February 25th, 2019Patent Term Glossary – definitions of commonly used terms

Glossary of Patent Terms:

Patent – A document issued by the USPTO or other country that grants an inventor or assignee the exclusive rights to make and sell the patented product in that country.

IP – Intellectual Property, a term that includes Patents, Trademarks, Copyrights, and Trade Secrets.

PCT – Patent Cooperation Treaty – The PCT is an international treaty with more than 150 contracting countries. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent offices in what is called the “national phase”.

USPTO – United States Patent and Trademark Office.

WIPO – World Intellectual Property Organization – WIPO is the global forum for Intellectual Property services, policy, information and cooperation. It is a self-funding agency of the United Nations, with 191 member states.

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Abandonment – Termination of proceedings at the USPTO through the voluntary or involuntary non- response to an official paper which requires a response.  A patent or trademark application goes abandoned if the USPTO (or foreign office, if filing overseas) sends a communication that requires a response by a certain date and the response isn’t filed by that date.  In some cases, the application may be revived, but not in every case.

Abstract – One paragraph summary of the invention in the patent application.

Allowance – Describes action by a patent office indicating the intellectual property is allowable and that a patent will be granted (or issued) if the issue fee is paid and the proper documentation is filed.

Amendment – Form filed to make revisions to a patent application.

Appeal – Action to appeal a patent examiner’s decision.

Application Filing date – The date the patent application is filed (with the USPTO or foreign office).

Application number – The number the USPTO (or foreign office) assigns to the patent application.

Assignee – A person or company, other than or including the inventor, that own the patent.

Assignment – A document an inventor executes to transfer a portion or all of their patent rights to another person or company.

Claim of priority – A specific reference in the application or application filing papers in a later filed patent application to an earlier patent application filed by the same inventors.   A proper claim of priority grant the second patent application the same filing date as the first patent application.

Claims – The section of the patent application that defines the legal scope of protection for the invention.

Child Case – A continuing patent application claiming priority of an earlier filed application.

Continuation – A second patent filing with new claims but having the same text (specification and drawings) as the first patent application.  A continuation gets the same filing date as the first filed application.

Continuation – in – part (CIP) – A modified version of the original application often with new drawings, text or claims (new matter).  The original text (old matter) gets the filing date of the first application where the new matter gets the filing date of the second case.

Declaration – A document an inventor signs saying that they are the inventor and that they’ve read and understood their patent application.

Design Patent Application – A patent application filed on the ornamental appearance of an object.

Divisional application – A second application filed that includes claims not examined in the first application; the divisional application contains claims separated by the patent examiner as a consequence of a restriction requirement.

Docket – A system for maintaining legal dates for a portfolio of patent cases.  Every application should be docketed so the due dates of communications to the USPTO aren’t missed, resulting in an abandoned application.

Drawings (Figures) – A draftsman’s rendering of the invention done to Patent Office standards.

Embodiment and Preferred embodiment – An embodiment is a version of the invention and the preferred embodiment is the version that is the most important and the most likely to be sold.

Examiner – An employee of the USPTO or foreign office who examines a patent application and reviews the merits of the application, and who decides whether or not to allow it.  In other words, be nice to him or her.

Figures (Drawings) – A draftsman’s rendering of the invention done to Patent Office standards.

Filing date – The date a document is received by the USPTO.

Filing fee – The government fee paid to the USPTO or foreign entity to file the patent application with the respective patent office.

Filing receipt – The receipt the USPTO sends when a patent application has been successfully filed. The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application. The application number is used to obtain information about your application throughout the prosecution process.

Final rejection – The second rejection by the patent examiner of the patent application.  The prosecution can be continued with a Request for Continuing Examination (RCE) or the case can be appealed.  In effect, the rejection is not really final, since the process isn’t finished and the application may still be issued as a patent after more prosecution.

Foreign filing – Filing a patent application in a foreign country.

Final office action – The final communication by the examiner during the prosecution phase.  If it’s a final rejection, see that definition above.

Freedom to Operate – An opinion resulting from a search of patents to determine whether or not a business is blocked by an active patent from making and selling a product.

Grant – the official award of a legal right, in IP the official award of a patent where the rights of same are in full force and effect.

Inventor(s) – The person or persons who contributed to the conception of the invention as defined by the patent claims.

Issue Date – The date the patent application is issued as an actual patent.

Issue fee – A fee paid to the USPTO by the inventor or applicant upon receipt of a notice of allowance necessary to receive the final granted patent.

Patent – A patent application that has been approved and issued by the USPTO or foreign office.

National Phase – A term used for filing international patent applications, this is the next step after filing a PCT for international protection.  An application is ‘nationalized’ in the countries of choice and each national application is prosecuted in each of those countries.

New matter – New material added to a filed patent application – not allowed in a pending utility application unless filed in a Continuation-in-Part application.

Non-final action – A document sent by the USPTO examiner typically outlining claim rejections and often citing prior art patents against the inventor’s application.  Since it is “non-final” the inventor will have an additional opportunity to respond to the Examiner again if the Examiner does not fully agree with the applicant or inventor’s arguments.

Notice of Missing Parts – A communication from the USPTO that the patent application is purportedly missing one or more required elements from the original filing and advising the attorney/inventor to submit it.

Notice of Allowance – A communication from the USPTO that a patent application has been allowed and that the patent will be granted upon payment of the issue fee.

Official action or Office Action – An office action is a communication from the examiner based on the examiner’s review of 3rd party prior art (related patents or literature) often rejecting one or more claims of the patent application and frequently citing the relevant sections of the US code used in formulating the rejection.

Parent case – The first non-provisional patent application filed for a chain of related patent applications; child applications may be filed from this application and will retain the filing date of the parent.

Patent filing – Filing a patent application with the USPTO or foreign office, with the accompanying required documents.

Patent number – The number assigned to an issued patent.

Patent Search – A search for patents related to a current invention.  The USPTO site allows a search of US patent applications and issued US patents; a patent practitioner should have access to a data base of patent applications and issued patents from other countries as well.  A patent application or issued patent from any country can block an inventor from obtaining a patent on their invention.

Patent Term – The maximum time the patent may remain in force assuming all maintenance fees are paid to the USPTO.  For utility patents it is 20 years from the Utility filing date plus any patent term extensions.  For Design patent it is 15 years from the filing date if the application was filed before May 13, 2015, 14 years from the date of grant if filed earlier.

Patent Term Extension – Additional patent term granted by the USPTO due to patent office delays in prosecution.

Patent Pending – The term used to indicate that a patent application has been filed for a specific invention but has not yet resulted in an issued patent.

Patent Prosecution – The process of arguing the merits of the patent application with the patent examiner to convince him or her that the application should result in a granted patent.

Plant Patent Application – A patent application for a new type of plant that is obtained asexually and does not occur naturally.

Power of Attorney – A form an inventor signs to allow a patent attorney or patent agent to represent them before the USPTO.

Prior Art – Any technology relating to an invention that is known prior to the filing of the patent application.  It can be displayed in patent applications, issued patents, journal articles, on the internet, in prior products, and in other places.

Priority Date – the date of the first filed application in a patent family.  It is the date the application was received by the patent office.  It is basis for determining what prior art may be applied against the patent in examination and it triggers other legal deadlines for later domestic or international filings.

Provisional Patent Application – A patent application that is filed to establish the date of patent filing; it expires one year from its filing date and is usually incorporated in full in a subsequent utility application that is filed before the one-year timeframe has passed.

Publication – the patent office publishes the inventor/applicants patent application 18 months after the first filed provisional or utility application, and the text, drawings and file history of the application are available to public review.  The application becomes prior art to other patents in the same field.

Publication date – the date the application is published.

Rejection – a particular ground for refusing to grant a patent application communicated in an official action from the patent office.  An examiner may reject one or more claims because it is indefinite, ineligible, anticipated (non-novel) or obvious, among other reasons.  The inventor/applicant will file a response to the rejections through their attorney/agent during prosecution to convince the examiner to allow the claims.

Restriction requirement – A requirement to split one patent application into two or more applications, or ‘restrict’ the application to a subset of the claims.  The patent examiner determines that separate searches need to be performed on the set of claims in the patent application and so asks the inventor/applicant to decide which claims they wish to pursue for the prosecution.  The elected claims are then reviewed by the examiner and the unelected claims can be refiled and examined in a new case known as a divisional application.

Ribbon copy – The official hard copy of an issued patent.

Specification – The section of a patent application that describes the invention in full detail.

Utility Patent Application – A patent application for a novel, non-obvious product.

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