fee, Issue. MPEP 1303
Alpha Subclasses: In the U.S. patent classification system, this denotes
a subclass that has an alphabetical suffix. MPEP 902.01
Amendment: A change in any part of a patent application made after it
is filed. An amendment can also be communication made from the
applicant to the patent office directing or requesting that a change be
made to the application. Amendments are typically made to overcome
rejections, objections or requirements issued by the patent office. MPEP
714
AND: A Boolean operator which requires all specified terms to appear in
a record. See: Boolean Logic.
ANDNOT: A Boolean operator (sometimes specified as ‘NOT’) which
requires a first term to be present and a second term to be absent from a
record. See: Boolean Logic.
Annuity: An annual fee that must be paid to most patent offices to
maintain a patent in force. In the U.S., the fee is called a maintenance fee.
See: Fee, Maintenance; Fee, Renewal.
Answer Set: A collection of patent search results that contain the search
terms requested.
Answer Set L Number: A numbered label that is applied to each
collection of search results that has been assembled. The L numbers
increase sequentially for each new search.
Anticipation: Prior art negates novelty. Anticipation exists when the
prior art indicates that a patent application lacks novelty by fully
describing something within a claim. MPEP 2131, MPEP 2131.01,
MPEP 2131.02, MPEP 2131.03
Apparatus: See: Machine.
Apparatus Claim: This refers to a patent claim that describes the
structure of a piece of equipment, and is embraced by the expression
"machine." An apparatus is one of the statutorily recognized forms of
patentable subject matter.
Appeal: A request that a higher authority review an adverse patentability
decision (usually after a rejection of a claim) by an Examiner. In the
USPTO, an appeal is first taken to the Board of Patent Appeals and
Interferences. An appeal usually includes a Notice of Appeal and an
Appeal Brief. See: Appeal Brief, Notice of Appeal. MPEP 1205
Appeal Brief: A written communication submitted to a higher authority
reviewing an adverse patentability decision (rejection of a claim) by an
Examiner. In the U.S., an appeal brief must set forth arguments and cite
authorities (e.g., statutes and case law) in support of the patentability of
the claim or claims under appeal. MPEP 1206
Appellant: A patent applicant who has appealed the decision of a patent
Examiner to a higher authority. MPEP 1201
Applicant: The person or corporate body that applies for a patent and
intends to 'work' the invention (to manufacture or license the
technology). Under U.S. law the applicants must be the inventor(s),
except under unusual circumstances. MPEP 605
Application (for Patent): A written document seeking patent protection
that is filed with the patent office of the country where protection is
sought. In the United States, the application must include a petition;
specification; disclosure of the invention that would, without undue
experimentation, enable a person of ordinary skill in the art to make and
use the invention; at least one claim; drawings (if drawings are necessary
to understand the invention); and disclosure of what the inventor views as
the best mode for practicing the invention. Claims that define the
invention and the scope of the coverage are also included. The
specification is the narrative portion of the application, and includes the
enabling disclosure and the description of the preferred embodiments, or
best mode of practicing the invention. It may include a summary of the
invention; a brief background on the invention, including prior art or the
problem solved. See: Best Mode, Claim, Drawing, Specification. MPEP
605
Application, Continuation: A second (or subsequent) application
directed to the same invention claimed in a prior co-pending application
by the same applicant.
Application, Continuation-in-Part (CIP): An application by the same
applicant repeating either a substantial portion or all of an earlier (regular
or nonprovisional) application and adding matter not disclosed in the
original application that is filed before the original application becomes
abandoned or patented. Also called a CIP. The disclosure of the parent is
usually amplified, and the CIP may make a claim either for the original,
parent application, or a different invention. A CIP is accorded the benefit
of the filing date of the parent application to the extent of the two
applications' common subject matter.
Application, Co-Pending: A patent application that is pending (not
abandoned or issued) at the same time another related patent application
is pending.
Application, Divisional: If the patent office decides that an application
covers too large an area to be considered as a single patent, then the
application is split into one or more divisional applications. A divisional
application shares the same specification as the "parent," but claims a
different invention.
Application, Original: A patent application that is not a reissue
application. An original application may actually be the first application,
or it may be a continuing application. MPEP 201.04(a)
Application, Parent: An earlier regular (nonprovisional) patent
application disclosing a given invention. MPEP 201.04
Application, Reissue: A reissue application is an application for a patent
to take the place of an unexpired patent that is defective in some one or
more particulars. MPEP 201.05(a)
Application Date: The date on which the application is filed at a patent
office. In most countries, the date determines who will receive the patent
when two or more inventors claim the same invention. This is not the
case in the U.S., where determination is based on the first to invent, not
the first to file.
Application Number: An identifying number assigned by a patent office
to an application at the time of filing. In the U.S., a sequential system is
used, while some patent offices use an annual system; applications are
numbered beginning with number one at the start of each year following
the last two digits of the year of issue. For example, the number 99/16996
is the 16,996th application in 1999.
Application Series: A grouping of application serial numbers (the last
six digits of the application number) having the same series code. MPEP
503
Apportionment of Profit: As a measure of damages in patent
infringement litigation, apportionment generally refers to dividing the
profits on the sale of a particular piece of apparatus or a product
according to the percentage of cost or sale price attributable to the
patented invention and a portion not so attributable. In instances where
the entire product is patented or the patented component contributes
essentially all of the market value, apportionment is not required.
Art: The field of technology.
Art Unit: A subunit of a patent examining group. Also called Group Art
Unit or Examining Group. MPEP 502
Article of Manufacture: A product, a physical thing. There is no clear
difference between an article of manufacture and a machine. Under U.S.
law (35 USC 101), one of the statutory classes of invention. MPEP 2105,
MPEP 2106, MPEP 2114
Assert: To attempt to prevent an unlicensed party from practicing an
invention, by enforcing one ’s patent rights.
Assignee: The organization or entity that owns or has acquired the rights
to a patent. This organization may license the patent to other
organizations. MPEP 301
Assignment: The transfer by a party (the assignor) of all or part of its
right, title and interest in a patent or patent application to another party
(the assignee). In this regard, patents have the attributes of personal
property. See: License. MPEP 301
Assignor: The owner of patent rights, who transfers all or part of those
rights to another. MPEP 301
Attorneys' Fees Award: In exceptional cases in patent infringement
litigation, the court may require the losing party to pay the attorneys' fees
of the prevailing party.
Auslegeschrift: An examined German patent application (second
publication) now eliminated. See: Offenlegungsschrift, Patentschrift.
Automated Patent System (APS): The automated search program
created by the USPTO that has an onl ine catalogue of patents that goes
back to August 1971. Many other patent databases rely on this service.
B
Background of the Invention: A section heading in the specification of
a U.S. patent application that includes a statement of the technical field
of the invention and a description of related art. MPEP 608.01(d)
Backward Citation Searching: Searching for the patents that a patent
query cites or references (e.g., searching for Gen -1 patents). See:
Citation, Citation Generation.
Basic Patent: The first member of a patent family. This may or may not
be the first published patent, merely the first patent that was documented
by a particular patent database service such as the Derwent World
Patents Index.
Belated Opposition: See: Revocation.
Best Mode: In the U.S., a patent application is required to disclose the
best means known to the applicant (at the time of filing) of practicing the
invention. MPEP 608.01(h), MPEP 2165, MPEP 2165.01, MPEP 165.02
Bibliographic Information: Data concerned with the publication of a
patent document. Bibliographic information includes information found
on the front page of a patent application, such as the publication number
and date, application number and date, priority details, names of the
inventors and the applicant.
Biological Material: Material referenced in the disclosure of a patent
application that is capable of self-replicating, either directly or indirectly.
Examples include bacteria, fungi (including yeasts), algae, protozoa,
eukaryotic cells, cell lines, hybridomas, plasmids, viruses, plant tissue
cells, lichens and seeds. MPEP 2403, MPEP 2403.01, MPEP 2403.02
Biotechnology: The emerging field encompassed by genetic engineering,
gene splicing, hybridomas, monoclonal antibodies, etc.
Board of Patent Appeals and Interferences (Board of Appeals): A
board of senior Examiners that hears appeals of adverse patentability
decisions. MPEP 1202, MPEP 1203
Boolean Logic: Named after nineteenth-century mathematician George
Boole. Boolean logic is a form of algebra in which all values are reduced
to either TRUE or FALSE. It provides a way to combine search terms
using operators such as ‘AND’, ‘OR’, and ‘NOT.’
Brevet: French for "patent."
Broader than the Invention: Coverage by a claim of more information
than is disclosed in the application or patent.
C
Cancellation of Claims: Removal of claims from a patent application,
usually by way of an amendment. See: Amendment.
Cancelled Matter: Matter that is removed from the specification or
claims of a patent application.
CAS Registry: CAS, or the Chemical Abstracts Service, contains the
largest and most current database of chemical substance information in
the world, and is comprised of more than 21 million organic and
inorganic substances and 32 million sequences. The CAS Registry
mostly covers substances identified from the scientific literature from
1957 to the present, with some classes (such as fluorine- and siliconcontaining
compounds) going back to the early 1900s. Each substance is
identified by a unique numeric identifier called a CAS Registry Number.
CASSIS: The Classification and Search Support Information System.
Found at most Patent and Trademark Depository Libraries, this system of
CD-ROMs allows a patent or trademark searcher to easily comb through
the records of the USPTO. CASSIS is updated by the USPTO six times a
year. See: Patent and Trademark Depository Library, U.S. Patent and
Trademark Office.
CCPA: See: Court of Customs and Patent Appeals.
Certificate of Correction: Issued upon patentee request due to a minor
error made either by the U.S. Patent and Trademark Office or the
applicant, such as printing, typographical, or clerical errors. See: Action,
Post-Granting.
Certificate of Mailing, Express Mail: For certain actions before the
U.S. Patent and Trademark Office, onl y an express mail filing by
certificate according to 37 CFR 1.10 will be accorded the certified date of
mailing. Examples of such mailings include: filing of a new patent
application, or a request for continuation, CIP, or division.
Certificate of Mailing, Regular Mail: For certain responses to the U.S.
Patent and Trademark Office (for example, an amendment or payment of
the issue fee), a signed certificate of mailing will be effective under 37
CFR 1.8. The referenced response will be considered filed timely as of
the certified date.
CFR (Code of Federal Regulations): The Code of Federal Regulations.
Title 37 includes rules and regulations for patents, trademarks, and
copyrights.
Characterizing Clause: The part of a German or European style claim
which indicates the novel features of the invention.
Chartered Patent Agent: A British-qualified patent agent who is a
fellow of the Chartered Institute of Patent Agents.
CIP: See: Application, Continuation-in-Part.
Citation: A list of references that are considered to be relevant prior art
and which may have contributed to the "narrowing" of the original
application. Citations may be made by the Examiner (usually appearing
on the front page of a patent) or author (usually appearing in the
Specification and/or Information Disclosure Statement). The Examiner
can also cite references from technical journals, textbooks, handbooks
and sources. See: Front Page, Information Disclosure Statement,
Specification.
Citation Family Structures: Pre-defined citation generation relationship
groupings.
Citation Generation: A set of citations/references either given or
received by the patents in the initial set of records.
Generation 0 ("Gen 0") -- Patents in the initial set of records
Generation +1 ("Gen +1") -- The patents that cite/reference the
patents in the initial set
Generation -1 ("Gen -1") -- The patents that the initial set of
patents cites/ references
Claim: What the inventor is stating to be unique about the invention.
The claims become the actual monopoly granted to the invention. Claims
define the scope of protection granted to the invention. MPEP 608.01(i),
MPEP 608.01(k), MPEP 608.01(m), MPEP 1309.01
Claim, Base: A claim from which another claim depends, either directly
or indirectly. MPEP 608.01(n)
Claim, Dependent: This is a claim that makes express reference to and
depends on a prior claim and, thereby, incorporates by reference all of
the recitals of the prior claim. This claim must be read as if it contained
its own express recitals plus the recitals of every claim or claims from
which it depends. Claims that do not depend from another are referred to
as independent claims.
Claim, Generic: A claim to a generic invention, usually including within
its scope the subject matter of subordinate (more narrow) claims. MPEP
806.04(d), (e)
Claim, Independent: This is a claim that stands by itself and is not
dependent on another claim. MPEP 608.01(m)
Claim, Jepson: A form of a claim with a preamble that describes what is
known in the art followed by a transitional phrase such as "The
improvement comprising" and then a description of the claimed
improvement. MPEP 2129
Claim, Markush: A form of a claim that allows claiming of members of
a finite group by means of a phrase like "A member of the class
consisting of" followed by a list of the members of the group linked by
the word "and." The members of a Markush group must have at least one
property that is mainly responsible for their membership in the group.
MPEP 803.02, MPEP 2173.05(h)
Claim, Multiple Dependent: A claim that refers back to and depends
from more than one other claim. The other claims may be referred to in
the alternative onl y. MPEP 608.01(n)
Claim, Process: A claim that recites the steps of a process. The process
may be a method of making something, a process of operating something
or a process of using something. 35 USC 101.
Claim, Product: A claim that recites the elements or features of a
product (e.g., a machine, an article of manufacture or a composition of
matter). 35 USC 101.
Claim, Species: A claim that describes ("reads on") a species of an
invention. A generic claim generally reads on all the claimed species of
an invention. A single, distinct embodiment of an invention. Up to five
species may be claimed in one application. A claim within the scope of,
but not co-extensive with, another claim in the same patent or
application. See: Reads On. MPEP 806.04(d), MPEP 806.04e
Claim, Specific: A claim setting forth details of an invention and usually
to onl y one form thereof; may or may not be accompanied by a generic
claim.
Claimed Invention: The process, machine, apparatus or creation that the
inventor(s) claim to have invented and for which they seek patent
protection.
Class and Subclass: These are the categories that a patent office would
use to classify or sort the various types of patentable inventions.
Classification: A subdivision of technology (and hence, patents) by
subject matter. MPEP 903.01
Classmark: A combination of letters and numbers that indicate a
heading within a patent classification system.
Clear (Clean) Hands Doctrine: In the U.S., the principle that equitable
relief onl y comes when the request is made in good faith.
Colorable Deviation: A small change (in a product or process) made
from what is claimed, solely to avoid literal infringement of the claim.
Combining Prior Art: Under Section 102 of the U.S. Patent Statute, a
claim must be identically disclosed in a single prior art reference in order
to be rejected as being anticipated by prior art. Under Section 103 of the
Patent Statute (which deals with the standard of obviousness), one is
permitted to employ a single prior art reference or combine two or more
references to render a claim obvious if such a combination would be
apparent to one skilled in the art. Under either standard, a patent
application claim may be rejected by a patent Examiner, or a patent claim
may be ruled invalid by a court.
Commissioner of Patents and Trademarks: The highest appointed
official (by the President and confirmed by the Senate) of the U.S. Patent
and Trademark Office. All communications to the Office (or to the Patent
Cooperation Treaty) are addressed to the Commissioner.
Completion of Invention: Conception and reduction to practice of an
invention. This is also known as "making an invention." Conception is
considered the formation in the mind of the inventor of a definite and
permanent idea. The reduction to practice may be a constructive
reduction to practice (filing of a patent application containing sufficient
disclosure to enable a person skilled in the art to make and use the
invention), or an actual reduction to practice (making and testing the
invention sufficiently to demonstrate to a person skilled in the art that it
will work for its intended purpose). MPEP 2138.04, MPEP 2138.05,
MPEP 2133.03(c), MPEP 2133.03(e) (3)
Composition of Matter: One of the statutory classes of invention in
which the substance, not the form or shape, is the inventive subject
matter. Chemical compositions may include new mixtures of ingredients
as well as new chemical compounds. 35 USC 101. MPEP 2105, MPEP
2106
Comprising: A transitional phrase used in a claim that means to include,
contain, or be characterized by. The term is inclusive and open-ended and
does not exclude additional, unrecited elements or steps. See: Consisting
Of. MPEP 2111.03
Compulsory License: A license that must be granted to a third party due
to governmental or judicial requirements.
Computer Programs: Recently held to be patentable subject matter
when included in a process of commands, as one of the process steps.
An action step (requiring the computer to run the program) is required.
Conception: The formation in the mind of the inventor of a definite and
permanent idea of the invention. MPEP 2138.04
Confirmation Patent: A patent granted in some countries on the basis of
a previous patent granted in another jurisdiction.
Conflict: A contest in the Canadian Patent Office between rival
inventors claiming the same or substantially the same invention.
Consisting of: A transitional phrase used in a claim that excludes any
element, step or ingredient not specified in the claim. The claim is
subject to avoidance if another element is added. A variation is
“consisting essentially of”; it usually allows for an inconsequential
amount of another element to be added. See: Comprising. MPEP 2111.03
Constructive Reduction to Practice: A reduction to practice involves
physical verification of the operability of the invention or its suitability
for its intended purpose. When one files a U.S. patent application, one
obtains a constructive reduction to practice as of the filing date.
Contemporaneously Witnessed: Observed or read and understood by a
witness who was present at the time the event occurred, but who is not
one of the inventors.
Continuation: Applicable mainly in the U.S., continuations are second
or subsequent applications which are filed after the original patent, while
the original is still pending. Continuations must claim the same invention
as the original application to gain the benefit of the parent filing date.
See: Application, Continuation.
Contributory Infringement: This involves someone supplying a
component that is a material part of a product, apparatus, composition of
matter, or process with knowledge that it is uniquely adapted for use in
infringing a patent and is not a staple article of commerce suitable for
substantial non-infringing use. Such person can be held liable as a
contributory infringer if an infringement results.
Convention: The Paris Convention for the Protection of Industrial
Property. The Paris Convention has been signed unto by most countries
in the world. The 1883 Paris Convention provides that if an applicant
files for a patent within a Convention country, they may file in another
Convention country within 12 months and will receive the benefit of the
earlier filing date. See: Paris Convention.
Convention, EPC: The European Patent Convention. See: European
Patent Convention (EPC).
Convention Country: A nation that is a member of the Paris Convention
for the Protection of Industrial Property. 164 States have agreed to the
Paris Convention. A list of those countries can be found at
http://www.wipo.org/treaties/ip/paris/index.html. See: Convention, Paris
Convention.
Convention Date: See: Priority Date.
Convention Year: A period of 12 months from a first application in a
convention country, within which applications having the effective date
of the original filing may be filed in other convention countries.
Co-Pending Application: See: Application, Co-Pending.
Copying: This generally refers to an infringer who duplicates a patented
product, apparatus, composition, or process and may enhance evidence of
infringement. See: Infringe.
Copyright: An intellectual property right that protects the expression of
an idea, and not an idea itself.
Corresponding Foreign Application: An international patent
application, regional or national patent application, or inventor's
certificate filed in a country other than the U.S. that establishes a priority
date for a later-filed U.S. application. MPEP 201.13
Corroboration: Evidence provided by persons other than an inventor
that supports and proves the inventive acts. MPEP 2138.01
Count: A claim made in common by two or more opposing parties in an
interference action to determine who was the first inventor, and, hence,
who is deserving of a U.S. patent. The count defines the interfering
subject matter between two or more patent applications or between one
or more applications and one or more issued patents. See: Interference.
MPEP 2301.02
Court of Appeals for the Federal Circuit (CAFC or Fed. Cir.): A
U.S. court to which an applicant for patent can appeal a decision of the
USPTO Board of Patent Appeals and Interferences. MPEP 1216
Court of Customs and Patent Appeals (CCPA): The historical court
that reviewed USPTO decisions and decided customs cases. The CCPA
has since been replaced by the U.S. Court of Appeals for the Federal
Circuit (CAFC). MPEP 1216
Critical Date: This refers to the date of the initial placing on sale,
publication, or public or commercial use of an invention. At the end of
the one -year period, a U.S. patent application cannot be filed because the
statute bars such filing.
Cross-License: A license between two patent owners of two or more
patents, wherein each licenses its patent(s) or certain patent claim(s) to
the other.
Cross-Reference: A reference (issued patent) in another class or
subclass, or a reference made in a later-filed patent application to a
related, earlier-filed application. MPEP 903.02(c), MPEP 202.01
Cross-Reference Art Collection: Found at the end of some schedules in
the Manual of Classification, serving to group patents that would not
otherwise be grouped together.
Crowded Art: This refers to an area of technology in which there have
been a large number of prior inventions. In a crowded art, it takes less of
an advancement to obtain a valid patent. Otherwise, one would have to
conclude that there could be no further patenting in that art.
CSIR: The Classified Search and Image Retrieval system, a portion of
the Automated Patent System, allows for rapid retrieval and browsing of
any patent issued since 1790. However, CSIR onl y has the capability to
look up patents provided the searcher knows the relevant patent number,
or technology classification. See: Automated Patent System.
D
Declaration: A written statement made with the understanding that
willfully providing false information is punishable by fines or
imprisonment or both. In the U.S., declaration may be used instead of an
oath (a sworn statement) to verify that information being submitted to the
U.S. Patent and Trademark Office is true. See: Oath. MPEP 602, MPEP
715, MPEP 716
Dedication: An express or implied surrender to the public of an actual or
potential patent right. MPEP 1490, MPEP 2138.03
Dedication to Public: A document signed by a patent owner filed in the
U.S. Patent and Trademark Office giving up all patent rights. This is
generally done when the owner believes the patent is invalid. See:
Dedication.
Defensive Patent: A patent that does not cover fully what the patentee is
doing, but which helps to keep competitors away from the area of
interest.
Defensive Publication: A publication and dedication to the public of a
pending patent application. The official program at the USPTO that
allowed for defensive publication has been replaced by the Statutory
Invention Registration (SIR) Program. See: Statutory Invention
Registration (SIR). MPEP 711.06, MPEP 1101
Deferred Examination: A system in which the examination of a patent
application may be postponed by the applicant for several years until
requested at a later time.
Definiteness: A characteristic of a patent claim in which claim language
makes the scope of the claim clear to a person skilled in the art to which
the invention pertains. MPEP 2173, MPEP 2173.02, MPEP 2173.05(a)
Delivery Up: A British court order compelling an infringer to deliver
infringing goods to the patentee for alteration or destruction.
Delphion: Originally a for-free spin-off project developed in part by
IBM and the Internet Capital Group (ICG), Delphion has since become a
for-fee service providing a wide range of patent collections and services
available to patent searchers around the world. Delphion offers
comprehensive searchable bibliographic data, full text searching and
complete patent images for patents issued from the USPTO. Delphion is
one of the many database services that offer the patent consumer an
option with where to invest their searching time and money.
Dependent Claim: See: Claim, Dependent.
Depositing Correspondence: Filing written papers with a patent office.
MPEP 502
Deposition: The testimony of a witness taken under oath, reduced to
writing and authenticated.
Derwent (Derwent World Patents Index): An important information
source for foreign and U.S. Patents. Derwent compiles patent data from
40 patent-issuing authorities, including the E.U., China, and Japan. The
Derwent World Patents Index is one of the many competing services that
a patent searcher should be aware of.
Description of the Invention: The part of the specification that classifies
the technical field in which an invention lies. The description includes a
summary of the technical background of the invention and sets forth the
features of the invention, making reference to any drawing(s) included in
the invention. See: Application, Specification.
Design Patent: Ornamental design for an article of manufacture. Design
patents onl y protect the appearance or shape characteristics of an article.
Such patents also carry a separate series of numbers from other patents
and are preceded by the letter D. MPEP 901.04, MPEP 1502, MPEP
1502.01
Designation: To name the countries where a European of Patent
Cooperation Treaty (PCT) application is being filed.
DIALOG: Dialog, sometimes known as the supermarket of databases,
offers users wide access to information in the scientific, technical,
medical, business, news and intellectual property fields. Dialog also
provides a diverse selection of knowledge management and competitive
intelligence databases. Like the other databases, it is a system the patent
searcher should be aware of.
Digests: The groupings of patents found in the Manual of Classification.
These are undefined and inventoried groupings and are in the process of
being replaced by Cross-reference Art Collections. See: Cross-Reference
Art Collections.
Diligence: The activity required of an inventor and his attorney that must
occur just prior to the entry into the field of another "inventor" and
continue until the invention is reduced to practice, either by building and
testing it or filing an enabling patent application. Diligence towards the
building and testing of an invention typically includes such activities as
ordering parts, fabrication of a prototype or working model, testing of a
prototype under the expected conditions of normal use of the invention,
etc. Diligence towards the filing of a patent application typically involves
preparation of an invention disclosure, hiring a patent agent or patent
attorney, with the patent agent or attorney taking up preparation of the
patent application in chronological order. Diligence must be proven and,
in interference proceedings, must be corroborated by a person who is not
the inventor. MPEP 2138.06
Direct Infringement: Making, using importing or selling a patented
invention in the jurisdiction where the patent is in force. MPEP 2501
Disclaimer: An express surrender to the public of an actual or potential
patent right. An entire patent can be disclaimed, or any claim or claims in
a patent or a terminal portion of the normal term of the patent. See:
Dedication. MPEP 1490, MPEP 2138.03, MPEP 706.03(u)
Disclosure: This can refer to either an invention disclosure that is not in
a patent application but is an oral or written communication of a
development or it can refer to portions of a patent application. A
disclosure must be sufficient enough for one skilled in the art to
(1) understand what is being claimed (the description requirement) and
(2) to enable the person to make and use the invention (the enablement
requirement). Also, in the U.S., the best mode of the invention must be
disclosed in the application. See: Application, Description of the
Invention, Enabling Disclosure. MPEP 608, MPEP 608.01, MPEP 2161,
MPEP 2162
Disclosure Document: The U.S. Patent and Trademark Office accept
this document for retention, not examination, as evidence of date of
conception of an invention.
Disclosure Document Program: A program of the U.S. Patent and
Trademark Office wherein, for a small fee, the USPTO will maintain a
written document which discloses the invention, and is signed by the
inventor in confidence for a period of two years as evidence of the date
of conception. Diligent efforts to reduce the invention to practice must
still occur from a period before the entry of another inventor into the field
until the invention is completed. Many patent agents and patent attorneys
recommend that it is better to disclose an invention in confidence to a
person who is not an inventor in writing and then have the person sign
and date the disclosure indicating that he/she has "read, discussed and
understood the disclosure." The disclosure program does not create any
patent protection. MPEP 1706
Discovery: An invention or, in litigation or interference proceedings, the
process of retrieving pertinent information from the opponent's records
under a court order.
Disposal: In some countries, such as the U.S., this refers to the end
process after an application has been resolved by being withdrawn,
rejected or granted. It can also have the connotation of being rejected
onl y.
District Court: Any of the 10 federal district courts within the United
States where a lawsuit for legal relief in a patent matter can be filed.
Divisional Application: See: Application, Divisional.
Doctrine of Claim Differentiation: This is a judicially created rule of
construction that states that when two claims in the same patent have an
apparently similar or identical meaning, an effort should be made to
adopt an interpretation that will give them distinct meanings.
Doctrine of Equivalents: Under the judicially created doctrine of
equivalents, one may be held liable as an infringer even if they do not
literally infringe on a patent. In general, it is an equitable concept
employed to prevent someone from getting the benefit of the invention
by making onl y minor or inconsequential changes that would avoid
literal infringement. See: File Wrapper Estoppel.
Dominated: Covered by one or more claims in a patent.
Dominating Patent: A prior patent having a claim or claims broad
enough to encompass the subject matter of the claim or claims in a
subsequent patent. The patentee of a dominating patent can prevent the
patentee of the subsequent patent from practicing his/her "improvement"
invention. The patentee of the subsequent patent can prevent the patentee
of the dominating patent from practicing the "improved" invention onl y,
but not the original invention.
Double Patenting: An improper attempt to obtain more than one patent
on the same invention or on an obvious variant of the same invention.
MPEP 804, MPEP 804.01, MPEP 804.02
Double Patenting Rejection: The rejection of a patent claim on the
grounds that it is an improper attempt to obtain more than one patent on
the same invention or on an obvious variation of the same invention. See:
Terminal Disclaimer. MPEP 804, MPEP 804.01, MPEP 804.02
Drawing: One or more specially prepared figures filed as a part of a
patent application to explain and describe the invention. Drawings (or
illustrations, where appropriate) are more commonly found with
inventions for mechanical or electrical devices. As a rule, chemical
patents will include chemical formulae in the description of the invention
and/or in the examples. See: Application. MPEP 608.02, MPEP
608.02(a), MPEP 608.02(b)
Duty of Disclosure: This is a requirement imposed on all persons
involved with the patenting process to disclose information (patents,
articles, laboratory data etc.) to the patent Examiner that may affect the
granting of a patent. See: Fraud on the Patent Office, Inequitable
Conduct. MPEP 2001
E
Early Publication: The publication of an application before
examination.
ECLA: European Classification, administered by the European Patent
Office. ECLA is another standard of patent classification, distinct from
the US Patent Classification system, or the International Patent
Classification (IPC) system.
Effective Date: The date as of which a reference is available as "prior
art" in determining the patentability of an invention. The effective date of
a reference is usually something different from the Filing Date of a patent
application. In the U.S., a patent is effective as of its filing date as a
reference against another U.S. application, and is effective as a prior
patent as of its issue date. See: Priority Date. MPEP 2126, MPEP
2126.01, MPEP 2128, MPEP 2128.02
Election: The choice made by the applicant, as to which distinct claim of
a patent with multiple possible claims, is to be prosecuted. The other
claims will be cancelled without prejudice to the applicant’s right to refile
them at a later point in time. See: Restriction. MPEP 818, MPEP
809.02(a), MPEP 809.02(b), MPEP 818.03(b)
Element of Claim: One (usually intended) portion of the body of a
patent claim that describes a feature of an invention and that interrelates
the feature with the other features of the invention. MPEP 608.01(m)
Embodiment: A single (usually out of many possible) concrete form of
an invention as described in a patent application or patent. See: Preferred
Embodiment.
Enablement: Support within a disclosure of a claimed invention.
Enablement occurs when a person skilled in the art to which the
invention pertains is taught how to make and how to use an invention.
MPEP 2164, MPEP 2164.01
Enabling Disclosure: In the U.S., a description sufficient to enable the
person skilled in the art of the invention to carry it out.
Enforcement: Taking legal action to protect one ’s patent rights.
Enjoin: To direct or impose by court order.
Equivalent: A patent that relates to the same invention and shares the
same priority application as a patent from a different issuing authority.
Equivalents, when taken together, form a patent family. See: Patent
Family.
Equivalents—Means-Plus-Function Claims: Rather than expressly
reciting a component or feature in a patent claim, one may recite a
feature as a means for accomplishing something such as "seal means for
resisting passage of water between the bushing and the shaft."
Europatent: A patent in any member nation of the EPC, granted by the
European Patent Office. See: European Patent Convention.
European Patent Convention (EPC): The European Patent Convention
laid down the groundwork and foundations for the European Patent
Office. Nineteen European countries are parties to the European Patent
Convention.
European Patent Office (EPO): The European Patent Office, created
under the European Patent Convention (EPC) offers a way to file a single
patent application that will be applicable to all European countries that
adhere to the EPC. While the European Patent Office has its historical
origins in the European Union, coverage of patents may extend to
countries outside of the E.U. (for example, Switzerland). See: European
Patent Convention.
Examination: Review of a patent application to determine if a claimed
invention is patentable. MPEP Introduction
Examiner: A patent office official who is appointed to determine the
patentability of applications.
Example: 1) A worked, detailed, description of one aspect (embodiment)
of the invention within the patent application.
2) Possible alternative embodiments of the invention within the patent
application, with little detail provided. See: Embodiment. MPEP
608.01(p), MPEP 2164.02
Exceptional Case: In order to seek an award for attorney’s fees as part
of the relief granted to the prevailing party in patent litigation, it is
necessary to show that the case has unusual circumstances. In general, it
means that there has either been willful infringement on the part of the
alleged infringer or that the patentee was reckless in bringing an
infringement case.
Execute: To complete; with reference to a patent application, to sign an
oath or declaration. MPEP 601.04, MPEP 602.01
Exhaustion of Rights: The principle that when patented goods have
been sold by the patentee, he has no further control over them.
Exhibit: A physical embodiment of an invention; a model or specimen.
See: Embodiment. MPEP 608.03, MPEP 608.03(a)
Ex Parte: A legal proceeding with no adversary, as in a normal patent
prosecution.
Experimental Use: Under Section 102(b) of the Patent Statute, there are
a number of statutory bars which state that one cannot file a U.S. patent
application more than one year after making the invention available
through sale, publication, or public use. However, if the applicant makes
use of the invention for testing or experimental purposes (rather than for
public or commercial purposes), such use is not considered when
computing the one -year period. The experimentation must be to verify
that the invention works for its intended purpose as distinguished from
other factors such as marketing research. Experimental use is allowed in
the U.S. and Japan, but not in most jurisdictions. MPEP 2133.03(e),
MPEP 2133.03(e) (4), MPEP 2133.03(e) (6)
Expiry Date: The date when a patent has run its full term in a country
and is no longer protected there. See: Lapse, Withdrawal.
Extension of Time: An extension of the "period for response" stipulated
in an Office Action. MPEP 710.02(e)
External Patent: A patent assigned to a competitor or another outside
organization.
F
Failure of Others: A secondary test of patentability relevant to the issue
of whether an invention is obvious is whether others have failed to come
up with the solution previously. Failure of others also can be expressed
by showing a long-standing and yet unsolved need. See: Obviousness.
Family: The group of specifications published by the same or different
patent offices for the same invention.
Federal Circuit: See: Court of Appeals for the Federal Circuit (CAFC).
Federal Regulations: The regulations of the departments and agencies
of the U.S. Federal Government as published in the Code of Federal
Regulations (CFR).
Fee, Delayed: When a required fee is postponed or not paid on time.
Fee, Filing: A fee required by the U.S. Patent and Trademark Office at
the time of filing of the patent application, or shortly thereafter (with
additional payment of a surcharge).
Fee, Issue: The fee, required by law, paid by an applicant to the patent
office prior to the granting of a patent. Fee must be tendered within three
months of allowance. MPEP 1306
Fee, Maintenance: Fees paid at three intervals during the life of a patent
that keeps the patent in force for its entire 20-year life span. The U.S. fee
is now payable at 3 ½, 7 ½, and 11 ½ years from the date of issue. A late
fee is permitted, but a surcharge is imposed. See: Fee, Renewal.
Fee, Petition: A fee required by the U.S. Patent and Trademark Office
for certain actions.
Fee, Renewal: Payments that must be made by the applicant to the patent
office in order to keep the patent in force and prevent it from lapsing. In
the U.S., these are termed maintenance fees. See: Fee, Maintenance.
MPEP 2501, MPEP 2504, MPEP 509
Field Codes: At the USPTO website, these are characters that precede a
keyword. The characters are used to limit the search for that keyword to
certain sections of a patent. (Ex: PN = Patent Number, CCL = Current
U.S. Classification).
Field of Endeavor: The area of technology that an inventor develops
from. Also called technical field or field of the invention. MPEP
608.01(c)
Field of Invention: See: Field of Endeavor.
Field of Use: The technical field or market that an invention is licensed.
The licensee may not sell the invention within other markets.
Figure Legend: An explanation of what the noted marks mean on a
drawing. Patent drawings do not have legends.
File History: In the U.S., the dossier containing all papers relevant to the
prosecution of an application. Also called the File Wrapper.
File Wrapper: The complete U.S. Patent and Trademark Office
(USPTO) file on a certain patent including correspondence, original
drawings, etc.
File Wrapper Estoppel: When an inventor amends their application by
narrowing their claims during the course of patent prosecution to
overcome a rejection, the inventor is precluded or estopped from
asserting a broader interpretation after the patent has issued. This type of
estoppel clearly exists in the face of a prior art rejection, but can also
exist when the inventor makes representations in a writing that would
cause the Examiner to rely on those representations when they granted
the application. Under current law, while file wrapper estoppel does not
preclude the use of the doctrine of equivalents, it does substantially limit
the scope and application of this doctrine. File wrapper estoppel is also
referred to as prosecution history estoppel.
Filing Date: The date when the application reaches the patent office in
complete form.
Filing Fee: See: Fee, Filing.
Final Action: See: Action, Final.
Final Rejection: A rejection of a claim that is made final on a second or
subsequent examination or consideration. After a rejection of a claim is
made final, an applicant must generally either agree with Examiner
suggestions or appeal the rejection. The onl y other recourse an applicant
has is to argue that the final rejection was premature, to appeal the
rejection, or to amend the claim in accordance with any suggestion of the
Examiner. The Examiner may allow the applicant to place the claim in
better form for appeal. One interview with the Examiner will be allowed,
if in the judgment of the Examiner, circumstances warrant the interview.
See: Rejection. MPEP 706.07, MPEP 706.07(a), MPEP 706.07(b)
First Action: See: Action, First.
First to File: The applicant who is the first to file an application for an
invention will be awarded the patent over all others. This law is
becoming the standard for countries adhering to the Trade-Related
aspects of Intellectual Property (TRIPs) guidelines.
First to Invent: In the United States, the applicant who is the first to
invent will be awarded the patent over all others.
First Inventor: The person who has the earliest date for an invention
that he or she has not explicitly or implicitly abandoned; the individual
who first conceives, and first reduces the idea to practice.
Foreign Filing Date: The date a non-U.S. patent application was filed
that establishes priority of invention. MPEP 201.13
Forfeited Application: An application that has been abandoned due to
failure to pay the issue or maintenance fees within the designated period.
See: Fee, Issue, Fee, Maintenance.
Forward Citation Searching: Searching for patents that provide
citations/references to the patents in your original search set (i.e.
searching for Gen +1 patents). See: Citation Generation.
Fraud on the Patent and Trademark Office: This is now frequently
referred to as inequitable conduct. An applicant and the applicant's
attorney have an obligation to acquaint the U.S. Patent and Trademark
Office with any prior art known to be material to the patentability of the
patent application claims. There is no requirement that the applicant
perform a patentability search. The obligation is merely one of sharing
knowledge. If fraud is found, the entire patent in question is held
unenforceable. Subsequently issued divisional or continuation
applications may also be “tainted” and thus unenforceable. See:
Inequitable Conduct.
Frequently Cited: Patents which are mentioned or cited numerous times
by the patent Examiner on other issued patents.
Frivolous Invention: An invention that lacks utility because it serves no
purpose or use. MPEP 706.03(a)
Front Page: The first page of a patent application which lists the patent
number, description, specification and usually a drawing or illustration
selected by the inventor.
Front Page Drawing: The drawing selected by the Examiner to appear
on the front page of a U.S. Patent.
Full-Text: The complete text of a patent specification found during a
search query.
G
Gebraughsmuster: A German utility patent.
General Agreement on Tariffs and Trade (GATT): The General
Agreement on Tariffs and Trade signed by President Clinton on
December 8, 1994. The GATT was created to comply with the TRIPS
(Trade Related Aspects of Intellectual Property Rights) provisions agreed
to by other industrialized nations. One resulting change is that a U.S.
patent, if granted on an application filed on or after June 8, 1995, will
have a term measured by 20 years from the filing date rather than the
prior standard of 17 years from the date the patent was granted. Patents in
force on June 8, 1995, and applications filed before that date will have a
term that is the longer of these two terms. A secondary effect of the
GATT was to create an allowance for the proof of date of an invention
filed in a WIPO country for events after January 1, 1996. The GATT also
provided for provisional patent applications. MPEP 2138.02
Geschmackmuster: A German design patent. MPEP 201.14(b)
Gist of the Invention: This may also be referred to as the "heart of the
invention." It refers to what are the novel and unique features of the
claimed invention.
Grace Period: A period of time before the filing date of an application,
during which certain types of publication do not invalidate the
application.
Grant: The issuance of a patent by the patent office, which creates a
temporary right to exclude others from using the technology defined in
the claims of a patent for a specified period of time. MPEP 2501
H
Harmonization: The proposed integration of patent laws in different
countries to produce essentially one , worldwide body of patent law.
H document: An H document is a Statutory Invention Registration
(SIR). An applicant for a U.S. patent may, if desired, give up the ability
to obtain a patent and instead pay the U.S. Patent Office to publish it as
an SIR. The main benefit of this is that it keeps others from getting a
patent on the same invention. See: Research Disclosure, Statutory
Invention Registration.
How to Make: This is part of the obligation to provide a disclosure in
the patent application that would enable one skilled in the art to practice
the invention without engaging in undue experimentation.
How to Use: This is a similar to the "how to make" standard and relates
to the use aspect of an invention, if appropriate.
Hypothetical Person Skilled in the Art: The standard applied under
Section 103 of the Patent Statute is whether the invention would have
been obvious at the time the invention was made to one having ordinary
skill in the art. One must look at the nature of the technology and
determine what sort of individual would be skilled in the art. There are
no rigid standards that are employed in making such a determination. For
example, if the invention involved an automobile transmission, a
mechanical engineer working on transmission design, a mechanic
working on automobile transmissions, a mechanical engineering
professor, or others could be a "person skilled in the art."
I
IIB: The Institut International des Brevets, a patent search and
examination office in The Hague.
Important Invention: Under the U.K. 1949 Patents Act, an invention
known abroad but brought into the U.K. for the first time.
Improvement Patent: This generally refers to a patent that is issued on
an application filed later in time than a prior application and tends to
build upon the previously disclosed invention or the previous patent. In
some instances, it means a patent that cannot be practiced without
infringement of a prior patent. MPEP 2129
Incomplete Disclosure: Failure to include or acknowledge an essential
element, step, or structural cooperative relationship of elements, in the
claims of an invention.
In-Convention Filing: A filing made in a foreign country within 12
months of the original home filing, treated under the Paris Convention as
having the priority date of the original filing. See: Paris Convention,
Priority Date.
Incorporation by Reference: To supplement the disclosure of a patent
application by making a specific statement in the application that other
material is to be considered to be incorporated in the application. MPEP
608.01(p)
Indefiniteness of Claim: Section 112 of the Patent Statute requires that
the claims be sufficiently definite so as to provide a standard by which a
third party could, with some degree of certainty, determine whether a
given practice would or would not be an infringement of the claims. An
indefinite claim is a claim that fails to particularly point out the claimed
invention. See: Definiteness. 35 USC 112. MPEP 706.03(d), MPEP 2171
MPEP 2173
Indemnity from Suit: A situation in which one party has agreed (usually
in writing) not to sue another party, e.g., for patent infringement.
Indents: The spaces (filled in with dots) found in the Manual of
Classification used to delineate the arrangement of subclasses under a
class. The number of indents is recorded by the number of dots shown.
See: Manual of Classification.
Independent Claim: See: Claim, Independent.
Inducement to Infringe: An act that leads another to infringe. For
example, a recommendation made to a customer to practice a patented
method.
Inequitable Conduct: Improper action by a patentee or their attorney
before the U.S. Patent and Trademark Office. If a breach of the duty of
disclosure is found, the entire patent in question is held to be
unenforceable. See: Fraud on the Patent Office.
Information Disclosure Statement (IDS): A list of all patents,
publications and other information submitted by an applicant for patent
to the USPTO, either to discharge their duty of disclosure, or to ensure
that the Examiner considers the information. See: Prior Art Statement.
MPEP 609
Infringe: To make, use or sell a patented item or process within the
country covered by the patent without permission or license from the
patentee. The alleged infringing object must contain every element of the
claim before it is considered to infringe literally on the patented
invention.
Infringed Literally: A situation wherein an issued patent is infringed
(practiced without a license to do so) by a product or process that has all
of features of the invention claimed in the patent. See: Literal
Infringement.
Infringement: The practice of a claimed invention without a license to
do so.
Infringement by Equivalents: Infringement in the situation where the
infringing product or process does not have exactly the same features as
the invention claimed in the patent, but that any different feature
performs the identical function as the one specified in the claim.
Infringement Opinion: An opinion made by an attorney judging the
probable holding of a court on whether or not a specified product,
process or apparatus would infringe one or more claims of an issued
patent.
Infringement Under Doctrine of Equivalents: See: Infringement by
Equivalents.
Inherency: Present in the essential character of something. MPEP
2173.05(v)
Inherent Disclosure: A basic property of something originally
disclosed; may be explicitly described by amendment without
introducing new matter.
Injunction: A writ granted by a court whereby one is required to do, or
to refrain from doing a specified act.
Innocent Infringer: In the U.K., the legal concept that an infringer who
could not be expected to know of the existence of the patent, should not
be forced to pay damages. This type of infringement does not exist in the
U.S., where the assumption is that an infringer must or should have
known.
INPADOC: The International Patent Documentation Center, Vienna,
Austria. A source of information concerning patents of more than 25
countries.
Insufficiency: A ground of invalidity on a patent if the description does
not enable one skilled in the art to work (Does not teach) the invention.
See: Hypothetical Person Skilled in the Art.
Insufficient Disclosure: A disclosure lacking such description and
details as would enable a person skilled in the art to which the invention
pertains to make and use the invention. See: Hypothetical Person Skilled
in the Art. MPEP 608.01p
Intellectual Property: A product of the human mind. An intangible form
of property. Patents, Trademarks, Trade Secrets and Copyrights fall
under the category.
Interference: A priority contest in the U.S. Patent and Trademark Office
to determine which of two or more parties was the first to invent
commonly claimed subject matter. MPEP 2300.01
Internal Priority: The possibility of filing, within 12 months an
application claiming priority from an earlier application in the same
country.
International Application: An application made under the provisions of
the Patent Cooperation Treaty.
International Patent Classification (IPC): The International Patent
Classification (IPC) is an internationally recognized classification
system, maintained by the World Intellectual Property Organization
(WIPO) and assigned to patent documents by the various patent offices
around the world. The IPC is widely used throughout the world (although
less so in the U.S.). There are eight distinct sections of the IPC (lettered
A-H) and these sections are further subdivided into classes. Each class
consists of the section letter, followed by two digits. For example, section
A21 is the class for Baking; Edible Goods, and G02 is the class for
Optics. The International Patent Classification list is available onl ine at
http://classifications.wipo.int/fulltext/new_ipc/. See: WIPO.
International Patent Protection: Filing for patent protection in multiple
countries.
Intervening Rights: A defense to an allegation of infringement.
Intervening rights exist when a patent is later reissued with broader
claims because of inadvertent errors in claim instruction on the original
patent. Any person who practiced the broadened claims prior to the
reissue may continue. For such a person, infringement would result onl y
if he or she practiced the surviving, narrower claims. MPEP 1460
Invalid: Ineffective or void under the law. A patent can be invalidated if
it was issued in error, or it has failed one or more statutory requirements
of patentability (e.g., novelty, obviousness).
Invention: A solution to a technical problem (i.e., technology) that may
or not be patentable.
Invention Disclosure: From a legal standpoint, a description of an
invention that would enable a person skilled in the art to which the
invention pertains to build and use the invention. Invention disclosure
documents are used for a variety of legal and commercial purposes. See:
Disclosure.
Inventive Entity: The inventor(s) named in the patent application.
MPEP 2173.01, MPEP 804.03
Inventive Step: A requirement that an invention not onl y be new, but
also unobvious as regards the relevant prior art. It is a requirement of
patentability that an invention would not have been found merely as an
ordinary extension of the art by one skilled in that art.
Inventor: The individual(s) who actually came up with the idea.
Inventor Name: In the U.S., inventors must be identified because of
constitutional provision. In many other countries, inventors need not be
identified as the individuals responsible for creating an invention.
Inventor’s Certificate: A grant to former Soviet inventors, the rights of
the invention being owned and maintained by the state.
Inventorship: The condition of being an inventor under the law. MPEP
2137.01
Issue: The grant of a patent by a patent office. See: Allowance.
Issue Fee: See: Fee, Issue.
J
Jepson Claim: See: Claim, Jepson.
Joint Application: A patent application in which the invention is
presented as one conceived by two or more inventors. MPEP 201.02
Joint Invention: An invention conceived by more than one person. See:
Joint Inventor.
Joint Inventor: A person who collaborates with another inventor in the
conception of an invention. See: Joint Invention. MPEP 605.07, MPEP
2137.01
Junior Party: The party in an interference action who has the later U.S.
filing date. See: Senior Party.
K
Kinds: A designation letter, often accompanied by a number, which
indicates the level of publication of a patent. For example DE-A1 is the
German Offenlegungsschrift (application laid open for public inspection)
while a DE-C1 is the German Patentschrift (first publication of the
granted patent).
Know How: Unpatented technical or commercial information.
Knowledgebase: An organized repository of knowledge about a
particular subject. For example, a set of U.S. patentability rules is a
knowledgebase.
Knowledge-Based Expert System: A computer program that uses
knowledge and inference procedures for solving a problem that is
sufficiently difficult as to require a significant amount of human
expertise to arrive at the solution.
Kokai: An unexamined Japanese patent application. The first two digits
of the application number indicate the year in the current emperor’s
reign. The first two digits plus 25 give the year of the publication in the
Showa (Hirohito) Era (1925 to early 1989), for example, J59 – has a
1984 publication date. The first two digits plus 88 give the year of the
publication of more recent patent applications, for example, J01 – has a
1989 publication date.
Kokoku: An examined and allowed Japanese patent application. The
first two digits indicate the Gregorian calendar (not Imperial) year of
publication.
L
Label License: When a composition or product is sold by the owner of a
patent on the process of using the invention, he or she may include on the
label notice to the purchaser that the price includes a license to practice
that process.
Lapse (Lapse Date): The date when a patent is no longer valid in a
country or system due to failure to pay renewal (maintenance) fees. Often
the patent can be reinstated within a limited period. See: Fee,
Maintenance, Withdrawal.
Letters Patent: Grant to an inventor of the right for a limited time to
exclude others from using his or her invention; the certificate of the
patent grant.
Level of Ordinary Skill: The level of skill in the art to which an
invention pertains that is used in judging whether a disclosure
or claim is enabling. See: Enablement. MPEP 2141.03
Lexis-Nexis: The Lexis-Nexis research system provides information to
legal, corporate, government and academic markets, and publishes legal,
tax and regulatory information, via onl ine, hardcopy print and CD-ROM
formats. Unlike other research systems, Lexis-Nexis does not focus on
patents onl y, and provides a more broad-based system that a patent
searcher should be cognizant of.
License: A transfer of patent rights that fall short of a full assignment. A
license, which can be exclusive or non-exclusive, does not give the
licensee legal title to the patent. See: Assignment.
License of Right: An endorsement on a patent to the effect that anyone
may obtain a license upon reasonable terms.
Limitation: Language in a claim that constrains the breath of a claim.
Linking Claims: Claims joining otherwise separate species of the
invention, such as a generic claim linking up to five species claims
embraced thereby; a product-by-process claim linking product and
process claims; and a means for practicing a process linking apparatus
and process claims. MPEP 809, MPEP 809.2, MPEP 809.3(a)
Literal Infringement: This means that a product, process, apparatus, or
composition of matter satisfies every recital of a claim completely. See:
Infringed Literally.
Living Organisms: Now considered proper U.S. patentable subject
matter under 35 USC 101.
Local Novelty: The principle that a patent can onl y be invalidated by
prior publication if the publication was in the country granting the patent.
Long-Felt Need: A problem facing a particular technical area that has
gone unsolved for a prolonged period. The presumption is if the solution
had been obvious to those skilled in the art, they would have solved the
problem. Long-felt need is a way to get past the obviousness requirement
to patentability. See: Obviousness.
Lost Profits: This is a measure of damages and is generally tied to the
profits that could have been the patentee's, but for the infringement. The
alternate standard, where the patentee is either not in the business or
cannot prove that profits made by the infringer would have been his or
hers, must employ the statutory standard of a reasonable royalty. See:
Infringement.
M
Machine: A device, a product, a physical thing. Under U.S. law, one of
the statutory classes of inventions. MPEP 2105, MPEP 2106, MPEP
2114
Maintenance Fee: See: Fee, Maintenance.
Manual of Classification: The Manual of Classification is the collection
of all Classification Schedules, organized and created by the USPTO.
The Manual organizes the various Classification Schedules based on the
relationships between subclasses, and the connection between a class and
subclass. The Manual can be found onl ine at:
http://www.uspto.gov/go/classification.
Manual of Patent Examining Procedure (MPEP): A document that
contains a description of the practices and procedures of the U.S. Patent
and Trademark Office.
Manufacture: A term used in the patent statutes to cover any material
thing in between an unshaped composition of matter and a machine. One
of the classes of patentable subject matter under U.S. law. MPEP 2105
Markush Group: A claim which recites the following: “Selected from
the group consisting of …”; this statement creates a limited type of
generic claim. To be permitted, the members of the designated group
must have at least one property in common which is primarily
responsible for their function in the claimed relationship.
Means for Claim: A patent claim that recites an element as a means to
accomplish a particular function. MPEP 2181
Means-Plus-Function Claim: See: Means for Claim.
Means-Plus-Function Language: See: Means for Claim.
Mesne Assignment: To transfer one ’s patent rights through one or more
intermediate assignees, rather than directly to a single assignee.
Method: One of the classes of patentable inventions (a process) under
U.S. law. MPEP 706.01(a)
Micropatent: Micropatent, an onl ine patent-searching directory, touts
the world’s largest collection of onl ine, searchable full text patent
documents for a variety of countries. This service also provides full-text
searches of U.S. granted patent applications back to 1836, as well as U.S.
Applications back to 2001. Micropatent provides yet another choice for
patent searchers to choose from.
Misuse: Using a patent right inappropriately, for example, forcing a
buyer to purchase a license for a secondary product not covered by the
claims of the patent.
Model: See: Exhibit.
Multiple-Dependent Claim: See: Claim, Multiple-Dependent.
N
Negative Limitation: A claim limitation that is excusive, e.g., "other
than X," "incapable of X." Also known as Negative Claim Limitation.
MPEP 2173.05(i)
New Issue: A patentability issue or question that has not previously
arisen in the examination of an application.
New Matter: Information not in the original specification, claims, or
drawings, which the applicant attempts to add to the application, but is
rejected for not being present, explicitly or implicitly, in the original
disclosure. MPEP 608.04, MPEP 608.04(a), MPEP 608.04(b)
New Use: Discovery of a new use for a previous invention is considered
patentable subject matter under U.S. law.
Nonassertion Letter: A written communication by the owner of patent
rights stating that they do not wish at the time to assert or enforce their
right to exclude others from practicing the specified claims on one or
more patents.
Non-Convention Application: A patent application filed in a second or
subsequent country that does not claim the priority of another, earlier
application.
Non-Convention Equivalents: An application filed in a second or
subsequent country that does not claim a priority application in another
country. Usually this is a result of filing the application after the 12-
month Convention period, but may be within that period by choice of the
applicant. See: Convention.
Non-Convention Filing: See: Out-of-Convention-Filing.
Non-Human Mammal: Now considered a proper U.S. patentable
subject under 35 USC 101.
Non-Obvious: The opposite of obviousness; that which is not clear or
apparent. See: Obviousness.
Nonprovisional Patent Application: A type of U.S. utility patent
application that must contain at least one claim and can issue as a
patent. MPEP 201, MPEP 601, MPEP 601.01(a)
NOT: A Boolean operator (sometimes specified as ‘ANDNOT’) which
requires the first term to be present and a second specified term to be
absent from a record. See: Boolean Logic.
Notice (Marking): Placing the word "patent" with the patent number on
articles made by the patentee or a licensee. If the patentee fails to mark
his or her products, then the patentee may onl y recover damages for
infringement that occurred after the infringer has received actual notice
through a charge of patent infringement. See: Patent Marking.
Notice of Allowability: An action by a U.S. Patent Examiner that states
that the patent application has been placed in condition for allowance,
and specific claims are accepted or approved.
Notice of Allowance: A written communication from the U.S. Patent and
Trademark Office indicating that a patent application has been approved.
See: Allowance.
Notice of Allowance and Issue Fee Due: A notice by the USPTO that
the application has been placed in a condition for allowance and that the
issue fee must be paid within three months of the mailing date of the
notice. See: Allowance, Fee, Issue. MPEP 1303
Notice of Appeal: A document filed by the applicant in the U.S. Patent
and Trademark Office to initiate an appeal of an Examiner's rejection to
the Board of Patent Appeals and Interferences. This reserves a right for
the applicant to file an Appeal Brief. See: Appeal Brief. MPEP 1205
Novelty: One of the three statutory requirements of patentability. What is
considered ‘new’ about the invention. The invention must never have
been made public in any way, anywhere, before the date on the patent
application. In the U.S., novelty is normally determined by the date of the
invention. See: Obviousness, Utility. MPEP 2131
O
Oath: Notarized statement that declares that the applicant believes that
they are the first and original inventor. See: Declaration. MPEP 602,
MPEP 715, MPEP 716
Object Clause: The part of patent specification stating the purpose or
meaning to be achieved by the invention.
Object of the Invention: A desired characteristic of an invention. MPEP
608.01(d)
Objection: The Examiner’s disapproval of the phrasing or format of a
part of a patent application.
Obvious to Try: The validity of a patent can be challenged by
attempting to show that what the inventor did would have been obvious
based on the prior art.
Obviousness: One of the three statutory hurdles of patentability. A
characteristic that makes an invention predicable to a person having
ordinary skill in the art, who has knowledge of the complete body of
prior art. Obviousness implies that no "inventive step" was involved in
conceiving of the invention. This statutory requirement is one of the most
difficult terms in patent law to define and understand. See: Novelty,
Utility. MPEP 2141, MPEP 2141.01, MPEP 2141.02, MPEP 2141.03,
MPEP 2142
Octrooi: A Dutch or Flemish patent.
Offenlegungsschrift (OLS): A published (unexamined) German patent
document (see Auglegeschrift).
Offer to Sell: An activity that can bar obtaining a patent in some
jurisdictions if the offer occurs before a patent application is filed. MPEP
2133.03(b), MPEP 706.02(c)
Office Action: See: Action, Office.
Official Gazette (OG): A publication of the U.S. Patent and Trademark
Office where new patents and trademarks are announced. The Official
Gazette is published weekly in two editions, one for patents and one for
trademarks.
Old Application: An application that, having been acted on by an
Examiner, has in turn, been acted on by the applicant. MPEP 203.03
Omnibus Claim: A claim which asserts the invention noted is as
described, with reference to the drawing or examples.
On Sale: If an inventor makes his or her invention available for
commercial sale more than one year before a U.S. patent application is
filed, a valid patent cannot be obtained. This is sometimes referred to as
the on sale bar to a patent. An invention is on sale where it has actually
been sold or an offer of sale has been made. See: One -Year Rule.
One -Year Rule (One-Year Grace Period): Presently, a statutory rule of
the U.S. Patent and Trademark Office which states that a valid patent can
still be obtained on an application filed before or up to one year after
public use or sale in the United States, or patenting or publication
anywhere in the world, provided the invention has been reduced to
practice before he public use, sale, patenting or publication by another.
See: Priority Date.
Open to Public Inspection (OPI): The date when a patent application is
first made available to the public to view. This is normally not less than
18 months from the priority date but patent offices vary in their
treatment.
Opposition: The time period allowed for an interested party to post a
challenge to the grant of a patent. For example, this may be up to nine
months from the date of grant of a European patent. Opposition can also
be the actual proceedings where a third party raises their objection to the
grant of a particular patent.
OR: Boolean operator which requires either of two specified terms to be
present in a record. See: Boolean Logic.
Ordinary Skill in the Art: The level of technical knowledge,
experience, and expertise possessed by the run-of the-mill or ordinary
engineer, scientist, or designer in the technology that is relevant to the
invention. Obviousness is measured with reference to a hypothetical
person having ordinary skill in the art to which the invention pertains.
See: Hypothetical Person Skilled in the Art, Obviousness.
Out-of-Convention Filing: A foreign filing made more than 12 months
after the original home filing and thus, unable under the terms of the
Paris Convention to claim the original priority date. See: Paris
Convention.
P
Parent Application: See: Application, Parent.
Paris Convention: The Paris Convention was established March 20,
1883, effective July 7, 1884, and amended June 2, 1934 and July 14,
1967. Signatories to the Paris Convention are allowed one year from first
filing their patent application (usually in their own country) in which to
make further applications in member countries and claim the original
date as their filing date. See: Convention.
Patent: A document defining the rights conferred by the grant, but often
used generally to mean any published specification. A patent gives the
inventor the right to exclude others from making, using, selling, offering
for sale or importing their invention.
Patent of Addition: A patent for an improvement in, or modification to,
the subject of an earlier patent, which expires with the earlier patent.
Patent Agent: A person who is not an attorney, but has the ability under
law to legally represent an inventor or applicant when dealing with a
patent office. A patent agent must have the requisite scientific or
engineering background or experience, and be registered to practice
before the U.S. Patent and Trademark Office. Registration is obtained by
passing a one -day written examination administered two times a year by
the USPTO. Patent agents are required to abide by the same ethical rules
and guidelines under the ABA that attorneys are subject to. MPEP 401
Patent Analytics: The process of reporting and visualizing patent mining
results.
Patent Attorney: A lawyer who can legally represent an inventor or
applicant when dealing with a patent office. Unlike a patent agent, the
patent attorney does not necessarily have a scientific background,
although many do. The patent attorney is usually, but not necessarily,
admitted to practice before the USPTO. MPEP 401
Patent Cooperation Treaty (PCT): The PCT was signed in Washington
D.C. on June 19, 1970, and entered into force January 24, 1978. It was
amended with effective dates of May 3, 1984 and January 1, 1985. There
are more than 100 signatories to this treaty. Contracting states may file an
international application designating member states. If an applicant wants
to press for grant in any of their designated states, the patent application
is moved to the national phase(s), but may carry the P.C.T. priority filing
date. Chapter I of the PCT preserves these rights for 20 months from the
earliest priority filing. A timely filed Chapter II Demand will preserve
patent rights in designated foreign countries for up to 30 months from the
earliest priority filing date.
Patent Cousins: Pairing of earlier patents that are referenced by the
same later patent.
Patent Examiner: See: Examiner.
Patent Family: All equivalent patent applications that make reference to
a single invention, but cover different geographical regions and
jurisdictions. MPEP 905.06
Patent of Importation: A patent granted by certain countries on the
basis of patents already granted elsewhere. These patents are limited, and
protect local manufacture onl y.
Patent In-Licensing: Purchasing of rights within an organization, to use
the technology covered in patents owned within the corporation as a
whole.
Patent Landscape: The graphical representation of how large numbers
of patents relate to each other based on keywords, citations, or patent
classifications.
Patent Licensing: Selling or purchasing the right to use the technology
covered in a patent.
Patent Mapping: A way to visualize patent mining results that involves
clustering or otherwise orienting patent data on a page so that there is
meaning in the spatial relationships among the data points.
Patent Marking: The marking of a patent-pending item "Patent
Pending" or marking a patented item with one or more of the patent
numbers it was granted. Marking gives a potential infringer notice of the
fact that a patent is pending or has issued. Marking an invention "Patent
Pending" is not allowed in some countries. The individual patent mark
may be either on the item itself or its packaging. See: Notice.
Patent Mining: The process of searching for meaningful trends, patterns,
and relationships among patent records contained in patent databases.
Patent Misuse: See: Misuse.
Patent Number: The number assigned to an issued patent by a patent
office.
Patent Out-Licensing: Selling of rights to use the technology covered in
a patent.
Patent Owner: The owner of property rights conferred by a patent, such
as the right to exclude others from use.
Patent Pending: A mark that may be placed on a product/package to
indicate that an application has been filed with the U.S. Patent and
Trademark Office.
Patent Portfolio: A collection of patents owned by an organization.
Patent of Reval idation: See: Patent of Importation.
Patent of the Same Age: Patents that were granted in the same year.
Patent Search: A review of the prior art, for example, the open literature
and U.S. and foreign patents.
Patent Term: The period of time that a patent is valid.
Patent and Trademark Depository Library (PTDL): The Patent and
Trademark Depository Library Program began in 1871 when federal
statute (35 USC 13) first provided for the distribution of printed patents
to libraries for use by the public. During the Program's early years,
twenty-two libraries, mostly public and all but several located east of the
Mississippi River, elected to participate. Since 1977 the PTDL network
has grown to four times its original size. Currently, the majority of the
membership is shared between academic and public libraries. There are
also several state libraries and one special research library. All libraries
regardless of size or mission must meet the same PTDL requirements and
obligations.
Patent Watch: The process of continuously monitoring newly published
patent applications and issued patents in a particular field.
Patentability: The issue of whether an invention is capable of being
patented in a particular jurisdiction.
Patentability Opinion: An opinion offered by a patent agent or a patent
attorney as to whether a claimed invention is likely to be deemed
patentable by a patent office in view of the prior art made available to
him/her.
Patentable: Capable of being patented in a particular jurisdiction. The
ability for an invention to satisfy the legal requirements for patentability
in a particular jurisdiction.
Patentable Combination: A series of process steps, mechanical
elements, or a mixture of materials that produce a desirable effect or
result that is not an obvious summation of the effects of the different
steps, elements, or materials.
Patentable Subject Matter: An invention that is capable of being
patented.
Patentee: The inventor to whom the patent is granted and all persons to
whom the patent is subsequently assigned. The term is slightly broader
than the owner of the patent, as the inventor would still be considered a
patentee even if he or she has assigned his or her invention to someone
else.
Patentschrift: A granted German patent application.
Pending: The period in which the patent office has not yet decided
whether to reject or to grant a patent application and the application has
not yet been withdrawn.
Pending Patent Application: See: Pending.
Person Skilled in the Art: A fictitious person who has knowledge of all
prior art and who possesses ordinary skill in the art to which the
invention pertains. See: Hypothetical Person Skilled in the Art. MPEP
2141.03
Petition: 1) The portion of a patent application praying for the grant of a
patent. 2) A request for the Commissioner of Patents and Trademarks to
review and supervise the work of an employee of the Office. 3) A written
communication to a higher authority within a patent office seeking
review of a decision made by an Examiner, on any matter other than
rejection of a claim. MPEP 1001.01, MPEP 1002, MPEP 1201
Petition for Certiorari: A petition to the U.S. Supreme Court to review
the decision of a lower court.
Petition for Extension of Time: A petition requesting an extension of
the time period for response to certain Office actions. Payment of a fee is
sometimes required. MPEP 710.02(e)
Petition to Revive: A petition requesting that a patent application be
revived from either unintentional or unavoidable abandonment. See:
Abandonment of Patent Application. MPEP 711.03(c)
Petty Patent: See: Utility Model.
Picture Claim: A claim that sets forth an invention in great detail. Also
called a Specific Claim.
Pioneer Invention: An invention that breaks new ground in a
technological art or that creates a new art.
Pioneer Patent: A patent on an invention that breaks new ground in a
technological art or that creates a new art.
Pith and Marrow: In the U.K., the essential features of an invention.
Plant Patent: A patent that is issued for any new asexually reproducing
plant. Asexually reproduced plants are propagated by means other than
by seeds, such as, rooting of cuttings, by layering, budding, grafting, etc.
MPEP 1601
Power of Attorney: Grant of authority to a patent attorney or patent
agent to transact all U.S. Patent and Trademark Office business
connected with a designated patent application.
Preamble: The formal introductory clause of a patent claim. Depending
on the circumstances, the preamble may or may not define a narrowing
element of the claim. The preamble usually onl y defines the setting or
context in which the elements of the claim appear. The use of Jepson
claim format results in an implied admission that what is recited in the
preamble is known in the prior art. See: Claim, Jepson.
Precedent: A legal decision that serves as an example or rule upon
which a subsequent decision can be based.
Precharacterizing Clause: The part of a German or European-style
claim that recites the features of the invention which are already known.
Preferred Embodiment: An inventor’s “best guess” version of the
invention configuration, at the time the patent application was written.
See: Embodiment.
Prejudgment Interest: In patent litigation, prejudgment interest is
interest on monetary judgment against an infringer awarded to a
prevailing party and measured from the date of the infringement to the
date of the judgment. Prejudgment interest should be available on
damages measured both by lost profits and reasonable royalty. See: Lost
Profits, Royalty.
Preliminary Amendment: An amendment to a patent application filed
simultaneously with the filing of the patent application or, an amendment
filed before the Examiner mails the first action on the merits of the
application. MPEP 608.04(b), MPEP 714.09
Preliminary Examination: The initial study of an application by an
official in the patent office to check that the specification is properly
arranged and for preparing search reports. Examinations of international
patents are done by the International Preliminary Examination Authority.
See: Substantive Examination. MPEP 1860
Preliminary Examination Report: A report notifying an applicant of
the results of an International Preliminary Examination. MPEP 1860
Preliminary Statement: In an interference proceeding, a statement made
under oath that sets out the creator of a contested invention, and where
and when it was made. MPEP 2321, MPEP 2322
Presumption of Validity: A presumption created by statute that a patent
is legitimate and sound in law. The burden of establishing that a patent is
invalid is always on the challenger. The burden of proof on the
challenger is to prove invalidity by clear and convincing evidence.
Prima Facie: Latin for ‘On its Face.’ Sufficient evidence to raise the
presumption of fact, unless rebutted. MPEP 2001
Printed Matter: A publication. MPEP 2128
Prior Art: The body of prior knowledge relating to the claimed
invention, including prior use, publications, and patent disclosures.
MPEP 2126, MPEP 2126.01, MPEP 2127, MPEP 2128, MPEP 2128.01,
MPEP 2128.02
Prior Art Reference: A citation to prior art. See: Prior Art.
Prior Art Statement: Also known as an Information Disclosure
Statement, this is a document timely filed in the U.S. Patent and
Trademark Office by the applicant during the prosecution of a patent
application. The statement lists the prior art known by the applicant
and/or his or her attorneys that is thought by them to be material to the
patentability of the claims. See: Information Disclosure Statement.
Prior Public Use: Display of an unpatented invention under
circumstances in which the invention enters the public domain. MPEP
2133.01(a)
Prior Use: The use of an invention before the filing date of an
application.
Priority: Claim to a patent based on an earlier application for a patent for
the same invention (either in the same, or different countries.)
Priority Date: The initial date of filing of a patent application, normally
in the applicant's domestic patent office. This date is used to help
determine the novelty of an invention. This date is also used to determine
the application date of foreign-filed applications, when done in a
Convention country. See: Application, Convention. MPEP 201.13, MPEP
201.13(b), MPEP 1828
Priority Document: A certified copy of a patent application filed no
more than 12 months before the filing date of the later filed application
claiming the priority date of the earlier-filed application. MPEP 201.13,
MPEP 201.13(b), MPEP 201.14, MPEP 1828
Priority Number and Date: The application number and date of the
first-filed application. At the 1883 Paris Convention it was established
that inventors had one year after the filing date of the first application to
file application in other participating countries where they sought patent
protection. In effect, the date of the first filing was recognized as the
priority date of filing in all participating countries. See: One -Year Rule.
Process: An act or method, and primarily encompasses industrial or
technical processes. 35 USC 101. MPEP 2106
Product: A machine, an article of manufacture or a composition of
matter. See: Article of Manufacture, Composition of Matter, Machine.
MPEP 2106
Product of Nature: A thing occurring naturally that is substantially
unaltered by human intervention. An essentially pure culture of a
microorganism does not occur in nature and is not, therefore, a product of
nature. Neither is a genetically-engineered organism a product of nature.
Products of nature are not patentable. MPEP 706.03(a), MPEP 2105
Product per se Claim: A claim to a product irrespective of how it is
produced; a claim to the physical form of an invention.
Product-by-Process Claim: A patent claim that describes a product
invention by describing the process that is used to make it.
Profits: Direct recovery of the patent infringer's profits is not possible in
a case of infringement of a utility patent, but may, under proper
circumstances, be employed as a measure of the patentee's damages.
Prolix Claim: A claim that contains long recitations or unimportant
details that renders the claim indefinite. MPEP 2173.05(m)
Property: An object of ownership whereby the owner can exclude others
from its use and/or enjoyment.
Proprietary Information: Information that is not generally known and
that has competitive value, e.g., trade secrets and business knowledge not
disclosed to others. See: Trade Secret.
Pro se Applicant: An applicant for patent (inventor) who is representing
himself/herself. MPEP 401, MPEP 707.07(j)
Prosecution: The administrative process of obtaining a patent from the
U.S. Patent and Trademark Office. Prosecution includes filing the
application with the USPTO, office actions, amending the application in
response to objections and rejections from the Examiner, responding to
objections and rejections without amendment to the application,
telephone and personal interviews with the Examiner, appeals, and timely
payment of the appropriate fees.
Prosecution History: The history of the prosecution of a patent
application. See: Prosecution.
Prosecution History Estoppel: See: File Wrapper Estoppel.
Protest: A communication by a member of the public to a patent office
arguing and providing evidence that the granting of a patent on a
particular invention would be improper. MPEP 1901
Provisional Application: Provides a means to establish an early filing
date so that U.S. applicants have equal status with foreign applicants.
This process also entails less paperwork and is less expensive than a
traditional application. The applicant is permitted to use patent pending
on applied invention. A non-provisional application must be filed within
12 months. MPEP 201.04(b), MPEP 601, MPEP 601.01(b)
Provision(al) Specification: In the U.K., a brief description of the
invention filed with an application, to be followed by the complete
specification.
Proximate Function: The USPTO practice of classifying inventions that
work in a like manner. Proximate in the sense of nearest to or adjacent.
Proximity Searching: A search which allows records to be found where
terms are present and are within a specified number (/n) of words of each
other or within a single sentence (/s) or paragraph (/p). A search may also
use the operators ‘ADJ’ or ‘NEAR.’
PTDL: See: Patent and Trademark Depository Library.
PTO: The U.S. Patent and Trademark Office. Also known as the
USPTO.
Public Domain: A property right held by the public.
Public Sale: A sale or offer to sell an invention to a member of the
public. A sale need not be public to bar a patent under U.S. law. See:
Statutory Bar. MPEP 2133.03, MPEP 2133.03(b)
Public Use: The public or commercial use of an invention. This is the
opposite of experimental use. See: Statutory Bar. MPEP 2133.03, MPEP
2133.03(a)
Publication: Documents, including the patents of most countries that are
printed, and are actually or presumptively available to the public. MPEP
2128, MPEP 2128.01, MPEP 2128.02
Publication Date: The date on which a patent document is published.
Published Application: A patent application that has been published by
a patent office during its prosecution (before issue).
Published Patent Application: See: Published Application.
Q
Questel Orbit: Questel-Orbit is a dedicated patent and trademark
database that provides access to other major scientific and patent
databases. Questel-Orbit offers international patent-searching capabilities
as well as a detailed list of U.S. patents, some going back to the early 20th
Century. This aggregator also offers access to the Chemical Abstract
Service (CAS) and the Merged Markush System (MMS). Questel is one
of many patent databases that a patent searcher can use. See: CAS
Registry.
R
Rationale for Patentability: The reasoning behind a decision that a
claimed invention is patentable. MPEP 1302.14
Reads On: A claim that includes more than the actual scope of an
invention’s use.
Reduction to Practice: The physical part of the inventive process that
completes the process of invention. Until there is a reduction of practice,
there is no invention. There are two forms of reduction: Constructive
Reduction to practice occurs upon the filing of a U.S. patent application.
The application must adequately disclose the invention. Constructive
reduction to practice does not involve any physical construction. Actual
Reduction to practice occurs when there is physical verification that the
invention works for the intended purpose. This reduction must involve
each and every element that is defined in the claim, as constituting the
invention. The degree of physical verification required will depend on the
nature and complexity of the invention. MPEP 2138.05
Reexamination: Examination of the patentability of an invention
claimed in an issued U.S. patent at the request of the USPTO, the patent
owner or a third party, as a means to introduce newly discovered prior art
and/or printed publications to eval uate the patentability of the subject
material against the new materials. See: Prior Art. MPEP 2209, MPEP
2210
Reference: A document that discloses subject matter that is material to a
determination of the patentability of a claimed invention. MPEP 2126,
MPEP 2126.01, MPEP 2126.02, MPEP 2127, MPEP 2128
Reference Character: A numeral or letter used to identify an element on
a patent drawing.
Registered to Practice: An attorney or agent who has passed the U.S.
Patent bar, undergone and passed review as one morally qualified to
practice, and has paid the necessary fees to be placed on the official
USPTO Register.
Registration: A way of obtaining protection for an invention in certain
British territories on the basis of an already granted British patent.
Reinstatement: Restoration of the enforceability of a patent after it has
either lapsed in error or been revoked.
Reissue: An application filed by a patentee after a patent has issued to
correct applicant's errors that rendered the patent wholly or partly
inoperative due to a defective specification or drawings; or to correct an
application which claimed more or less than the applicant had a right to
claim. The applicant must provisionally surrender the previously issued
patent. Reissues also can be utilized to seek reconsideration in view of
newly found prior art. Any reissued patent that results will have the same
expiration date as the original patent. MPEP 1401, MPEP 1402
Reissue Patent: A corrected U.S. patent that issues from an allowed
reissue application. See: Reissue. MPEP 1401, MPEP 1402, MPEP 1403
Rejection: When a patent application or its individual claims are refused
by the patent office. MPEP 706, MPEP 706.01
Request for Reexamination: A request filed by a patentee or a third
party seeking reexamination of one or more claims of a patent based
upon an alleged substantial new issue of patentability due to printed prior
art not considered by the U.S. Patent and Trademark Office Examiner
who handled the application originally. MPEP 714.13, MPEP 818.03,
MPEP 1214.01, MPEP 1214.03
Request for Reconsideration: Further argument submitted after a claim
has been rejected. See: Rejection.
Research Disclosure (RD): A defensive-type publication which is
published, often anonymously, to give companies and inventors "freedom
of use" rather than legal protection. Onc e research disclosures are
published, the invention described cannot be patented. See: Defensive
Publication, H Document.
Restoration: Proceedings to revive a patent that has lapsed due to
nonpayment of renewal fees. See: Fees, Renewal.
Restriction (Restriction Requirement): A requirement by an Examiner
that an applicant choose which of multiple claimed, distinct inventions
disclosed in a patent application that they wish to be examined. The
nonelected claims may be pursued by a divisional application. See:
Application, Divisional. MPEP 802, MPEP 802.02, MPEP 803
Reverse Doctrine of Equivalents: This concept is used infrequently. It
refers to situations where one might literally infringe a patent claim, but
due to the interpretation of the claim, would not be held to be an
infringer. See: Doctrine of Equivalents.
Revival of Abandoned Application: To reinstate a patent application
that has been abandoned (relinquished), either by express abandonment
or by inaction. Abandonment by inaction typically involves failure to
take a required action (e.g., filing an incomplete response or not paying a
fee) during the statutory period for taking the action. A U.S. patent
application that was unavoidably or unintentionally abandoned can be
revived by petition. See: Abandon, Petition. MPEP 711
Revocation: 1) Termination of the protection given to a patent on one or
more grounds, e.g. lack of novelty. 2) In British law, the application for
revocation of a patent, sometimes known as “belated opposition.” The
proceedings before a patent office or a court to have a patent declared
invalid.
Right of Priority: The right to priority on an invention established by
filing the first patent application in an appropriate patent office. MPEP
201.13, MPEP 201.13(a), MPEP 201.13(b)
Routineer: A person having ordinary skill in an art. See: Hypothetical
Person Skilled in the Art.
Royalty (Reasonable Royalty): A hypothetical royalty fee used as a
measure of damages to compensate for the infringement of a patent. It is
the statutory minimum amount of recovery for compensatory damages
for patent infringement.
S
Schedules: A reference to the classification breakdown found in the
Manual of Classification. Each of the schedules represents an art
arranged in a hierarchy from the most complex inventions down to the
least complex inventions. See: Manual of Classification.
Scope: The total field encompassed by a patent claim.
Search Class Cross Reference: A listing of additional classes that are
related to the current subject matter. Located below the current subclass
definition in the Classification Definitions of the Manual of
Classification. See: Manual of Classification.
Search Report: A list of published prior art and other references (both
from patent sources and non-patent literature), issued by the patent
searcher or patent office Examiner, which presents an opinion as to the
patentability of a particular application. MPEP 707.05, MPEP 707.05(a),
MPEP 1844
Secondary Considerations: Objective evidence of the actual
marketplace setting in which an invention was made. This evidence is
relevant to deciding whether an invention is non-obvious. Categories of
such evidence would include commercial success of the claimed
invention, long-felt need that was met by the invention, unexpected
results achieved by the invention, failure of others to make the invention,
and copying of the invention by others. See: Obviousness.
Senior Party: The party in an interference who has the earlier U.S. filing
date. See: Junior Party.
Sequence Rules: Rules promulgated by a patent office that concern the
form of disclosures of inventions that contain nucleotide sequence data
and/or amino acid sequence data. MPEP 2420, MPEP 2421.01, MPEP
2421.02
Serial Number: An identifying number given to each patent application
by the USPTO as of the day it is received or made complete. MPEP 503
Service Mark: A word, name, symbol device, or any combination
thereof, used to identify and distinguish the services performed by a
particular entity from those performed by its competitors.
Showing: Evidence to show unexpected superiority over other similar
applications filed to overcome an objection of obviousness over prior art
(in the U.S.).
SIR: See: Statutory Invention Registration.
Skilled in the Art: An ordinary level of proficiency in a particular
technology in which an invention is made.
Small Entity: An independent inventor, a small business or a non-profit
organization. The USPTO reduces the amount of certain fees that it
charges small entities by 50 percent. MPEP 509.02, MPEP 509.03
Special Status: A status granted U.S. patent applications that have
certain characteristics upon successful petition to the USPTO.
Applications granted special statuses are given a higher priority for
examination. MPEP 708.02
Specification: Part of the patent that precedes the claims and includes the
drawings and written description of the invention and the claims. In the
U.K., the first publication after application is called a specification, being
an “A” document. See: Application. MPEP 608.01, MPEP 608.01(a),
MPEP 2161
State-of-the-Art: The total information in the relevant field known to the
hypothetical person skilled in the art.
Statement of Invention: That part of the specification corresponding to
the main claim, summarizing the broadest aspect of the invention.
Status: The legal standing of a patent or patent application, i.e. whether
it is pending, lapsed or still protected, etc. MPEP 102
Statutory Bar: A bar to patentability established by law. Examples may
include publication anywhere before application, or public use or sale
before the first application. MPEP 2133
Statutory Invention Registration (SIR): Registration of an invention
with the USPTO to place an invention in the public domain. The
disclosure of an application for Statutory Invention Registration is
equivalent to the specification and drawings of a patent application. A
document registered in this manner is not reviewed, and is used merely to
establish prior art. See: Prior Art, Public Domain. MPEP 1101
Statutory Period: The period of time within which a response must be
filed with the USPTO if abandonment of the application is to be
avoided. MPEP 710.01, MPEP 710.01(a), MPEP 710.02, MPEP
710.02(b)
Statutory Subject Matter: Patentable subject matter. MPEP 2105
STN: STN International is operated by the Chemical Abstracts Service
(CAS), and is a comprehensive database system which covers a wide
range of scientific and technological subjects such as biotechnology,
chemistry, patents, physics and toxicology. They offer specialized search
utilities to help scientists and technologists access over 200 databases
pertinent to the scientific community.
Substantive Examination: The full examination of a patent application
(substance or content) by a patent office Examiner to determine whether
a patent should be granted. See: Preliminary Examination.
Substitute Patent Application: A patent application that is a duplicate
of an earlier application by the same applicant abandoned before the
filing of the later application. MPEP 201.09
Substitute Specification: A rewritten specification of a patent
application filed after the filing date of the application, which corrects
some error but that does not introduce new matter. See: New Matter.
MPEP 608.01(q)
Supplementary Protection Certificate (SPC): The name given in
Europe to an extension of term given to a pharmaceutical or plant
protection patent as a result of losing part of the term while awaiting
permission to use the product.
Surrender of Patent: An act that must occur concurrently with the filing
of a reissue patent application in the USPTO. MPEP 1416
Swearing Back: Removing a reference (e.g., publication) from the prior
art by providing evidence to the USPTO that either 1) conception of the
invention occurred prior to the effective date of the reference and the
inventor was diligent in reducing the invention to practice from just
before the effective date of the reference until reduction to practice
occurred; or 2) completion of the invention (reduction to practice)
occurred before the effective date. See: Affidavit. MPEP 715, MPEP
706.02(b), MPEP 706.02(k)
T
Teach: To inform and instruct by way of the documents making up the
prior art. The prior art references teach the technology disclosed in them
or revealed by them.
Teaching Away: The situation in which a prior art reference suggests
that a claimed invention is not possible, e.g., would not work. MPEP
2145
Teaching Toward: A prior art reference that suggests or points in the
direction of the present invention is said to teach toward the invention
and is evidence that the invention is obvious.
Technical Field: The field of art to which the invention pertains. MPEP
608.01(c)
Technology Manager: The person in a public or private sector
organization who is responsible for managing the intellectual property of
the organization. Various titles are used for the position, including
Technology-Transfer Officer, Licensing Associate, etc. The Association
of University Technology Managers (AUTM) has over 1,200 members.
Another such organization, the Licensing Executives Society (LES), has
over 6,000 members worldwide.
Term of Patent: The maximum number of years that the monopoly
rights conferred by the grant of a patent may last. (20 years in most
countries).
Terminal Disclaimer: A document filed with the U.S. Patent and
Trademark Office by an applicant, assignee, patent attorney or agent
wherein a terminal portion of the normal term of the patent is given up.
This is usually required to overcome a judicially-mandated double
patenting rejection. See: Double Patenting Rejection. MPEP 1490
Testimony: Evidence given by a witness, under oath, as distinguished
from evidence derived from writings or other sources.
Title of Invention: A brief but technically accurate name for the
invention. MPEP 606
That Which Infringes if Later, Anticipates if Earlier: A rule stating
the equivalence between two tests under patent law (i.e., the test of
infringement of a patent and the test of anticipation in the prior art to
invalidate a patent). If the claim of a patent is literally infringed by a
prior art reference, then the claim is anticipated by that prior art reference
and, therefore, is unpatentable. Note that there cannot be anticipation of a
claim by equivalents. See: Anticipation, Infringe, Prior Art.
Thornhill Claim: In the U.K., a claim with exactly the same scope as a
specific priority document.
Trademark: A word, name, symbol, device, or any combination thereof,
used by a manufacturer or by a vendor in connection with a product.
Trade Name: A name used to identify a business entity.
Trade Secret: Information kept secret by an organization for the purpose
of maintaining a competitive advantage. See: Proprietary Information.
Traverse: To dispute the decision of an Examiner. In proceedings before
the USPTO, failing to traverse an Examiner's reliance on alleged
"common knowledge" or information that is alleged to be "well known"
in the art can result in the allegation becoming an admission, and hence,
"fact" even though it is not true. MPEP 714.02, MPEP 2144.03, MPEP
818.03, MPEP 818.03(b), MPEP 818.03(c)
U
Undue Experimentation: An unreasonable amount of experimentation
practiced on a disclosed invention. MPEP 2164.01, MPEP 818.03(c)
Unenforceable: A determination by a court that a patent cannot be
enforced against a claim of infringement because the patent is defective.
United States Class (U.S. Class): The U.S. Patent and Trademark Office
subject classification. The classification list available online at:
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/def/.
United States Code (USC): The codified laws of the United States.
United States Patent and Trademark Office (USPTO, PTO): The
agency of the U.S. Federal Government responsible for administering the
country's patent system.
United States Patent and Trademark Office Code of Federal
Regulations (CFR): The regulations promulgated by the USPTO under
section 35 USC. See: CFR.
U.S. Patent Citations (U.S. Patent References): Mentions of earlier
patents that appear on the front page of a patent document when that
patent is issued. Citations/references are placed on the front page by a
patent Examiner and represent the most relevant prior art upon which the
patent builds.
Unobvious: The state of a claimed invention's not being apparent to a
person having ordinary skill in the art to which the invention pertains.
Also called non-obvious. See: Obviousness.
Unreasonable Experimentation: See: Undue Experimentation.
Useful: An invention must have a constructive or functional purpose and
must operate or perform as specified in the patent. MPEP 706.03(a),
MPEP 2107, MPEP 2107.01, MPEP 2107.02
Utility: One of the three statutory requirements of an invention. A
patented invention must be fit for some desirable, practical, or
commercial purpose. See: Novelty and Obviousness. MPEP 706.3p
Utility Model: In some countries (e.g., Germany and Japan), a type of
patent that is available that requires less inventiveness than necessary to
obtain a traditional patent. Such patents generally have a shorter life.
Also known as a petty patent.
Utility Patent: A patent that covers a new and useful process, machine,
manufacture, or composition of matter, as opposed to plant and design
patents.
Utility Statement: That part of the specification which states the
usefulness of the invention.
V
Valid: Sound and justified; meeting the test of patentability.
Validity: The issue of whether a patent is valid. See: Valid.
Validity Opinion: An opinion offered by a patent agent or a patent
attorney as to whether the claims of an issued patent would likely be
upheld by a court in view of the facts made available to him/her.
Venue: County or district in which a legal action is to be performed.
Verified Statement/Showing: A verified statement is one made with the
stated knowledge that false statements and the like are punishable by
fine, imprisonment, or both, and may jeopardize the validity of the
application or any patent that issues from it. A showing is evidence that
the statement is true.
W
Westlaw: Westlaw, a division of the Thomson-West Corporation, is a
comprehensive database provider of legal, business, news and other
information. They offer coverage on a variety of patent databases and
systems. Like other database systems, a legal researcher should be aware
of this option as a means to fulfill their searching needs.
Whole Contents Approach: The principle that the whole contents (not
just the claims) of an unpublished application may destroy the novelty of
a later application.
Wildcard: An asterisk (*) or a question mark (?) that can be used to
replace one or more characters or words in a keyword search.
Willful Infringement: Conduct that constitutes an illegal use of
another's patented invention where the infringer has no reasonable basis
for believing that their actions are legal (i.e., infringement when the
infringer knew of the patent). A finding of willful infringement is a basis
for increasing damages up to treble the actual amount and/or granting an
award of attorneys' fees to the prevailing party. Good-faith reliance on
the advice of counsel can be relevant to the issue of whether an
infringement was willful. See: Fees, Attorneys’, Infringement.
WIPO (World Intellectual Property Organization): An agency of the
United Nations, that acts as a coordinating body for patent systems and
procedures, as well as for trademark and copyright matters. MPEP 1801
Withdrawal: The permanent abandonment of a patent application either
before or after publication. Priority claims as well as elections of States
and the Demand may also be withdrawn. MPEP 1859, MPEP 1880
Worked or Working: The condition of having met a country's
requirement that an invention be put to use in some way. Most
countries require "working" of a patent within a specified time after
grant. Conditions for working requirements vary widely, from
publication of availability of licenses, to actual manufacture or sale of a
product that embodies the claimed invention. Depending on the country,
a patent may be subject to compulsory licensing or lapse unless the
invention is operated commercially.
Written Description: The disclosure of an invention, normally written
in a patent application. This disclosure must clearly convey what the
inventor(s) considered the embodiment of their invention to a person
skilled in the art. See: Embodiment. MPEP 2163
X
X-art Collections: See: Cross-Reference Art Collections.
XOR: Boolean operator which requires either of two specified terms to
be present in a record, but not both. See: Boolean Logic.
X-Series: U.S. patents issued between 1790 and July 4, 1836; these
patents may only be found by searching for the patentee’s name and date
of issue.
Y
Z
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