Patent Legal Dictionary

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Patent Law Dictionary

Dictionary of Patent and Licensing Legal Terms

More than 300 key terms related to patents, licensing and intellectual property law defined clearly and concisely. An indispensable reference and an aid to understanding patent and licensing practices.

The Dictionary

ABANDONMENT (Patent Law Dictionary)
An inventor may decide to abandon a patent application that is pending in the patent office by not responding to communications from the patent office or by notifying the patent office that he or she officially abandons the application. Once an application is abandoned, patent office will no longer consider the application for patentability. An inventor may revive an abandoned application if he or she can satisfy the patent office that the abandonment was unintentional or unavoidable. Reference- MPEP 711
ABSOLUTE NOVELTY (Patent Law Dictionary)
A requirement of some patent offices (but not the USPTO) that public disclosure or sale of an invention anywhere in the world cannot occur prior to the filing of a valid patent application.
ACTION (Patent Law Dictionary)
An official communication from a patent office, usually requiring some response by the applicant. Reference- MPEP 707
ADMISSIONS BY APPLICANT (Patent Law Dictionary)
A statement by an applicant for patent that can or is used to deny the patentability of an invention, in some cases regardless of whether the statement is true. Reference- MPEP 2129
ADVISORY ACTION (Patent Law Dictionary)
An action 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. See Action. Reference- MPEP 714.13
AFFIDAVIT (Patent Law Dictionary)
A written, sworn statement that includes facts in support of the patentability of an invention. Under U.S. rules, an affidavit or declaration under 37 CFR 1.131 is used to “swearing behind” a reference and an affidavit or declaration under 37 CFR 1.132 is used in traversing a rejection. Reference- 37 CFR 1.131
AGENT (PATENT) (Patent Law Dictionary)
An individual who has passed the US Patent Office Bar exam and is registered to practice (may be referred to as a practitioner or representative) – but who is not an attorney, therefore does not practice other aspects of law. A patent agent is authorized to act for or in place of applicants (inventors) before the US patent office. — See 37 CFR � 10.6 and the searchable online Patent Attorney Agent Roster
AGGREGATION (Patent Law Dictionary)
A ground for rejection of a patent claim that is based on a lack of cooperation among the elements of an invention. A rejection for aggregation is considered non-statutory. Reference- MPEP 2173.05(k)
ALLOWANCE (Patent Law Dictionary)
Allowance is the term used by the patent office to indicate that a patent application is in a condition to become a granted patent.
AMENDMENT (Patent Law Dictionary)
Any change to a patent application that is pending in the patent office. Amendments are usually made in response to a communication from the patent office, but an inventor can submit a preliminary amendment before he or she receives any communication from the patent office. Amendments can not add information that was not part of the original patent application, but portions of the application may be deleted or rewritten and obvious errors corrected.
ANTICIPATION (Patent Law Dictionary)
A reference that contains all of the elements of a claim is considered to anticipate the claim.
APPLICATION (FOR PATENT) (Patent Law Dictionary)
A document describing a claimed invention and requesting that a patent on the claimed invention be granted to an applicant. In the U.S., an application must include a specification and a drawing (if required to understand the invention). A regular U.S. patent application must also include at least one claim and it must be accompanied by an oath and a fee. In addition to a specification and a fee, a provisional U.S. patent application must be accompanied by a cover sheet and a fee. Reference- MPEP 601
APPLICATION NUMBER (PATENT) (Patent Law Dictionary)
The unique number assigned to a patent application when it is filed. The application number includes a two digit series code and a six digit serial number.
APPLICATION SERIES (Patent Law Dictionary)
A grouping of application serial numbers (the last six digits of the application number) having the same series code. MPEP 503.
APPLICATION, CONTINUATION (Patent Law Dictionary)
A subsequent application for the same invention disclosed in a prior (regular or nonprovisional) application that is filed before the original application becomes abandoned or patented. Also called a continuing application. Reference – MPEP 201.07(b)
APPLICATION, CONTINUATION-IN-PART (Patent Law Dictionary)
An application by the same applicant repeating 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. MPEP 201.08.
APPLICATION, DIVISIONAL (Patent Law Dictionary)
A later application “carved out of” an earlier application for an invention that is disclosed in the earlier application but that is distinct or independent from the invention claimed in the earlier application that is filed before the earlier application becomes abandoned or patented. Also known as a division. MPEP 201.06.
APPRAISAL OF PATENT (Patent Law Dictionary)
Determination of the value of a patent using a recognized expert or third party
ART UNIT (Patent Law Dictionary)
A subunit of a patent examining group. Also called Group Art Unit. MPEP 502.
ARTICLE OF MANUFACTURE (Patent Law Dictionary)
A product, a physical thing. There is no clear difference between an article of manufacture and a machine. Under U.S. law, one of the statutory classes of inventions. MPEP 2105, MPEP 2106, MPEP 2114.
ASSERT (Patent Law Dictionary)
To assert a patent is to attempt to enforce it. To attempt to prevent an unlicensed party from practicing an invention.
ASSERT PATENT (Patent Law Dictionary)
Enforce a patent (demand payment for use of the patent) when the owner of patent does not practice the patent
ASSERTIVE LICENSING (Patent Law Dictionary)
Aggressive, pro-active demand for compensation from the user(s) of a patent by a patent owner that does not practice the patent
ASSIGNEE (Patent Law Dictionary)
A recipient of an ownership right in a patent application, patent or interest in a patent application or patent. MPEP 301.
ASSIGNMENT (Patent Law Dictionary)
A 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. MPEP 301.
ASSIGNOR (Patent Law Dictionary)
The entity that transfers an ownership right in a patent application, patent or interest in a patent application or patent. MPEP 301.
BACKGROUND OF THE INVENTION (Patent Law Dictionary)
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).
BAR, STATUTORY (Patent Law Dictionary)
A circumstance that prevents (bars) issuance of a valid patent. MPEP 2133.
BASE CLAIM (Patent Law Dictionary)
A claim from which another claim depends, either directly or indirectly. MPEP 608.01(n).
BASIC PATENT (Patent Law Dictionary)
The first member of a “family” of patents (which may or may not be the first member published. Sometimes also called the parent patent – the following ones being “children”.
BEST MODE (Patent Law Dictionary)
The way of implementing the inventive concept contemplated by the inventor on the filing date of the patent application. MPEP 608.01(h), MPEP 2165, MPEP 2165.01, MPEP 2165.02.
BIOLOGICAL MATERIAL (Patent Law Dictionary)
Material referenced in the disclosure of a patent application that is capable of self-replicating, either direclty 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.
BOARD OF PATENT APPEALS AND INTERFERENCES (Patent Law Dictionary)
A board of senior examiners that hears appeals of adverse patentability decisions of examiners. MPEP 1202, MPEP 1203.
CARROT LICENSE (Patent Law Dictionary)
An agreement, entered into amicably, to pay a fee to the owner of a patent for the use of the patented invention. The opposite of a “carrot license” is a “stick license.”
CERTIFICATE OF CORRECTION (Patent Law Dictionary)
Issued upon patentee request due to a U.S. Patent and Trademark Office or applicant minor error in the patent such as printing, typographical, or clerical errors.
CHAPTER I (Patent Law Dictionary)
The first, mandatory phase under the Patent Cooperation Treaty that includes performance of an international-type search, issuance of an International Search Report, and publication of the application and Search Report by the International Bureau of WIPO
CLAIM (Patent Law Dictionary)
A claim is one of the numbered paragraphs that appear at the end of a patent and defines the scope of protection given to the owner of the patent (i.e., the right to prevent others from making, using, selling, offering for sale, or importing the claimed invention). Each claim is treated separately for purposes of determining validity and infringement. For example, claims may be directed toward apparatus, methods, products, and compositions of matter and new and useful improvements thereof.
COMPRISING (Patent Law Dictionary)
A transition phrase immediately following the preamble of a claim. The word “comprising” in a claim renders the claim open, which means that additional elements could be added to the accused infringing device without avoiding infringement. For example, if a claim began “A chair comprising three legs” then a chair having four legs would infringe. For other transition phrases see “consisting of” and “consisting essentially of”.
CONTINGENCY PATENT ASSERTION (Patent Law Dictionary)
Pursuit of compensation from the user(s) of a patent by a patent enforcement firm or law firm on behalf of the patent owner under which the patent enforcement firm or law firm earns a fee for its services only if it is successful in securing an award or settlement for the patent owner
CONTINGENCY PATENT ENFORCEMENT (Patent Law Dictionary)
Legal action against the alleged infringer of a patent by a patent enforcement firm or law firm on behalf of the patent owner with the goal of receiving compensation for the use of the patent, and the patent enforcement firm or law firm only earns a fee for its services if it is successful in securing compensation for its client
CONTINGENCY PATENT INFRINGEMENT LITIGATION (Patent Law Dictionary)
Arrangement between a patent owner and a patent enforcement firm or law firm under which the firm will be compensated out of the proceeds resulting from a patent infringement lawsuit filed on behalf of the patent owner
CONTINGENCY PATENT LAWSUIT (Patent Law Dictionary)
Patent infringement lawsuit in which the patent owner or inventor does not pay the patent enforcement firm or law firm any money upfront for their services because the firm is compensated when the case is settled and is paid out of the proceeds of the settlement
CONTINUATION-IN-PART (Patent Law Dictionary)
An application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier non provisional application and adding matter not disclosed in the earlier nonprovisional application. A CIP need not name the identical inventive entity. — see MPEP 201.08 for more
COPYRIGHT (Patent Law Dictionary)
Protection of written work (such as books, plays, newspapers and magazines), recordings (songs and motion pictures), and visual arts (such as paintings or other artwork). Copyrights convey to the copyright owner an exclusionary right � the right to prevent others from copying, offering for sale, performing, displaying or making derivative versions of a work of authorship. The duration of a copyright depends on several factors, but is at least 70 years. Copyright enforcement is a service offered by General Patent Corporation.
DAMAGES (Patent Law Dictionary)
What is paid to the plaintiff as the settlement of a lawsuit to compensate the plaintiff for the harm (or damage) done to him, her or it by the defendant in the lawsuit
DAMAGES, EXPERT WITNESS ON (Patent Law Dictionary)
Third-party with demonstrated expertise who helps calculate the economic damages suffered by the plaintiff in a lawsuit
DEMAND (Patent Law Dictionary)
Form PCT/IPEA/401, filed with an International Preliminary Examining Authority, demanding that an international application shall be the subject of an international preliminary examination.
DESIGN PATENT (Patent Law Dictionary)
This type of patent covers the original and ornamental aspects of a product. The prime focus is on the overall ornamental appearance.Reference – The Business of Patents – Design Patent MPEP #
DOCTRINE OF EQUIVALENTS (Patent Law Dictionary)
One literally infringes a claim where every element of the claim is expressly satisfied by a device, process, or composition of matter. Under the judicially created doctrine of equivalents, one may be held liable as an infringer even if one does not literally infringe a patent. In general, it is an equitable concept employed to prevent someone from getting the benefit of the invention by making a minor change that avoids literal infringement. See also the related concept of file wrapper estoppel.
EFFECTIVE DATE (Patent Law Dictionary)
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 usually something different from the Effective Filing Date of a patent application. MPEP 2126, MPEP 2126.01, MPEP 2128, MPEP 2128.02
ELECTION (Patent Law Dictionary)
The choice by the applicant of the invention to be prosecuted and, hence, the claims to be examined. MPEP 818, MPEP 809.02(a), MPEP 809.02(b), MPEP 818.03(b).
ELEMENT OF CLAIM (Patent Law Dictionary)
A (usually indented) 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 (Patent Law Dictionary)
One (generally of many possible) concrete (physical) form of an invention as described in a patent application or patent.
ENABLEMENT (Patent Law Dictionary)
Support within a disclosure of a claimed invention. Enablement occurs when a person skilled in th art to which the invention pertains is taught how to make and how to use an invention. MPEP 2164, MPEP 2164.01.
ENFORCE PATENT (Patent Law Dictionary)
To contacting alleged patent infringers and, using the threat of patent infringement litigation, convince the patent infringers to cease their infringement of the patent(s) and/or pay for use of the infringed patent(s). Patent infringement is not a crime, so patent enforcement must be pursued by the patent owner through civil litigation.
ENJOIN (Patent Law Dictionary)
Direct or impose by court order.
EPC (Patent Law Dictionary)
See European Patent Convention.
EQUIVALENT (Patent Law Dictionary)
Equal under patent law. MPEP 904.01(b), MPEP 2144.06, MPEP 2183.
EUROPEAN PATENT CONVENTION (Patent Law Dictionary)
An agreement among Eurpoean nations that establishes a regional, European patent system.
EX PARTE (Patent Law Dictionary)
A legal proceeding with no adversary, as in a normal patent prosecution.
EXAMINATION (Patent Law Dictionary)
Review of a patent application to determine if a claimed invention is patentable. MPEP Introduction.
EXAMINER (Patent Law Dictionary)
An official of a patent office charged with determining the patentability of inventions claimed in patent applications.
EXAMINER’S ACTION (Patent Law Dictionary)
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.
EXAMINING GROUP (Patent Law Dictionary)
See Art Unit.
EXAMPLE (Patent Law Dictionary)
An example of one embodiment (implementation) of an invention. If the example is an actual (“working”) example, i.e., an example of work actually done, it is described in the past tense. If it is a prophetical example, or if simulated or predicted test results are presented, the present tense is used. MPEP 608.01(p), MPEP 2164.02.
EXECUTE (Patent Law Dictionary)
With reference to a patent application, to sign an oath or declaration. MPEP 601.04, MPEP 602.01
EXHIBIT (Patent Law Dictionary)
A physical embodiment of an invention; a model or specimen. MPEP 608.03, MPEP 608.03(a).
EXPERIMENTAL USE (Patent Law Dictionary)
A public use of the invention that having the primary purpose is of testing of the invention. Experimental use is allowed in the U.S. and Japan (for a short period) but not in most jurisdictions. MPEP 2133.03(e), MPEP 2133.03(e)(4), MPEP 2133.03(e)(6).
EXPERT WITNESS ON DAMAGES (Patent Law Dictionary)
Someone with expertise in the field of, for example, patent technology who can help determine the economic damages arising from patent infringement, such as lost profits from the sales of products that use the infringed patent
EXPIRY DATE (Patent Law Dictionary)
The date when a patent has run its full term and the invention is no longer protected by it.
EXTENSION OF TIME (Patent Law Dictionary)
An extension of the “period for response” stipulated in an Office action. MPEP 710.02(e).
FEDERAL CIRCUIT (Patent Law Dictionary)
See Court of Appeals for the Federal Circuit (CAFC or Fed. Cir.).
FEDERAL REGULATIONS (Patent Law Dictionary)
The regulations of the departments and agencies of the U.S. Federal Government as published in the Code of Federal Regulations.
FEE, FILING (Patent Law Dictionary)
The fee charged by a patent office for filing a patent application. MPEP 607, MPEP 509.
FEE, ISSUE (Patent Law Dictionary)
The fee charged by a patent office for issuing (granting) a patent. MPEP 1306, MPEP 509.
FEE, MAINTENANCE (Patent Law Dictionary)
The periodic fee charge by the U.S. patent office for maintaining a patent in force. MPEP 2501, MPEP 2504, MPEP 509.
FEE, PETITION (Patent Law Dictionary)
The fee charged by a patent office for reveiwing a petition filed by an applicant. MPEP 1002.
FIELD OF ENDEAVOR (Patent Law Dictionary)
The area of technology that an inventor invents within. Also called technical field or field of the invention. MPEP 608.01(c).
FIELD OF THE INVENTION (Patent Law Dictionary)
See Field of Endeavor.
FIELD OF USE (Patent Law Dictionary)
The technical field or market within which an invention is licensed. The licensee may not sell the invention within other markets.
FIGURE LEGEND (Patent Law Dictionary)
An explanations of what marks mean on a drawing. Patent drawings do not have legends.
FILE HISTORY (Patent Law Dictionary)
The complete file of a patent application containing all related papers prepared by the patent office and the applicant during the prosecution of the application. Also called File Wrapper. MPEP 717, MPEP 717.01.
FILE WRAPPER (Patent Law Dictionary)
The folder in which the file history is kept. See File History. MPEP 717, MPEP 717.01.
FILE WRAPPER ESTOPPEL (Patent Law Dictionary)
A restriction in the interpretation of a claim that exists because of an admission in the record by the applicant.
FILING DATE (Patent Law Dictionary)
The date when a sufficiently-complete patent application reaches a patent office. MPEP 506.
FILING FEE (Patent Law Dictionary)
The fee charged by a patent office for processing a patent application. MPEP 607.
FINAL ACTION (Patent Law Dictionary)
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).
FINAL REJECTION (Patent Law Dictionary)
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. MPEP 706.07, MPEP 706.07(a), MPEP 706.07(b).
FIRST ACTION (Patent Law Dictionary)
The first examination on the merits of the claims.
FIRST TO FILE (Patent Law Dictionary)
A system in which the first person to file a patent application on a patentable invention will be awarded a patent. Patent systems in all countries other than the U.S. and the Philippines use this system.
FIRST TO INVENT (Patent Law Dictionary)
A system in which the first person to invent an invention will be awarded a patent. This system is used in the U.S. and in the Philippines. MPEP 2138.01.
FIRST-TO-FILE (Patent Law Dictionary)
Practice of some European patent agencies to award a patent to the person or entity that first applied for the patent, not necessarily the actual discoverer of the patented invention
FIRST-TO-INVENT (Patent Law Dictionary)
Current practice of the U.S. Patent and Trademark Office to award a patent to the person or entity that first discovered the patented invention
FOREIGN FILING DATE (Patent Law Dictionary)
The date a non-U.S. patent application was filed that establishes priority of invention. MPEP 201.13.
FORFEITED APPLICATION (Patent Law Dictionary)
An allowed patent application on which the issue fee or a maintenance fee has not been paid within the proscribed period.
FRIVOLOUS INVENTION (Patent Law Dictionary)
An invention that lacks utility because it is frivolous. MPEP 706.03(a).
FRONT PAGE DRAWING (Patent Law Dictionary)
The drawing selected by the Examiner to appear on the front page of a U.S. patent.
IMPROVEMENT PATENT (Patent Law Dictionary)
A patent claiming an invention that is an improvement or modification of an invention claimed in a prior patent. In some instances, it means a patent that cannot be practiced without infringement of a prior patent.MPEP 2129.
INCORPORATION BY REFERENCE (Patent Law Dictionary)
To supplement the 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).
INCUBATOR (Patent Law Dictionary)
Business that invests in or owns start-up businesses, proving them with capital and management expertise while they grow their sales and staffs
INDEFINITE CLAIM (Patent Law Dictionary)
A claim that fails to particulary point out the claimed invention. MPEP 706.03(d), MPEP 2171, MPEP 2173.
INDEFINITENESS (Patent Law Dictionary)
The opposite of definiteness. See Definiteness.
INDEMNITY FROM SUIT (Patent Law Dictionary)
A situation in which one party has agreed to sue another party, e.g., for patent infringement.
INDEPENDENT CLAIM (Patent Law Dictionary)
A patent claim that stands alone in that it does not depend from (contain the limitiations of) any other claim. MPEP 608.01(m).
INDUCEMENT TO INFRINGE (Patent Law Dictionary)
An act that encourages another party to infringe a patent.
INFRINGE (Patent Law Dictionary)
To make, use or sell a patented invention in the jurisdiction and during the term of a patent.
INFRINGE PATENT (Patent Law Dictionary)
To use a patented invention without permission of the owner of the patent. However, under what is known as the “All Elements Rule,” if a single limitation is missing from the accused device or process, there is no infringement.
INFRINGED INTELLECTUAL PROPERTY (Patent Law Dictionary)
In addition to patents, these can be copyrights, trademarks, service marks and/or trade secrets that are used without permission of the owner
INFRINGED IP (Patent Law Dictionary)
Intellectual property, or IP, can be infringed in many ways. Patents are infringed when every element of at least one of the patent’s claims is infringed by an infringing product or process, and copyrights can be infringed by unlawful duplication and distribution of copyrighted material.
INFRINGED LITERALLY (Patent Law Dictionary)
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.
INFRINGED PATENT (Patent Law Dictionary)
Patent in which all of its limitations are used in a device or process without permission of the patent owner
INFRINGEMENT (Patent Law Dictionary)
The practice of a claimed invention without a license to do so.
INFRINGEMENT BY EQUIVALENTS (Patent Law Dictionary)
Infringement in the situation that 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 specified for the claimed feature.
INFRINGEMENT UNDER DOCTRINE OF EQUIVALENTS (Patent Law Dictionary)
See Infringement By Equivalents.
INHERENCY (Patent Law Dictionary)
Present in the essential character of something. MPEP 2173.05(v).
INJUNCTION (Patent Law Dictionary)
A writ granted by a court whereby one is required to do or to refrain from doing a specified act.
INTELLECTUAL PROPERTY (Patent Law Dictionary)
Usually a patent, trademark, service mark or copyright, but any concept, idea or invention that a person or entity claims to have created or discovered. Inventions are protected by patents, while brands and product names are protected by trademarks. Advertising slogans, as well as product and service descriptions, are protected by service marks. Written documents (including software) are protected by copyrights.
INTELLECTUAL PROPERTY AUDIT (Patent Law Dictionary)
This process has several goals: Identify all of a firm’s intellectual property, ensure that all intellectual property is properly enforced, and identify intellectual assets that can be converted into intellectual property by filing for patents, copyrights or trademarks.
INTELLECTUAL PROPERTY DUE DILIGENCE (Patent Law Dictionary)
Taking all necessary steps to ensure that intellectual property is properly protected, utilized and monetized. Examples of performing due diligence on patents includes making sure that maintenance fees are paid and promptly taking action when infringement is discovered.
INTELLECTUAL PROPERTY EXPERT (Patent Law Dictionary)
Patent and trademark attorney, licensing specialist or other intellectual property authority who has sufficient credentials to determine when infringement of a patent, copyright and/or trademark has occurred
INTELLECTUAL PROPERTY INFRINGEMENT (Patent Law Dictionary)
Use of or profiting from the sale of a patent, trademark or copyright by a person, business or other entity that does not own the intellectual property and does not have consent of the owner of the intellectual property to use it
INTELLECTUAL PROPERTY STRATEGY (Patent Law Dictionary)
Combination of tactics related to the ownership and management of a business or other organization’s portfolio of patents, trademarks, copyrights and trade secrets
INTELLECTUAL PROPERTY VALUATION (Patent Law Dictionary)
Determination of the worth of one’s intellectual property (usually a patent portfolio) in a market without multiple buyers and sellers that would enable the value to be set by the marketplace. Intellectual property valuation can be based on replacement cost, discounted revenue stream, market value and incremental value.
INTERFERENCE (Patent Law Dictionary)
A priority contest in the USPTO to determine which of two or more parties was the first to invent commonly-claimed subject matter. MPEP 2300.01.
INTERVENING RIGHTS (Patent Law Dictionary)
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 in the original patent. Any person who practiced the broadened claims prior to the reissue can continue. For such a person, infringement would result only if he or she practiced the surviving, narrower claims. MPEP 1460.
INVALID (Patent Law Dictionary)
Ineffective or void under the law. A patent can be invalided if it was issued in error.
INVENTION (Patent Law Dictionary)
A solution to a technical problem (i.e., technology) that may or not be patentable.
INVENTION DISCLOSURE (Patent Law Dictionary)
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.
INVENTION, ABANDONED (Patent Law Dictionary)
See Abandonment of Invention.
INVENTIVE ENTITY (Patent Law Dictionary)
The inventor(s). MPEP 2173.01, MPEP 804.03.
INVENTOR (Patent Law Dictionary)
See Inventive Entity.
INVENTOR, JOINT (Patent Law Dictionary)
A person who collaborates with another inventor in the conception of an invention. MPEP 605.07, MPEP 2137.01.
INVENTORSHIP (Patent Law Dictionary)
The condition of being an inventor under the law. MPEP 2137.01.
IP (Patent Law Dictionary)
Commonly used abbreviation for “intellectual property”
IP ATTORNEY (Patent Law Dictionary)
Attorney with experience in one or more areas of intellectual property law, such as patent prosecution, patent enforcement, entertainment law, trademark enforcement or software copyright enforcement. IP attorneys who prosecute patents must have a scientific background and pass the patent bar exam.
IP AUDIT (Patent Law Dictionary)
Review and assessment to identify which of a firm’s intellectual property (such as patents) is enforceable, identify intellectual assets that should be protected by patents, trademarks or copyrights, and identify intellectual property that is currently being maintained but not used by the firm. General Patent Corporation provides IP audit services.
IP DUE DILIGENCE (Patent Law Dictionary)
Making sure that all intellectual property (patents, copyrights and trademarks) is properly utilized and monetized, and that maintenance fees are paid on all intellectual property
IP DUE DILIGENCE FOR IPO (Patent Law Dictionary)
Research and verification performed by an investment banker, broker or other organization that is sponsoring an IPO (Initial Public Offering) to insure that all claims made about the intellectual property are valid
IP DUE DILIGENCE FOR M&A (Patent Law Dictionary)
Research and verification performed by an investment banker, accounting firm or other organization that is assisting with the merger (“merger” is the “m” in “M&A”) of a business with another business or the acquisition (“acquisition” is the “a” in “M&A”) of a business by another business, to insure that all claims made about the intellectual property are valid
IP DUE DILIGENCE FOR VENTURE CAPITAL (Patent Law Dictionary)
Research and verification performed by a venture capital firm before it invests in a business to insure that all claims made about that business’s intellectual property are validIP expert – Patent attorney, licensing specialist or other intellectual property specialist who has the training and experience necessary to determine infringement of patents, copyrights and trademarks, and knows how to enforce intellectual property that may be infringed IP infringement – Use by and/or profits from a patent, copyright or trademark owned by another person or entity without that person or entity’s permission
IP LAWYER (Patent Law Dictionary)
Lawyer (or attorney) who specializes in intellectual property such as patents, trademarks and copyrights. IP lawyers usually specialize in a given field of IP such as copyright enforcement, patent prosecution or patent enforcement, or trademark litigation. IP lawyers who prosecute patents must have a scientific background and pass the patent bar exam.
IP LITIGATOR (Patent Law Dictionary)
Attorney (or lawyer) who represents plaintiffs or defendants in patent, copyright or trademark lawsuits
IP MANAGEMENT (Patent Law Dictionary)
Supervision of an organization’s total patent, trademark and copyright portfolio. This includes valuation of patents and other intellectual property, deciding which patents to keep and maintain, and determining which patents to enforce and which to abandon or donate to a third party such as a university. Accurate IP management and portfolio valuation is critical for realizing the full value of a company’s IP, and a service offered by General Patent Corporation.
IP PORTFOLIO MINING (Patent Law Dictionary)
Review and analysis of an entire organization’s IP inventory to determine which IP items have value that can be returned to the organization. General Patent Corporation provides IP portfolio mining services.
IP RIGHTS (Patent Law Dictionary)
Entitlement of the owner of a patent, trademark or copyright to exclude others from using his, her or its intellectual property without permission. Sometimes the IP owner does not have the right to practice the patent because the patent owner needs to obtain license(s) from the owner(s) of the other patent(s) his patent refers to as “prior art.”
IP STRATEGY (Patent Law Dictionary)
Comprehensive mix of tactics such as knowing what the competitors’ patent portfolios are worth, identifying potential patent infringers and licensees, proposing strategic alliances, and identifying intellectual assets that need more protection. IP strategy development is a service offered by General Patent Corporation.
IP VALUATION (Patent Law Dictionary)
Putting a value on a person’s or organization’s patents, trademarks and copyrights. There are several IP valuation models including replacement cost, discounted revenue stream, market value and incremental value. IP valuation is more difficult in a case in which the technology is widely used, but IP valuation experts can arrive at an accurate number by using one of the above-mentioned IP valuation models. IP valuation is a service offered by General Patent Corporation.
ISSUE (Patent Law Dictionary)
The grant of a patent by a patent office.
ISSUE FEE (Patent Law Dictionary)
The fee paid by an applicant a patent office prior to the granting of a patent. MPEP 1306.
LAPSE DATE (Patent Law Dictionary)
The date when a patent is no longer enforceable in a jurisdiction due to a failure to pay renewal (maintenance) fees. Often, the patent can be reinstated if appropriate fees are paid within a limited period after the lapse date.
LEVEL OF ORDINARY SKILL (Patent Law Dictionary)
The level of skill in the art(s) to which an invention pertains that is used in judging whether a disclosure or claim is enabling. MPEP 2141.03.
LICENSE (Patent Law Dictionary)
Any conveyance of a right under a patent that is not an assignment (transfer of ownership).
LICENSE PATENT (Patent Law Dictionary)
Grant permission, in exchange for a lump sum payment or payment of royalties, to another party to use a patented technology while the patent owner retains ownership of the patent. A patent license may be exclusive (issued to one entity) or non-exclusive (issued to multiple entities).
LIMITATION (Patent Law Dictionary)
Language in a claim that constrains the breath of a claim.
LITERAL INFRINGEMENT (Patent Law Dictionary)
See Infringed Literally.
LITIGATE PATENT ON CONTINGENCY (Patent Law Dictionary)
Agree to represent a plaintiff in a patent infringement lawsuit on the basis that the litigator will be paid from any awards or settlements the lawsuit produces.
MACHINE (Patent Law Dictionary)
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 (Patent Law Dictionary)
See Fee, Maintenance.
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) (Patent Law Dictionary)
A document that contains a description of the practices and procedures of the USPTO.
MANUFACTURE (Patent Law Dictionary)
One of the classes of patentable subject matter under U.S. law. MPEP 2105..
MARKET PARTICIPANT (Patent Law Dictionary)
Person, business or other organization that owns a patent, is the plaintiff in a patent infringement lawsuit, and practices (uses the patented invention to produce a product or service) the patent-at-suit. The patent owner that does not practice its patent is known as a “non-practicing entity” or “NPE.”
MARKUSH CLAIM (Patent Law Dictionary)
A form of a claim that allows claiming of members of a finite group by means of a phrase like “a member selected from the group 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)..
MARKUSH GROUP (Patent Law Dictionary)
In a claim, a finite group from which an element is selected.
MEANS FOR CLAIM (Patent Law Dictionary)
A patent claim that recites an element as a means for accomplishing a particular function. MPEP 2181..
METHOD (Patent Law Dictionary)
One of the classes of patentable inventions (a process) under U.S. law. MPEP 706.01(a)..
MISUSE (Patent Law Dictionary)
Using a patent right inappropriately, for example, for forcing a license to purchase a prodict that is not covered by the claims of the patent..
MODEL (Patent Law Dictionary)
See Exhibit..
MULTIPLE DEPENDENT CLAIM (Patent Law Dictionary)
A dependent claim that refers back in the alternative to more than one preceding independent or dependent claim. MPEP 608.01(n). .
NEGATIVE LIMITATION (Patent Law Dictionary)
A claim limitation that is excusive, e.g., “other than X” “incapable of X”, etcetera. MPEP 2173.05(i).
NEW ISSUE (Patent Law Dictionary)
A patentability issue or question that had not arisen previously in the examination of an application.
NEW USE (Patent Law Dictionary)
One of the classes of patentable subject matter under U.S. law.
NON-CONVENTION APPLICATION (Patent Law Dictionary)
A patent application filed in a second, or subsequent country which does not claim the priority of another, earlier application in another country.
NON-OBVIOUSNESS (Patent Law Dictionary)
The opposite of obviousness. See Obviousness.
NON-PRACTICING ENTITY (Patent Law Dictionary)
Person, business or other organization that owns a patent, is the plaintiff in a patent infringement lawsuit, and does practice (use the patented invention to produce a product or service) the patent. The patent owner that does practice its patent is known as a “market participant.”
NONPROVISIONAL PATENT APPLICATION (Patent Law Dictionary)
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)..
NOTICE OF ALLOWANCE AND ISSUE FEE DUE (Patent Law Dictionary)
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. MPEP 1303.
NOVELTY (Patent Law Dictionary)
New; not anticipated by (taught by) the prior art. MPEP 2131.
NPE (Patent Law Dictionary)
Commonly used abbreviation for “Non-Practicing Entity” (see above)
O.G. (Patent Law Dictionary)
See Official Gazette.
OATH (Patent Law Dictionary)
A sworn statement. In the U.S., declaration may be used instead of an oath to verify that information being submitted to the USPTO is true. See Declaration. MPEP 602, MPEP 715, MPEP 716.
OBJECT OF THE INVENTION (Patent Law Dictionary)
A desired characteristic of an invention. MPEP 608.01(d).
OBVIOUSNESS (Patent Law Dictionary)
A characteristic that makes an invention predicable to a person having ordinary skill in the art who has knowledge of all of the prior art. No “inventive step” was involved in conceiving the invention. One of the most difficult terms in patent law to define and understand. MPEP 2141, MPEP 2141.01, MPEP 2141.02, MPEP 2141.03, MPEP 2142.
OFFER TO SELL (Patent Law Dictionary)
An activity that can bar obtaining a patent in some jurisdictions if the activity occurs a sufficient period of time before a patent application on the invention is filed. MPEP 2133.03(b), MPEP 706.02(c).
OFFICE ACTION (Patent Law Dictionary)
See Action.
OFFICIAL ACTION (Patent Law Dictionary)
See Action.
OFFICIAL GAZETTE (Patent Law Dictionary)
A publication of the USPTO in which new patents and trademarks are announced. Published weekly in two editions, one for patents and one for trademarks.
OLD APPLICATION (Patent Law Dictionary)
An application that, having been acted on by an Examiner, has, in turn, been acted on by the applicant. MPEP 203.03.
ON SALE (Patent Law Dictionary)
See Offer to Sell.Open for Public Inspection The date upon which a patent application is first made available to the public.
ONE-YEAR GRACE PERIOD (Patent Law Dictionary)
The one-year period that starts on the date that an invention is used publicly, offered for sale, patented or published anywhere in the world during which period a U.S. patent application must be filed to avoid a bar. MPEP 2133.
OPINION, PATENTABILITY (Patent Law Dictionary)
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.
OPINION, VALIDITY (Patent Law Dictionary)
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.
OPPOSITION (Patent Law Dictionary)
A procedure available in most countries (but not the U.S.) whereby a third party may request that a patent not issue or that an issued patent be invalidated.
ORIGINAL APPLICATION (Patent Law Dictionary)
A patent application that is not a reissue application. MPEP 201.04(b).
PATENT (Patent Law Dictionary)
Right of a person, business or other entity to prevent others from making, using, offering for sale, or importing a product or service that uses the patented invention. To qualify to receive a patent, an invention must be novel (new), non-obvious to a person of “ordinary skill in the art” (field of technology) and useful.
PATENT AGENT (Patent Law Dictionary)
Person who has passed the US Patent Office Bar Exam and is registered with the Patent Office to prepare, submit and prosecute patent applications. A patent agent may not render patent validity or infringement opinions, engage in litigation, or draft license documents; those activities may only be performed by patent attorneys.
PATENT APPRAISAL (Patent Law Dictionary)
Determination of the value of a patent. Patent appraisals are often conducted before a patent is assigned or licensed.
PATENT ASSERTION (Patent Law Dictionary)
Synonymous with patent enforcement, protecting a patent and ensuring that licensing fees are paid for its use.
PATENT ASSERTION ON A CONTINGENCY BASIS (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Enforcement of a patent by a third-party on behalf of the patent owner under which the third party is paid from the proceeds of any settlement it receives for the patent owner. Firms that assert patents on a contingency basis do not charge the inventor or patent owner for their services up-front and pay all expenses involved with the patent assertion process themselves. General Patent Corporation is the leading patent assertion firm and takes all clients on a contingency basis.
PATENT ASSERTION ON CONTINGENCY (Patent Law Dictionary)
Same as above
PATENT ASSERTION ON CONTINGENCY BASIS (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Enforcement of a patent by a patent enforcement firm or law firm under which the patent enforcement firm or law firm is out of any award or settlement it generates for the patent owner. Firms that assert patents on a contingency basis do not charge for their services up-front, and they often also pay all expenses involved with the patent assertion process.
PATENT ATTORNEY (Patent Law Dictionary)
Attorney who has passed the Patent Office Bar Exam and is also admitted to the bar of one of the 50 states or the District of Columbia. Patent attorneys prosecute patent applications, and also render patent validity or infringement opinions, engage in litigation, and/or draft patent licenses.
PATENT CASE (Patent Law Dictionary)
Legal claim or lawsuit that involves patent enforcement or patent infringementPatent damages – Economic losses suffered by a patent owner as the result of patent infringement. Patent damages can include lost profits, future income and royalties.
PATENT ENFORCEMENT (Patent Law Dictionary)
Also known as “patent assertion,” ensuring that a patent infringer takes a license for the patent and pays the patent owner for use of the patent. Patent enforcement often involves patent litigation or the threat of litigation.
PATENT ENFORCEMENT ON A CONTINGENCY BASIS (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Agreement with the patent owner to represent the patent owner in patent enforcement litigation on the basis that the litigator’s fees will be paid from the proceeds of the litigation; Some law firms will agree to have their legal fees paid out of the settlement, but they require the patent owner to pay for litigation expenses such as research and expert witnesses. General Patent Corporation does not charge the patent holder any upfront fees and is only compensated when � and if – it receives a satisfactory settlement for the patent holder.
PATENT ENFORCEMENT ON CONTINGENCY (Patent Law Dictionary)
Same as above
PATENT ENFORCEMENT ON CONTINGENCY BASIS (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Agreement with a patent owner to represent the patent owner in a patent infringement lawsuit on the basis that the litigator’s fees will be paid from any award or settlement produced by the lawsuit.
PATENT EXPERT (Patent Law Dictionary)
Patent attorney, patent agent, licensing executive or other person with expertise in intellectual property law or patent enforcement, patent valuation, patent licensing and/or other patent-related areas
PATENT EXPERT WITNESS (Patent Law Dictionary)
Person with recognized expertise in patent enforcement, patent infringement and patent valuation who provides testimony in a court of law for either the plaintiff or defendant in a patent infringement lawsuit. Patent expert witnesses are usually experts in a specific technology or hard science.
PATENT GURU (Patent Law Dictionary)
Slang term for a patent expert with broad experience in patents and high-tech industries
PATENT INFRINGEMENT (Patent Law Dictionary)
Use of a patent by a person, business or other entity that does not own the patent and does not permission of the patent owner use the patent. Patent infringement occurs when a device or process meets every limitation of at least one of the patent’s claims.
PATENT INFRINGEMENT CASE (Patent Law Dictionary)
Lawsuit filed against an alleged infringer of a patent by the patent owner
PATENT INFRINGEMENT LAWSUIT (Patent Law Dictionary)
Litigation filed against the alleged infringer of a patent by the patent owner
PATENT INFRINGEMENT LAWSUIT ON CONTINGENCY (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Claim of patent infringement in which the law firm or patent enforcement firm agrees to be paid from the proceeds of the lawsuit. Should the lawsuit fail to produce an award or settlement, the law firm or patent enforcement firm would receive nothing.
PATENT INFRINGEMENT LITIGATION (Patent Law Dictionary)
Potentially long and costly legal process of determining whether an accused device or process infringes a patent and if the patent-in-suit is valid and enforceable. Patent infringement litigation can be risky and expensive, so it should not be attempted without legal counsel or assistance from a patent enforcement firm.
PATENT INFRINGEMENT LITIGATION ON A CONTINGENCY BASIS (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Representation of the plaintiff in a patent infringement lawsuit on the basis that the litigator or patent enforcement firm will be paid its fees from the settlement received as a result of the litigation. Some law firms agree to be paid their legal fees on a contingency basis, but require that the plaintiff cover litigation expenses such as research and expert witnesses. General Patent Corporation does not charge patent holders any up-front fees, but is instead paid from the proceeds of whatever settlement is received as a result of the litigation.
PATENT INFRINGEMENT LITIGATION ON CONTINGENCY (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Same as above.
PATENT INFRINGEMENT LITIGATION ON CONTINGENCY (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Same as above.
PATENT INFRINGEMENT LITIGATION ON CONTINGENCY BASIS (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Representation of a plaintiff in a patent infringement lawsuit on the basis that the law firm or patent enforcement firm will be paid from any award or settlement received as a result of the lawsuit.
PATENT INFRINGEMENT SUIT (Patent Law Dictionary)
Common, lay term for “patent infringement lawsuit,” a legal claim against the alleged infringer of a patent by the patent owner
PATENT LAWSUIT (Patent Law Dictionary)
Term used in place of the more proper “patent infringement lawsuit”
PATENT LAWYER (Patent Law Dictionary)
Less formal term for “patent attorney”
PATENT LICENSING (Patent Law Dictionary)
Issuing permission to a third party to use a patented invention. A license may be royalty-bearing or non-royalty-bearing, and a royalty-bearing license may be paid in a single payment, or it may be paid over time based on sales of the licensed goods or services.Patent litigation – Another term for a patent lawsuit or patent infringement lawsuit in which a patent owner sues for infringement of his, her or its patent
PATENT LITIGATION ON A CONTINGENCY BASIS (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Agreement to represent a patent owner in a patent infringement lawsuit on the basis that the fees for such representation will be paid from the proceeds of any settlement resulting from that lawsuit. Many law firms agree to be paid their legal fees on a contingency basis, but require the plaintiff to cover litigation expenses such as research and expert witnesses. General Patent Corporation works on a totally contingent basis, and does not charge patent holders any up-front charges, but instead…(more)
PATENT LITIGATION ON CONTINGENCY (Patent Law Dictionary)
Same as above.
PATENT LITIGATION ON CONTINGENCY BASIS (OR “CONTINGENT BASIS”) (Patent Law Dictionary)
Agreement to represent a patent owner in a patent infringement lawsuit with the understanding that the litigator or patent enforcement firm will be paid from the proceeds of any award or settlement that results from the lawsuit.
PATENT LITIGATOR (Patent Law Dictionary)
Patent attorney (or patent lawyer) who represents plaintiffs or defendants in patent infringement litigation. Patent litigators must possess both technical expertise and trial experience.
PATENT PORTFOLIO (Patent Law Dictionary)
Collection of patents owned by the same person, business, university or other entity
PATENT PORTFOLIO MANAGEMENT (Patent Law Dictionary)
Supervision of a person’s or organization’s patents, deciding which patents to maintain and which to abandon, determining which patents should be enforced, and which should be donated to universities or other organizations.
PATENT SUIT (Patent Law Dictionary)
Lay term for “patent lawsuit” or, more properly, “patent infringement lawsuit”
PATENT TRIAGE (Patent Law Dictionary)
Process of classifying a company’s patents in three broad categories: core, non-core and useless. Portfolio triage is an essential aspect of patent portfolio management because it helps the patent owner save money by donating useless patents and better monetizing useful patents through enforcement or licensing.
PATENT TROLL (Patent Law Dictionary)
Unflattering term used by defendants in patent infringement lawsuits to describe the plaintiff who does not practice his, her or its patent. The legal term for a patent owner who does not practice the patent is “non-practicing entity” or “NPE.”
PATENT VALUATION (Patent Law Dictionary)
Determining the worth of an individual patent or, more commonly, a portfolio with regard to similar patents and technologies
PATENT VIOLATION (Patent Law Dictionary)
Lay term for “patent infringement.” This occurs when a device or process meets every limitation of at least one of the patent’s claims. “Patent infringement” is the more proper term.
RATIONALE FOR PATENTABILITY (Patent Law Dictionary)
The reasoning behind a decision that a claimed invention is patentable. MPEP 1302.14.
READS ON (Patent Law Dictionary)
A claim includes within its scope certain subject matter.
REDUCTION TO PRACTICE, ACTUAL (Patent Law Dictionary)
Building a physical embodiment of an invention and testing it under conditions that would indicate to a person skilled in the art that the invention was useful. MPEP 2138.05.
REDUCTION TO PRACTICE, CONSTRUCTIVE (Patent Law Dictionary)
Filing a patent application that explains how to make and how to use an invention in sufficient detail that a person skilled in the art could practice the invention. MPEP 2138.05.
REEXAMINATION (Patent Law Dictionary)
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. MPEP 2209, MPEP 2210.
REFERENCE (Patent Law Dictionary)
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 (Patent Law Dictionary)
A numeral or letter used to identify an element on a patent drawing.
REINSTATEMENT (Patent Law Dictionary)
Restoration of the enforceability of a patent.
REISSUE (Patent Law Dictionary)
The issue of a patent that was issued previously in order to correct an error in the patent. MPEP 1401, MPEP 1402.
REISSUE APPLICATION (Patent Law Dictionary)
A U.S. patent application that is refiled after a patent issues in order to correct one or more errors in the patent that occurred without deceptive intent. MPEP 1401, MPEP 1402, MPEP 1403.
REISSUE PATENT (Patent Law Dictionary)
A corrected U.S. patent that issues from an allowed reissue application. MPEP 1401, MPEP 1402, MPEP 1403.
REJECTION (Patent Law Dictionary)
The refusal of a patent Examiner to allow a claim based on specific legal grounds. MPEP 706, MPEP 706.01.
REJECTION, FINAL (Patent Law Dictionary)
A rejection of a claim that occurs on the second or any subsequent examination of its patentability. After the final rejection of a claim occurs, the only recourses of an applicant are 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 warrent the interview. See Rejection. MPEP 706.07, MPEP 706.07(a).
RENEWAL FEE (Patent Law Dictionary)
The periodic fee charge by a patent office for maintaining a patent in force. MPEP 2501, MPEP 2504, MPEP 509.
REQUEST FOR RECONSIDERATION (Patent Law Dictionary)
A written communication to a patent office asking that a decision be reconsidered. MPEP 714.13, MPEP 818.03, MPEP 1214.01, MPEP 1214.03.
RESTRICTION (Patent Law Dictionary)
A requirement by an Examiner that an applicant choose which of multiple claimed, distinct inventions disclosed in a patent application that he/she wishes to be examined. MPEP 802, MPEP 802.02, MPEP 803.
REVIVAL OF ABANDONED APPLICATION (Patent Law Dictionary)
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 a 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. MPEP 711.
REVOCATION (Patent Law Dictionary)
Withdrawing the protections associated with a patent grant.
SEARCH REPORT (Patent Law Dictionary)
A report containing a list of citations of prior art references that, in the opinion of the searcher, are material to the patentability of a claimed invention. A search report often presents an opinion of patentability. MPEP 707.05, MPEP 707.05(a), MPEP 1844.
SECONDARY CONSIDERATIONS (Patent Law Dictionary)
Objective evidence of non-obviousness. MPEP 2141, MPEP 716.01(a).
SEQUENCE RULES (Patent Law Dictionary)
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 (Patent Law Dictionary)
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 (Patent Law Dictionary)
Word, symbol or combination thereof that is used to identify the source of a particular service. A well-known service mark is “The American Express Card. Don’t leave home without it.”Technology transfer – Process of conveying scientific research or patents from one organization or one application to another organization or application for the purpose of further development and commercialization. Management of technology transfer is a service offered by General Patent Corporation.
SIR (Patent Law Dictionary)
Statutory Invention Registration. The registration of an invention with the USPTO to place an invention in the public domain. The disclosure of an application for a Statutory Invention Registration is equivalent to the specification and drawings of a patent application.
SMALL ENTITY (Patent Law Dictionary)
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 (Patent Law Dictionary)
A status granted U.S. patent applications that have certain characteristics upon successful petition to the USPTO. Applications granted special status are given a higher priority for examination. MPEP 708.02.
SPECIFICATION (Patent Law Dictionary)
The description, drawings and claims of a patent application. MPEP 608.01, MPEP 608.01(a), MPEP 2161.
STATUS (Patent Law Dictionary)
The legal standing of a patent appplication or patent.
STATUTORY BAR (Patent Law Dictionary)
A bar to patentability established by law.
STATUTORY INVENTION REGISTRATION (SIR) (Patent Law Dictionary)
Registration of an invention with the USPTO to place an invention in the public domain. The disclosure of an application for a Statutory Invention Registration is equivalent to the specification and drawings of a patent application.
STATUTORY PERIOD (Patent Law Dictionary)
The period within which a response 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 (Patent Law Dictionary)
Patentable subject matter. MPEP 2105.
STICK LICENSE (Patent Law Dictionary)
An agreement to pay a fee to use a patented invention when the agreement (or “license”) was not entered into amicably, but was probably the result of patent infringement litigation or the threat of a patent infringement lawsuit. The opposite of a “stick license” is a “carrot license.”US Patent and Trademark Office – Agency within the United States Department of Commerce that issues patents for inventions and registers trademarks and service marks for product identification. The agency’s website is www.uspto.gov.
SUBSTANTIVE EXAMINATION (Patent Law Dictionary)
The examination of a patent application by a patent office to determine whether a patent should be granted on the claimed invention.
SUBSTITUTE PATENT APPLICATION (Patent Law Dictionary)
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 (Patent Law Dictionary)
A rewritten specification of a patent application filed after the filing date of the application that corrects some error but that does not introduce new matter. MPEP 608.01(q).
SURRENDER OF PATENT (Patent Law Dictionary)
An act that occurs concurently with the filing of a reissue patent application in the USPTO. MPEP 1416.
SWEARING BACK OF REFERENCE (Patent Law Dictionary)
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 occurs or (2) completion of the invention(reduction to practice) occurred before the effective date. MPEP 715, MPEP 706.02(b), MPEP 706.02(k).
TEACHING AWAY (Patent Law Dictionary)
The situation in which a prior art reference suggests that a claimed invention is not possible, e.g., would not work. MPEP 2145.
TECHNICAL FIELD (Patent Law Dictionary)
The field of art to which the invention pertains. MPEP 608.01(c).
TECHNOLOGY MANAGER (Patent Law Dictionary)
The person in a public-sector 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 (Patent Law Dictionary)
The period during which a patent can be inforced. MPEP 2501.
TERMINAL DISCLAIMER (Patent Law Dictionary)
A document filed with the USPTO by an applicant, assignee or patent attorney or agent wherein a terminal portion of the normal term of the patent is given up. MPEP 1490.
TITLE OF INVENTION (Patent Law Dictionary)
A brief but technically accurate name for the invention. MPEP 606.
TRADE NAME (Patent Law Dictionary)
A name used to identify a business entity.
TRADE SECRET (Patent Law Dictionary)
Information kept secret by an organization for the purpose of maintaining a competitive advantage.
TRADEMARK (Patent Law Dictionary)
Word, symbol or combination thereof that identifies the source of goods. Common trademarks include Nike, Coca-Cola and Apple along with their well-known logos. Trademark enforcement is a service offered by General Patent Corporation.United States Patent and Trademark Office – Agency within the United States Department of Commerce that issues patents for inventions and registers trademarks for product identification (www.uspto.gov)
TRAVERSE (Patent Law Dictionary)
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 no true. MPEP 714.02, MPEP 2144.03, MPEP 818.03, MPEP 818.03(b), MPEP 818.03(c).
UNDUE EXPERIMENTATION (Patent Law Dictionary)
An amount of experimentation required to practice a disclosed invention that would be unreasonable. MPEP 2164.01, MPEP 818.03(c).
UNENFORCEABLE (Patent Law Dictionary)
A determonation by a court that a patent cannot be enforced against a party that would otherwise be infringing its claims, because the patent is defective.
UNITED STATES CODE (Patent Law Dictionary)
The laws of the U.S.
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) (Patent Law Dictionary)
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) (Patent Law Dictionary)
The regulations promulgated by the USPTO.
UNOBVIOUS (Patent Law Dictionary)
The state of a claimed invention’s not being obvious to a person having ordinary skill in the art to which the invention pertains. Also called non-obvious. See Obviousness.
UNREASONABLE EXPERIMENTATION (Patent Law Dictionary)
See Undue Experimentation.
USEFUL (Patent Law Dictionary)
Having some practical utility; fit for some desirable practical or commercial purpose. One of the three requirements for patentability under U.S. law. MPEP 706.03(a), MPEP 2107, MPEP 2107.01, MPEP 2107.02.
UTILITY (Patent Law Dictionary)
See Useful.
UTILITY MODEL (Patent Law Dictionary)
A type of patent available in some countries that requires less inventiveness than necessary to obtain a patent.
UTILITY PATENT (Patent Law Dictionary)
A patent that covers a technology.
VALUATION OF A PATENT (Patent Law Dictionary)
Method of determining the worth of a single patent with regard to similar patents and technologies
VALUATION OF PATENT (Patent Law Dictionary)
Determining the worth of a single patent with regard to similar patents and technologies
VALUATION OF PATENT PORTFOLIO (Patent Law Dictionary)
Determination of the worth of the patents owned by a person, company or other organization. The process involves pinpointing those patents that are useless and those that can have more value extracted from them.
VALUE PATENT (Patent Law Dictionary)
Use a recognized expert or third party to place a dollar worth patent
VALUE PATENT PORTFOLIO (Patent Law Dictionary)
Use a recognized expert to place a worth on all the patents owned by a person, business or other organization. Businesses often hire a patent valuation expert to classify their patents as core, non-core or useless, and this enables a business to extracting more value from their patent portfolio.
VENTURE CAPITAL (Patent Law Dictionary)
Money invested in start-up or early stage businesses. Venture capital is not a loan, but actual capital invested in the business in exchange for equity.
VENTURE CAPITALIST (Patent Law Dictionary)
Person or business that invests in start-up or early stage businesses. Venture capitalist typically make a profit on their investment when the start-up or early stage business makes an initial public offering (or “IPO”), issues new stock or sells current stock in the company, and the venture capitalist can sell its equity in the business at a substantial profit.
VIOLATE PATENT (Patent Law Dictionary)
Lay term for “infringe patent.” “Infringe” is the more proper term.

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