Brown & Michaels
"What's it mean..." - Our Patent Glossary
This patent dictionary is meant to contain most of the most commonly used words and phrases which turn up in patent application prosecution. Is there a "patentese" term you don't understand and can't find here? E-mail us and we'll add it.
Abstract - a brief (150 word or less) summary of a patent, usually printed on the first page.
Absolute Priority - in most foreign countries, any publication before filing is prior art, even if it is the inventor's own publication. This contrasts with the grace period in the US (and a few other countries) where at least some public disclosure by the inventor during the grace period before the filing date of an application do not count as prior art.
Actual Reduction to Practice - see Reduction to Practice
ADS - see Application Data Sheet
Advisory Action - a special kind of Office Action, sent if an applicant files a reply to a Final Office Action within two months, but the reply does not place the application in condition for allowance. The Examiner would then issue an Advisory Action, explaining why the reply did not place the application in condition for allowance. If an applicant wants to reply to the Advisory Action or to appeal the Final Office Action, the date used for the purpose of calculating filing extension fees is 3 months from the date of the final rejection or the mailing date of the advisory action, whichever is later (but not more than six months, total, from the date of the Final Office Action). In effect, this gives the applicant a break on late-filing fees if the Examiner issues the Advisory Action after the normal three-month reply period. - MPEP 706.07(f) and 714.13
Aggregation - a patent claim which just recites a list of elements, without indicating how they are interrelated or assembled into an invention. For example, "A door lock comprising a knob, a latch bar and a plurality of tumblers." A claim should not be rejected on the ground of "aggregation". (MPEP 2173.05(k)).
AIPLA - American Intellectual Property Law Association - US national organization for patent, trademark, copyright and trade secret law practitioners and owners.
Alice rejection - the 2014 Supreme Court Alice Corp v. CLS Bank International case which held Alice Corp's claims on a method of electronic escrow to be invalid because the claims were drawn to an abstract idea, and which further said that implementing those claims on a computer was not enough to transform that idea to a patentable invention. This called into question the patentability of literally thousands of existing patents and pending applications, and led to the USPTO pulling back notices of allowance on a large number of cases which had been allowed to reject them based on Alice. These rejections, and later rejections of pending cases based on section 101 patentable subject matter which quote the Alice decision, have become known as "Alice rejections".
All elements rule - an accused device only infringes a claim if it includes all elements of the claim, either literally or under the Doctrine of Equivalents. (see our page, "how to read a patent - claims")
Allowed, Allowance - When the Examiner decides that a claim in an application is patentable, it is "allowed". If all of the claims in the application are allowed, the Examiner will issue a "Notice of Allowance and Issue Fee Due", indicating that examination of the application is now over, and setting a deadline (three months, typically) for paying the issue fee. Often, this is accompanied by a document entitled "Reasons for Allowance", in which the Examiner explains why he/she thinks the claims are patentable. Once the issue fee is paid, the USPTO will issue the patent.
America Invents Act of 2011 - a/k/a "Leahy-Smith Act" - the "Patent Reform" law which made significant changes to the US Patent Law, most significantly changing from "first to invent" to "first inventor to file". The changes in the Act were phased in over an eighteen month period from the date of enactment, between September 16, 2011, and March 16, 2013. See our web page on the America Invents Act, or if you really care, you can read all 152 pages of the Act here in PDF form (off-site link to the Patently-O site).
Antecedent basis - Any term you refer to in a patent claim as "the ..." must have been named previously in that claim, or one upon which it depends. That is, if a claim reads, "2. The widget of claim 1, in which the fringe is bidirectional," the word "fringe" must appear in claim 1 in a way which would permit the reader of the claim to determine what "the fringe" is. If there is no "fringe" in claim 1, then this claim would be rejected as "lacking antecedent basis." (See our page, "how to read an office action")
Annuity - Annual payment to keep patent or patent application alive in some countries. Unlike the US, most countries which have annuities require them to be paid both during the pendency of the patent application and after the application issues as a patent. In some countries, annuities must be paid every year starting from the filing of the application, in others the annuities start some years after the filing date. In the US, similar fees are due only after the patent is issued - see Maintenance Fees
Appeal - asking a higher authority to review a decision. Some decisions of Examiners (i.e. final rejections) may be reviewed by appeal to the Patent Trials and Appeals Board (PTAB). Some PTAB decisions may be appealed to the Court of Appeals for the Federal Circuit (CAFC). Some decisions which are not appealable may be overturned by petitioning the Commissioner of Patents.
Applicant - the entity who applied for a patent. Before September 16, 2012, US rules said that only the actual inventors could apply for a patent. This was changed on September 16, 2012, so that an assignee may now be the "applicant", and this assignee-as-applicant situation will probably be the norm, as it has in other countries for many years. Note that even though an assignee is the applicant on a patent application, the USPTO has said that the published application and issued patent will continue the historical practice of naming the inventors in the publication header rather than the assignee.
Application Data Sheet (ADS) - (USPTO form SB14) - a form which can be filed in the USPTO, giving the office basic information about a patent application such as inventor name(s), title, assignee information for application publication, correspondence address, and so on. This form is usually filed with the application, and, if the latest form-fillable PDF version is e-filed with the application through EFS-Web, the information is automatically loaded into the USPTO's databases rather than requiring a USPTO employee or contractor to manually enter the information. This significantly reduces the typographical errors and allows the information to be instantly available on PAIR.
Application Family - defined in the 2007 continuation rules (rescinded in October 2009) as "the initial application and its continuation or continuation-in-part applications. A divisional application family includes the divisional application and its continuation applications".
Application number - see serial number
Apparatus claim - a claim which describes a device or product: "A widget comprising a gronkheiser coupled to a portoflan armature." (see also "method claim")
Art Unit: The Examiners in the Patent Office are organized into "Technology Centers", which cover broad ranges of technologies, and the Technology Centers are further divided into "Art Units". Each Art Unit handles a specific type of invention, as defined by the USPTO's classification system. For example, Art Unit 3761 is a part of Technology Center 3760 ("Body Treatment, Kinestherapy and Exercising") .
Assignee - buyer. That is, the person or legal entity to which the entire right, title and interest in the application has been assigned (sold or transferred) regardless of whether the assignee filed the application for patent or has taken over prosecution of the application to the exclusion of the inventor. (definition from the August 14, 2012, USPTO rules implementing the America Invents Act).
Assignment - (v) "selling" a patent or application (that is, transferring one's rights), and (n) the document evidencing the sale. See also "license".
Assignor - seller - that is, someone who has assigned (sold or otherwise transferred) his rights to someone else (the "assignee").
BPAI - Board of Patent Appeals and Interferences obs. - see PTAB
Beauregard Claim - named after the case (in re Beauregard 53 F.3d 1583 (Fed. Cir. 1995)) which declared them to be patentable, a Beauregard Claim is a really a claim to a computer-implemented method, but it is written to claim a physical product - a computer-readable storage medium containing code for causing a computer to perform the method.
Best Mode (see "Preferred Embodiment")
Bilski - Bilski v. Kappos (561 U.S. 593), a 2010 Supreme Court case which held that claims to a method of hedging risk are not patentable subject matter under section 101. The Bilski decision stated that the "Machine or Transformation" test, while still useful, is not the only test for patentability, but rather is just "a useful and important clue, an investigative tool". Bilski's method might have passed "Machine or Transformation", because the claims recited the use of a computer, but it was still not patentable because it claimed an "abstract idea".
Bypass Continuation / Bypass Continuation-in-Part - for PCT applications - The normal way for an International Stage PCT Application to enter the US is through the "National Stage". On payment of the required fees and filing the forms, the International Stage Application becomes a national US application. In this approach, the US application is the PCT application, it has just entered a new stage in its life. The US National Stage application must have the same inventor(s) as the International Stage application, and, while a preliminary amendment can be filed when you enter the National Stage, no new matter may be added. The Bypass Continuation / CIP is an alternative way for a PCT application to enter the US. Instead of entering National Stage, a new US application is filed as a Continuation or Continuation-in-Part (CIP) of the PCT application. The bypass application may have different inventorship than the PCT application, so long as at least one inventor is the same, and new matter may be added in a bypass CIP.
CCPA - Court of Customs and Patent Appeals - a Federal court which heard cases from the Patent Office, the Customs Court and the International Trade Commission. In 1982 the CCPA and the appellate division of the Court of Claims were merged to form the CAFC.
Certificate of Correction - a certificate issued by the USPTO, and attached to the patent image and printed copies of the patent, indicating that there were errors in the patent as issued. The patent owner may apply for a Certificate of Correction by filing the suggested correction and a fee - if the error was due to USPTO error, the fee is waived.
characterized by (sometimes "characterized in that") - an open transitional phrase, equivalent to "comprising" in US practice. In the EPO two-part claim format, the part of the claim before "characterized in that" is prior art, and the part after the phrase is novel. (See "how to read a patent application - claims")
CIP (see Continuation-In-Part)
Claim - that part of the patent which defines the limits of the grant of rights. A claim may be "independent" or "dependent". Claims are written in a very odd legalistic form, in which every claim starts with a capital letter (the only capital letter permitted in the claim) and ends with a period (the only one permitted in the claim), and each element in the claim must be named before it is used (it must have "antecedent basis"). (See "how to read a patent application - claims")
Claim Differentiation - a doctrine which says that if there is a dependent claim, the claims should be interpreted such that there is a difference between a dependent claim and the claim upon which it depends. For example, suppose a parent claim calls out "a frammis", and the dependent claim says "where the frammis is made of plastic". The principle of claim differentiation says that the parent claim must be interpreted to include frammi which are not plastic, or there would be no difference between the two claims.
Class: Until January 2015, the USPTO used its own US Patent Classification System to provide an organization for searching patents. All inventions were first put in a class having a three-digit number, then in a numbered subclass under the class. The subclasses are arranged in a hierarchical form, but not necessarily in numerical order. The US classification system was more based on structure than function. As of January 1, 2015, the USPCS was replaced in the USPTO by the Cooperative Patent Classification system (CPC). For more information on how the classification systems work, see our web page "how to read a patent - front page". The USPTO website has a page for the patent classification system. (See also Cooperative Patent Classification and International Class)
Co-inventor - one of several people who contributed to the conception of an invention. Note that mere reduction to practice does not make one a co-inventor, it is contributing to the conception which is key.
comprising - an "open" transitional term used in patent claims to mean "the element has at least the following things, but possibly other things as well". (See "how to read a patent application - claims")
Confirmation Number - a four-digit number which the USPTO assigns when an application is filed, and uses to make sure that any papers filed later on are assigned to the right file. The confirmation number was introduced because serial numbers are assigned sequentially, so all patent applications filed on the same day had similar serial numbers, which led to errors in routing paperwork - transpositions of a few digits might not be caught when only the serial number and filing date was given. The USPTO therefore added a new number which is completely different from one application to the next, so errors in citing applications become immediately obvious.
consisting of - a "closed" transitional term used in patent claims to mean "the element has only the following, and nothing else". (See "how to read a patent application - claims")
Constructive Reduction to Practice - building the invention is "actual reduction to practice" but one can complete the act of invention by filing a patent application. Since the invention has not been built, it is not "actually" reduced to practice, but only "constructively" (i.e. by a legal fiction).
Continuation - "a continuing application that discloses and claims only an invention or inventions that were disclosed in the prior-filed application." In other words, a continuation is a patent application filed to continue prosecution on an earlier-filed application, perhaps to present new arguments or evidence or to allow some claims to issue while continuing to argue with the Examiner about others. A continuation may not add new matter - see "Continuation In Part", below. The difference between a "continuation" and a "Request for Continued Examination" (RCE) (or its predecessors Continuing Prosecution Application (CPA) and "file wrapper continuation") is that a continuation is a new application and will receive a new application number, whereas under an RCE (or CPA or FWC), the old application continues on. A continuation may be filed at any time during the pendency of an application (i.e. before it is abandoned or issues as a patent).
Continuation-in-Part (CIP) - a patent application filed to add new material to an earlier filed application, or to claim a new embodiment of an invention disclosed in an earlier application. Anything which was in the original application is given the benefit of the filing date of the original application, any new matter added in the CIP receives the actual filing date of the CIP. A CIP may be filed at any time during the pendency of an application (i.e. before it is abandoned or issues as a patent).
Continuing Application - a nonprovisional application (or an international application designating the United States of America) that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed nonprovisional application (or international application designating the United States of America). A continuing application can be a divisional application, continuation application or continuation-in-part application. Note that the terms are exclusive. An application cannot be, for example, both a continuation and a divisional or a continuation and a continuation-in-part of the same application.
Continuing Prosecution Application (CPA) - the CPA was a predecessor to the "Request for Continued Examination" (RCE). A CPA was filed to continue prosecution on the parent application without having to file a completely new application. Since July 14, 2003, CPA practice is only available for design patent applications, and may no longer be used for utility or plant applications.
Contributory Infringement - manufacture, use or sale of a part of a patented combination, or manufacture or sale of a device which is used by others in a way which infringes a method claim. Note that (1) there cannot be contributory infringement by a supplier, if there is no direct infringement by the customer; and (2) there is no contributory infringement by a part which has substantial noninfringing use.
Cooperative Patent Classification (CPC) - patent classification system developed by the USPTO and the EPO based upon the International Classification System, which is intended to facilitate searching in the two patent offices. The CPC was launched in January 2013, and as of January 1, 2015, replaced the US Patent Classification System for all new applications. There is a joint website explaining the system, and both the USPTO and EPO websites have pages for searching the CPC. The EPO and USPTO have classified existing patents by the new system, so it is possible to search older patents in the EPO's Espacenet system and in the USPTO PATFT search system by CPC. The USPTO gave notice in December 2014 that it would not be updating the US Patent Class on its databases for existing patents after January 2015, so it would be best to use the CPC for all searching in the USPTO from now on.
Covered Business Method Patent: As defined in the August 14, 2012, rules issued by the USPTO, a "covered business method patent" is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
Covered Business Method Patent Review (CBM): The America Invents Act provided a special transitional post-grant review for challenging covered business method patents. A petition for CBM review may be filed immediately upon issue for any patents issued under the First to Invent rules, and after nine months from issue for patents filed under the First to File rules (i.e. filed after March 16, 2013). Such reviews must be filed before September 16, 2020.
CPA (see Continuing Prosecution Application)
Customer Number - law firms and inventors may apply for a Customer Number, which can be associated with a patent application. The Customer Number has a correspondence address and may list one or more patent attorneys by registration number. By associating applications with a customer number, address changes or adding or removing an attorney can easily be done to all of a firm's applications at once by simply changing the address or attorneys associated with the customer number. The customer number is also used in connection with EFS-Web and Private PAIR to allow filing and retrieval of patent applications and status information.
Cut-away view - similar to a section view, but only part of the invention is revealed - like cutting away part of the apple peel to show the seeds in one part of the core. (See our page "how to read a patent drawing")
Declaration - a document which must be signed by the inventor(s) and filed in the USPTO, in which the inventor affirms that he/she believes he/she is an inventor, that the application was filed with his/her authorization, and acknowledging the penalties for filing a false declaration. Note that the requirements for declarations were changed by the America Invents Act, effective September 16, 2012 - applications filed before that time need to have an "old form" declaration (SB/01) and applications filed after that date need an "AIA compliant" declaration (AIA/01).
Declaratory Judgment (DJ) Action - a lawsuit asking a court to declare a patent invalid or not infringed. Can only be brought if the plaintiff has been threatened with suit by the patent owner (or has a reasonable expectation of suit).
Defensive Publication (obs) - a document published by the USPTO at the request of the author, for defensive purposes, to prevent others from getting patents. Defensive Publications did not give any rights to exclude others from making, using or selling, as would a patent. Replaced in 1985 by Statutory Invention Registration (SIR), which was itself discontinued in March 2013. The publication of utility patent applications has essentially replaced the need for another way of defensively publishing inventions.
Delphion - patent search database, formerly IBM's patent server.
Dependent claim - a claim which is based upon, and narrows, another claim. For example, "3. The widget of claim 2, in which the moment arm is polarized." (See our page "how to read a patent - claims")
DEPATIS - patent search database, operated by the German patent office.
Derivation Proceeding - (new with the 2011 America Invents Act) - With the change to "first to file" in the 2011 Act, interferences are replaced by derivation proceedings, which determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later, and the earlier filed application was filed without authorization. Derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same. A derivation proceeding is basically a lawsuit before the PTAB, in which each side gets to present evidence and take testimony.
Design Patent - a special kind of patent which covers the ornamental appearance of a useful object. Design patents have a 14-year term, starting on the date of issue (increasing to 15 years, for design patents based on applications filed after May 13, 2015, three months after the date that the USA filed the paperwork to ratify the Hague Agreement). For more information see our Patents FAQ page.
Design Registration - term used in some countries for something similar to "Design Patents" in the US. Also called "industrial design" in some countries. See also Hague Agreement.
Detail view - a part of another figure, enlarged. The other figure should have the area of detail called out, usually by dotted or dashed lines. (See our page "how to read a patent drawing")
Disclosure Document - a program which allowed inventors to record documents in the USPTO for a low fee. The documents would be destroyed in two years if they were not referenced in a filed patent application. In theory, the Disclosure Document was supposed to serve as proof of the date of conception - in practice, there is little or no evidence they were ever successfully used in that way. The Disclosure Document program was discontinued by the USPTO, effective February 1, 2007.
Divisional - "a continuing application that discloses and claims only an invention or inventions that were disclosed and claimed in a prior-filed application."
Doctrine of Equivalents - the rule that an element in a claim also includes equivalent structures, if they do the same thing in the same way to accomplish the same result. The Doctrine of Equivalents is used if an accused device does not literally infringe a claim because an element of the claim is different from the device, but the patentee believes that the element used in the device is "equivalent" to the one called out in the claim. The Doctrine of Equivalents has been greatly limited in recent years, especially in the Festo cases. (see our page "How to read a patent - claims")
Effective Filing Date - introduced by the 2011 America Invents Act, the Effective Filing Date is used to resolve conflicts and determine what is Prior Art under the First Inventor to File standard. The application filing date is normally the Effective Filing Date, but publications by the inventor, if less than a year before the application filing date, become the "effective filing date" for some prior art purposes. The Effective Filing Date would be evaluated on a claim by claim basis, so in some cases, claims in an application filed on one date would have an effective filing date much earlier - for example, if the application is a continuation-in-part of an earlier application, and the claim only covers subject matter from the parent application. It should be noted a prior publication is given a one-year grace period only in the US - in most (if not all) foreign countries, the inventor's own publication would prevent his getting a patent under the absolute priority rule.
EFS-Web - the USPTO's electronic filing system for filing patent applications and other documents relating to patents and patent applications (other than assignments, which are filed through a different system, called "EPAS"). Like PAIR, EFS-Web has a public (unregistered) and private (registered) side. The registered side of EFS-Web requires the same cryptographic certificate as private PAIR, and a customer number. Documents filed through registered EFS-Web can be viewed through Private PAIR almost immediately, and in Public PAIR after a delay. EFS-Web replaced several earlier e-filing systems, such as EPAVE and PASAT, which required complex software and document coding and were not very successful.
Election of Species - similar to a restriction requirement, in that you will have to choose one claim or group of claims to be examined. The difference is that in an election of species, the Examiner believes that it is possible that the claims in the application would cover more than one variation ("species") of a single invention. If a "generic" claim (one which covers more than one species) is allowed as a result of the examination process, then other unelected species which would be covered by that generic claim would also be allowed. If there are no claims which are "generic", you'll need to file a "divisional" patent application covering the non-elected species, just as in the restriction requirement.
Embodiments are versions or variations on the invention.
Enablement - a patent (or application) must describe the invention in terms clear enough that a person having ordinary skill in the art (PHOSITA) could build or practice the invention from the patent (or application) without undue experimentation. See also Written Description.
ePAS - the USPTO's electronic filing system for patent assignments and related ownership documents. (eTAS is the equivalent for Trademark Assignments)
EPAVE - obsolete A former USPTO e-filing system. Superseded by EFS-Web.
EPO - European Patent Office - office which administers applications under the European Patent Convention (EPC).
esp@cenet - Patent search database, operated by European Patent Office
Examiner - employee of the US Patent and Trademark Office (USPTO) who reviews patent applications. Each examiner is assigned to an Art Unit, and handles applications in one particular area of technology.
Examiner's Amendment - in most cases, if an applicant wants to change something in an application, the applicant will have to file a formal amendment. However, sometimes if an examiner finds a very minor error, and the application is otherwise in condition for allowance, he will offer to fix the error through an examiner's amendment. The examiner will normally call the applicant's attorney and ask for permission to enter the amendment, and if permission is granted, the amendment will be made without the need for any filing by the applicant.
Examination - the review of a patent application by an examiner. The Examiner will review the application for conformity with regulations ("formality"), and will do a search of the prior art to see if there are any earlier patents or publications which might make the invention unpatentable. The results of the examination are reported to the applicant in an Office Action, in which the Examiner objects to parts of the application, and/or rejects claims. The applicant is given a time within which to respond to the Office Action by arguing or amending the application, after which the Examiner may allow the application or reject it again. (See our page "how to read an office action")
Examination Support Document ("ESD") - New rules enacted in 2007 (37 CFR 1.265) required an ESD under certain circumstances. Thankfully, those rules were overturned by a court in April 2008, so, at least for the moment, ESD's are a dead issue.
"Ex Parte Quayle" - noted in an Office Action when an application is in condition for allowance, except for "formal matters" - usually, correction of minor and obvious mistakes. Your response to the Action will be limited to correcting these mistakes. (see our page "how to read an office action")
ex parte - "on behalf of a party" - an ex parte proceeding is between one party and the USPTO, as opposed to inter partes, where two parties are involved. For example, in an ex parte re-examination, the proceeding is started by a requestor (which might be the patentee or someone else), but once the proceeding starts the Patent Office will only communicate with the patentee. In an inter partes review (IPR), on the other hand, both the patentee and the challenger participate in the review, with the PTAB deciding based upon filings by both parties.
Exploded view - the parts of the invention are shown physically separated, with lines indicating where they go. (See our page "how to read a patent drawing")
Fast Track (a/k/a "Track 1" or "Request for Prioritized Examination") - a way of getting faster consideration of a patent application by payment of a fee when the application is filed. Fast Track applications usually receive a first office action within a year, sometimes within a few months from filing.
Figure - an individual drawing in a patent or application. (see our page "How to read a patent - drawings")
File History (see "prosecution history")
File Wrapper (see "prosecution history")
File Wrapper Continuation - obsolete - a way of continuing prosecution in an application under final rejection. The old file was literally wrapped in a new paper wrapper, and continued onward. This procedure was replaced by the CPA, which, in turn, was replaced by the RCE. See also continuation.
File Wrapper Estoppel - (or "prosecution history estoppel") - the legal principle that whatever you say in the patent's prosecution history, you can't contradict later on when you're trying to enforce a patent. For example, if you tell the Examiner that something is not part of your invention, you can't say it is part of the invention years later when you bring an infringement lawsuit. Technically, "File Wrapper Estoppel" only applies to the "Doctrine of Equivalents", but the phrase is also used to refer to any use of the prosecution history to interpret terms in claims.
Filing Date - the date on which the application is filed in the USPTO. If the application is filed by Express Mail with a proper Certificate of Mailing, the filing date is the date that the application was accepted by the Post Office, if it's filed electronically the filing date is the date the e-filing is completed (Eastern Time), otherwise it's the date the application was actually received in the USPTO mail room. If the application is not complete when it is filed, the USPTO may refuse to assign a filing date until the missing parts are filed.
Filing Receipt - document returned by USPTO to acknowledge the filing of an application. See our page "How do I read a filing receipt?"
Final (Office Action) - Normally, the Examiner will declare the second rejection in a given case "final". The declaration of finality just restricts your options in how you can respond to the rejections. See our web page "How to read an office action."
First Inventor to File - if two applications claim the same invention, the first inventor to file (that is, the application with the earlier effective filing date) will receive the patent. This change to "first inventor to file" in the 2011 America Invents Act eliminates the need to inquire as to date of invention, although the Act as passed does not go all the way to a pure "first to file" system, where nothing matters but when the application was filed. The applicant still needs to be an inventor - just anyone cannot get a patent simply by filing first - and the patent goes to the application with the earliest "effective date". Derivation proceedings resolve conflicts where a later-filing inventor believes that the earlier-filing inventor derived his invention from him. The effective date for an application will be its actual filing date or, if the inventor published less than a year before the filing date, the date of publication. The new FItF rules will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.
First to Invent - the rules which pertained to US patents before March 16, 2013. If two applications claimed the same invention, the first inventor will receive the patent. Conflicts over inventorship were resolved through Interference proceedings for First to Invent applications or patents. How "first to invent" worked involved complex sets of rules to decide who was actually first, especially if one inventor conceived first and reduced to practice later, and so on. "First to Invent" also affected what constituted "prior art" - in case of a publication or other prior art, an inventor could "swear behind" the prior art by showing he had invented before the publication. The America Invents Act changed the standard to "First Inventor to File", effective on March 16, 2013. The old rules continue to apply to applications filed before March 16, 2013, and to continuations and divisionals of those applications which are filed after March 16th.
FOAM - First Office Action on the Merits
Foreign Filing License For purposes of national security screening, US law requires that US applicants get a "Foreign Filing License" before filing applications in other countries. This is routinely granted when an application is filed (even a provisional application), unless the application deals with defense-related technologies (nuclear weapons, encryption, etc.). It is not a mere formality, however - if an application for an invention made in the US is filed in a foreign country before the license is granted, and this is not corrected by promptly applying for a retroactive license, the application will be abandoned and any patent issued on it will be invalid.
FWC - see File Wrapper Continuation
GAU - Group Art Unit - an organizational unit of the USPTO, usually made up of a group of examiners and headed by an SPE, the GAU will examine applications in a given area of technology. GAU's are grouped into Tech Centers.
Grace period - (a) an extension of time to do something, usually to pay a fee, sometimes in return for a surcharge; (b) under section 102(b) of the patent law, the one-year period before filing an application, within which the inventor can publish, sell or use the invention publicly without losing patent rights. Under the pre-2011 America Invents Act law, publications by others during the grace period were not necessarily prior art, if the inventor had an earlier date of invention. Under the "first inventor to file" system introduced by the 2011 America Invents Act, the grace period applies only to the inventor's own publications and actions - other publications during the grace period are prior art, regardless of the date of invention.
Green Technology Classes - WIPO has defined certain International Patent Classification entries as being directed to "green technology". A PDF list of the Green Technology Classes is available from Carl Oppedahl's website (and "thank you, Carl"). As of July 1, 2015, the Japanese Patent Office (JPO) will act as International Search Authority for US applicants - but only for inventions in these classifications.
Hague Agreement - (formally "The Hague System for the International Registration of Industrial Designs") - an international system roughly similar to the PCT for utility patents or Madrid Protocol for trademarks. The Hague System provides a mechanism for registering a design by filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country. US filers may use the Hague Agreement for Design Applications after May 13, 2015.
IB - International Bureau - see WIPO
IDS - (see " Information Disclosure Statement")
IFW - Image File Wrapper - the electronic file of the prosecution history (i.e. all documents filed in an application), which can be accessed through PAIR. Most patents issued since about 2005 have an IFW, older patents probably do not.
including - an open transitional term, equivalent to "comprising" in US practice, although it is felt that the exact degree of open interpretation of "including" is vague enough that its use is not recommended by some attorneys. (See "how to read a patent application - claims")
Independent claim - a claim which does not depend on another claim. For example, "1. A widget comprising ..." See "How to read a patent - claims"
Inducement of Infringement (or infringement by inducement) is a form of secondary infringement, similar to contributory infringement, in that the party who induces infringement is not infringing the patent himself. Rather, he causes someone else to infringe the patent by, for example, selling something which could be used in a patented method along with instructions on how to perform the method, or selling only part of a patented machine along with directions on how to procure the missing parts and assemble the machine. Iinfringement by Inducement requires, first, that there be an actual direct infringement, and second, that the accused inducer knew about the patent and intended to cause the infringement. See 35 USC 271(b): "Whoever actively induces infringement of a patent shall be liable as an infringer."
Industrial Applicability - In the US, an invention must be novel, useful and not obvious to be patentable. In PCT practice and in many foreign countries, the equivalent standards are novelty, industrial applicability and inventive step, respectively.
Industrial Design - term used in some countries for something similar to "Design Patents" in the US. Also called "design registration" in some countries. See also Hague Agreement.
informal - an application which is filed without some required part or fee is called "informal".
Information Disclosure Statement - (USPTO form SB08a) - a form filed in the USPTO in order to satisfy the legal requirement to inform the Examiner of all prior art known to the inventor which is relevant to the patentability of the invention. The IDS is usually filed with, or soon after, the filing of the application. "Supplemental IDSs" are filed with references the inventor discovered after filing - usually in connection with the examination of related (or foreign) applications.
Infringe - an accused device or method infringes a patent if it is within the scope of at least one claim of the patent. A patentee has the right to stop an infringer from making, using or selling an infringing device or method.
INID - Internationally agreed-upon numeric code identifying the information printed on a patent.
Interference - Under the former US "first to invent" law, a patent went to the first person to invent an invention (as opposed to "first inventor to file" system, in effect for applications filed after March 16, 2013, where the first inventor to file an application gets the patent). If two people filed applications at nearly the same time claiming the same invention, the USPTO declared an "Interference" to decide who is the first to invent. An interference proceeding was basically a lawsuit before the BPAI (now PTAB), in which each side gets to present evidence and take testimony.
International Class - Most patent offices around the world, other than the USPTO, use the International Classification system for classifying patents for search. International class numbers are in the form letter-number-letter (i.e. F16H), and are subclassified into subclasses which have the form number/number (i.e. 7/08), so that a complete classification for a chain tensioner would be F16H 7/08. Unlike the US System, the International classification is arranged primarily by function, rather than structure. For more information on how the classification systems work, see our web page "how to read a patent - front page". For a list of the international classes, see the WIPO or EPO (espacenet) websites. See also Class.
International Application - in PCT practice, the International Application is filed in the Receiving Office to begin the PCT process. The International Application must be filed in the proper Receiving Office, which depends on which country the inventor(s) or applicant is a national of or resides in.
International Stage - in PCT practice, after the International Application is filed, it enters the International Stage. While in this stage, the International Application is searched by the ISA and examined by the IPEA, which issues the ISR and IPER. When the International Application is filed in the national patent offices of whichever PCT member countries the applicant chooses, it enters the National Stage. See our PCT page for more information.
Inter-Partes Review (IPR) - replaces “optional inter partes reexamination” - a proceeding conducted by the Patent Trial and Appeal Board (PTAB). IPR can be brought any time during the life of a patent - although, for patents filed after March 16, 2013, IPR can only be brought after the later of 9 months from grant or termination of post-grant review. IPR is not available if the proceeding was filed more than 1 year after service of an infringement complaint, or if the petitioner previously filed a DJ action alleging invalidity. The proceeding can challenge the patent on grounds of novelty (§102) or obviousness (§103), but the art cited by the petitioner is limited to patents or printed publications. The threshold for starting an IPR is a “reasonable likelihood” that the petitioner will prevail. Estoppel applies to any issue “raised or reasonably could have raised” before the USPTO and the courts. See also "ex parte"
Invention Date (see "date of invention")
Inventive Step - In the US, an invention must be novel, useful and not obvious to be patentable. In PCT practice and in many foreign countries, the equivalent standards are novelty, industrial applicability and inventive step, respectively.
IP - acronym for Intellectual Property
IPO - Intellectual Property Owners - US national organization of owners of patents, trademarks and copyrights.
IPEA - International Preliminary Examining Authority - in PCT practice, the patent office which does the International Preliminary Examination on the PCT application in the International Stage. The IPEA is usally the same office as the ISA. See our PCT page for more information.
IPER - International Preliminary Examination Report - in PCT practice, the report produced by the IPEA which give their opinion as to whether each claim meets the standards of novelty, inventive step (US "non-obvious"), and industrial applicability (US "useful"). See our PCT page for more information.
ISA - International Searching Authority - in PCT practice, the patent office which does the International Search on the PCT application in the International Stage. The PCT applicant chooses an ISA when they file the International Application - each PCT member country specifies which ISAs may be used by their nationals or residents. In the US, the possible choices for ISA are USPTO, EPO, IP Australia, KIPO and Rospatent. See our PCT page for more information.
ISR - International Search Report - in PCT practice, the report produced by the ISA, giving the results of the patentability search of the International Stage PCT application. The ISR will list references found by the searcher with an indication of "X" for references which are the same as in a claim (i.e. novelty rejection), "Y" for references which, in combination, render a claim obvious (or, "inventive step" in PCT terminology), and "A" for references which are cited for background. See our PCT page for more information.
Issue Date- the date on which a patent becomes enforceable. All US patents are issued by the USPTO on Tuesdays.
Jepson Claim - a special claim form which starts "An improved widget of the kind having...", followed by the prior art elements of the invention, and then says "in which the improvement comprises", followed by a description of the novel part of the invention. Jepson claims are similar to the "two part claim form" required in the EPO and some other foreign patent systems. See "how to read a patent - claims" for more detail.
Joint inventor - see co-inventor
JPO - Japanese Patent Office
Large Entity - a company with more than 500 employees, more or less. Determination of Large or Small Entity status is a bit more complicated than that - see our web page "How can I tell if I am a Small Entity?" for more information.
Leahy-Smith Act - see "America Invents Act"
LIE - Legal Instruments Examiner - an official in the patent office who examines filed documents to make sure they meet the legal standards. Also an UNTRUTH (but you knew that...)
Literal infringement - a device (or method) contains every element of a claim, literally. (As opposed to infringement under the Doctrine of Equivalents or contributory infringement or infringement by inducement)
License - (n) a document permitting a Licensee to make, use or sell products or services which would otherwise infringe the claims of a patent (or application), or (v) the act of permitting someone to make, use or sell products or services which would otherwise infringe the claims of a patent (or application). A license can be exclusive or non-exclusive. If an exclusive license is granted, the patentee may not issue any other other licenses conflicting with the exclusive license. Licenses may be limited by geographical area or field of use. Most licenses involve periodic payment of royalties, although some are paid-up in advance. See also "assignment"
"Machine or Transformation" Test - a test which states that a claim to a method is patentable if it is tied to a specific machine, or if it transforms something from one state to another. In the Bilski case, the Supreme Court said that this test is still valid, but it is not the only test of patentability.
Maintenance Fee - There are maintenance fees to be paid to the US Patent and Trademark Office at 3.5 years, 7.5 years and 11.5 years from the date of issue of a US patent. The fees may be paid no earlier than six months before the due date, and may be paid during the "grace period" of another six months after that (with a surcharge). If the maintenance fees are not paid, the patent expires at the end of the grace period (4, 8 or 12 years after issue). No maintenance fees are due during the pendency of a patent application, unlike annuities in most foreign countries, which are paid every year throughout the life of a patent.
Marking - see Patent Marking Statute
Markush group - a special claim form in which a list of alternatives are provided - "A mood-altering substance comprising water and an alcohol selected from the group consisting of ethanol, methanol, and twelve-year-old Scotch." Markush groups are most often used in chemical practice, but may be proper in other kinds of technologies. See "how to read a patent - claims" for more information.
"Means plus function" - a way of describing an element in a claim by describing what it does, rather than what it is. For example, instead of claiming "a bolt", one can claim "means for threadably fastening". While this kind of claim drafting was once thought to be broader than merely claiming "a bolt", court cases have limited the scope of "means plus function" language to mean the "means" shown and described in the description, and little else. see "How to read a patent - the claims"
Method claim - a claim which covers a way of doing something, usually expressed as a series of "steps": "A method of opening a soda bottle comprising the steps of gripping the cap and twisting counterclockwise." See also "apparatus claim"
Micro Entity - the 2011 America Invents Act created a new class of applicants - "micro entities" - who get a 75% discount off some fees. An applicant qualifies as a "micro entity" either by meeting rules based on their number of prior applications and gross income, or by their relationship to an Institute of Higher Education. Micro entity fees were first available after March 16, 2013. See our Micro Entity and Small Entity page for details.
Multiple-dependent claim: a claim which depends on more than one preceding claim ("The widget of any of claims 1-6..."). Not favored in US practice. See "How to read a patent - claims" for more information.
National Stage - in PCT practice, after a 30- or 31-month period from the priority date, the PCT International Application must be entered into the National Stage by filing in the patent office within each member country in which the applicant will want a patent. See our PCT page for more information.
Novelty - in order to be patentable, an invention must be "novel". "Novelty" is defined in section 102 of the US Patent Law. Briefly, something is "novel" if it was not patented, described in a publication, in public use or on sale by others before you filed your application, or by anyone (including you) more than a year before you filed the application. See "How to read an office action - step 3" for more information on "novelty" rejections.
NPL - Non-Patent Literature - a publication cited in a patent application, either by the examiner or by the applicant in an IDS, which isn't a patent. If viewing the IFW through PAIR, NPL references will only be retrievable to the party who filed them for copyright reasons.
Oath - a declaration, except in order to be an "oath" it must be sworn to in front of a notary or other official under penalty of perjury. As a practical matter, declarations have replaced oaths in US patent practice. Some other countries still require parts of patent applications to be filed in the form of sworn oaths.
Objection The Examiner may object to the specification, drawings or claims for various reasons. Typically, claim objections deal only with very obvious errors - misspellings, duplicated or missing words, or incorrect punctuation. Dependent claims which would be allowable if they were rewritten in independent form are objected to, rather than rejected. See our "How to Read an Office Action" pages for more information.
Obvious - in order to be patentable, an invention must not be "obvious" to a "person having ordinary skill in the art to which the invention pertains" - sometimes referred to by the acronym "PHOSITA". Obviousness is defined in section 103 of the US Patent Law. Basically, "not obvious" is a way of saying "an invention must be more than just a simple development from what went before." The obviousness test is similar to the "Inventive Step" requirement in many foreign countries. Generally, when a claim is rejected as "obvious", this means that even if the same thing was not present in any one reference, the Examiner believes that the claimed invention would be obvious because of a combination of two or more references. See "How to read an office action - step 3" for more information on "obviousness" rejections.
OED - Office of Enrollment and Discipline - the part of the USPTO which licenses and disciplines patent attorneys and agents; Also Oxford English Dictionary, but you knew that, didn't you?
Office Action - Once a patent application is filed, it will be assigned to an Examiner, who will review it for format and wording, and do a search for prior art. Nearly always (85%+) the application will be rejected. The document which the Examiner provides to explain why the application is rejected is called an "Office Action" - see our page "How to read an office action" for more information.
OG - Official Gazette - a weekly publication of the USPTO, listing all patents which issued that week (in abstract form with one drawing), any changes to the rules, as well as legal notices about various matters (disciplinary actions by the OED, patents available for license or disclaimed, etc.). In past times the OG was physically published on paper every week. Today it is published electronically, and can be accessed through the USPTO website.
OIPE - Office of Initial Patent Examination - branch of the USPTO which does initial screening of newly filed patent applications. The OIPE determines if the application meets minimal standards (all required elements are there), that the proper fee has been paid, and that the drawings are publishable. Then, the OIPE makes a preliminary decision as to what class the invention belongs in, and sends the application to the correct Technology Center for that class.
Omnibus Claim - a claim which merely claims the invention without any detail, as "the widget as shown in the drawings" or "the frammis as described in the specification". These claims are not permitted in a utility patent in the US, however they are effectively required in design and plant patents.
"On Sale" Bar - under section 102(b), an invention cannot be patented if the invention was on sale more than a year before the application was filed. Courts have held that the term "on sale" includes offers to sell, even if no actual sale was made at the time.
Opposition - some countries have procedures whereby a
someone may object to the issuance of a patent on an application, or may object to an issued
patent ("post-grant opposition"). In the US, there is no formal
pre-grant opposition procedure, as such, although a third party may bring prior
art to the attention of the examiner through a "protest"
or Third Party Preissuance Submission. Patents based
on applications filed after March 16, 2013, are subject to Post-Grant
Review, which is a form of opposition.
PAIR - Patent Application Information Retrieval - USPTO database with status information about patent applications and issued patents, including payment of maintenance fees, as well as images of filed documents and references for recently filed applications. PAIR has two separate systems - "Public PAIR" allows anyone access to information on issued patents and published applications, "Private PAIR" allows access to unpublished applications, but only to the inventor or the attorney of record for the application. Access to Private PAIR requires a cryptographic signature file supplied by the USPTO. Although the system is not yet complete, the USPTO promises that in time images of all documents filed in the USPTO will be accessible through PAIR.
PAJ - Patent Abstracts of Japan - database run by Japanese Patent Office
PALM - the internal USPTO database system, from which the data accessed through PAIR is derived.
Paris Convention - an international treaty which provides that if a national of a member country files a patent application in his own country, then follows up with an application in another member country within a year (six months for design patent applications), he can claim priority from the original application for the later-filed application.
PASAT - obsolete A former USPTO e-filing system. Superseded by EFS-Web.
Patent - the grant by the government of the right to stop others from making, using or selling an invention. For more information on patents, see our family of patent web pages.
Patent Agent - Someone licensed to prosecute patent applications in the USPTO who is not a lawyer. A Patent Agent must have a degree in Engineering or one of the "hard" sciences and pass an examination given by the USPTO. A Patent Agent may not prepare or prosecute trademark applications, even though these, too, are in the USPTO. Since they are not lawyers, Patent Agents may not prepare contracts or other legal documents or give legal advice other than as part of prosecuting patent applications in the USPTO.
Patent Attorney - a Patent Agent who has been admitted to the Bar of at least one state or the District of Columbia. In other words, a Patent Attorney is a Patent Agent who is also a lawyer. Patent Attorneys may prepare and prosecute trademark applications in the USPTO and are licensed by their state (or DC) to prepare agreements and otherwise practice law unrelated to the USPTO.
Patent Cooperation Treaty (PCT) - international treaty allowing a national or resident of a member country to file a single application in his own country, which can be filed in any member country later - see our page on the PCT
Patent Marking Statute - 35 U.S.C. § 287(a) - this part of the Patent Law says that if a patentee is selling a product covered by the patent and does not mark the patent number on the product (or packaging, if the nature of the product precludes marking the product itself), the patentee may not recover damages from infringement which occurred before the infringer was put on notice of the existence of the patent. In other words, if you do mark your product with your patent number, any infringer is assumed to know about the patent and needs to take steps not to infringe. If you don't mark the product, then you have to tell the infringer about the patent before you can get damages. The 2011 America Invents Act added a provision to the Patent Marking Statute which allows "virtual marking" - marking a product with the word "Patent" or "Pat." and an Internet URL address which points to a page listing the applicable patents, instead of marking the patent numbers themselves on the product. This will allow (and, in fact, requires) companies to keep the patent marking up to date, adding new patents and dropping old ones as they expire. The page needs to be accessible to the public without charge, and has to associate the company's products with the patents which apply to them.
Patent Pending - a product may be marked "patent pending" if at least one patent application covering the product is on file, and is not abandoned. A provisional application will support a "patent pending" marking. Under section 292 of the Patent Law - 35 USC 292 - it is illegal to mark something "patented" or "patent pending", if it isn't.
Patent Prosecution Highway (see PPH)
Patent Trial and Appeal Board (see PTAB)
Patentable Subject Matter - that which is eligible for patent protection, assuming it meets the standards of novelty, utility and non-obviousness. As set out in section 101 of the Patent Law, this includes "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof".
PCT - Patent Cooperation Treaty - a treaty which allows a patent applicant to file a single International Application which, after 30 or 31 months from the priority date, can be brought into any PCT member country as a National Stage application - see our PCT page for more information.
Perspective view - a figure in a patent which is a simulated 3-D view (See our page "how to read a patent drawing")
Petition - a document asking the USPTO to do something, usually accompanied by a fee. Some petitions are included in routine paperwork and routinely granted - for example, if a response to an office action is filed after the due date, the response is accepted if the applicant pays a fee with a "petition for extension of time". Other petitions are more substantive, and are reviewed by the Office of Petitions in the USPTO - for example, an applicant who gets a restriction requirement may file a petition to force the Examiner to retract the restriction, or an applicant might need to petition to get the USPTO to waive its rules for one reason or another.
Petty Patent - term used in some countries for patent-like protection for products. Details differ from country to country, but petty patents usually are not examined (or are examined only as to form, and not novelty), and have a shorter term than regular patents. In some systems, these must be examined before bringing suit against an infringer, in others they are examined in court during the suit. Petty Patents are called "utility models" in many countries, or "Gebrauchsmuster" in Germany - other countries use other names.
PHOSITA - "Person Having Ordinary Skill In The Art" - a very extraordinary person, indeed, who has all possible knowledge of the prior art, but only in a given field of technology. The PHOSITA is the hypothetical person against whom "obviousness" is judged. One British case defined this mythical Mr. PHOSITA as "a nerd, but not an android". The 2007 US Supreme Court case KSR v Teleflex said Mr. PHOSITA is a "person of ordinary creativity, not an automaton." Clear, now?
Plan view - same as "top view" (See our page "how to read a patent drawing")
Plant Patent - a special kind of patent, which covers asexually reproduced plants, "including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state." (35 USC 161)
Post-grant review (PGR): a proceeding in the PTAB which applies to any patent based on an application filed after March 16, 2013. A petition for PGR must be filed during the 9 months after issuance of a patent, requesting review of the patent on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b) relating to invalidity - i.e., patentable subject matter (§101), novelty (§102), obviousness (§103), or written description, enablement, indefiniteness (§112).
PPH - the "Patent Prosecution Highway" is a collection of treaties between countries which allows patent applications which receive a favorable examination opinion from the patent office of one member country to receive faster processing in the other member countries. Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. As of the date of writing, March 2015, the US has PPH arrangements for PCT International Applications, as well as through two group treaties (the IP5 and the Global PPH) which cover Austria, Canada, China, Denmark, the EPO, Hungary, Israel, Japan, Korea, Norway, Portugal, Russia, Singapore, Spain, Sweden and the UK. The USPTO also has individual PPH agreements with Columbia, Czech Republic, Germany, Mexico, Nicaragua, Philippines, Poland and Taiwan. For the latest information, see the USPTO PPH page.
Preamble - the introductory part of a patent claim - "A widget for pre-polarizing frammistats in soda vending machines, comprising..." for an apparatus claim, or "A method for removing blemishes from gronkheiser armatures comprising the steps of ..." in a method claim. The preamble is meant to set forth the name and environment of the invention, and identify things which are not novel, but which need to be mentioned for "antecedent basis" purposes. Normally, the preamble should not be used to limit the claim, unless it is necessary to make sense of the claim. (see our page, "how to read claims" for more information)
Preferred Embodiment - (best mode) - "The specification shall ...set forth the best mode contemplated by the inventor of carrying out his invention." (35 USC 112, first paragraph) This requirement is intended to force the inventor to let the world know the best way of practicing the invention, and prevent him from getting a patent while concealing necessary information to make it work. While section 112 still requires the inventor to disclose the best mode, failure to do so may no longer be used by a third party to invalidate an issued patent.
Primary Examiner - an Examiner who has the authority to sign office actions and make other determinations without prior review. (As opposed to an "Assistant Examiner", who must have office actions co-signed by a PE). A PE, in turn, works under a Supervisory Primary Examiner (SPE)
Prior Art - "what went before" - publications, earlier patents, public use or sale - anything which is relevant to the patentability of an invention because it shows that the invention was known before the applicant filed his patent application (under the First Inventor to File rules applicable after March 16, 2013) or before the inventor invented the invention (under the pre-March 16th First to Invent rules).
"Prior commercial use" was added by the America Invents Act as a defense to infringement for all technologies, if the use was at least one year before the effective date of the application which issued as the patent. There is an exemption for patents owned by universities or their tech transfer offices.
Priority Date - sometimes, a patent application is given the effect of a filing date which is earlier than its actual filing date by effect of a law or international treaty such as the Paris Convention or PCT. The "priority date" is the filing date of some earlier application upon which the application is based - for example, if an applicant files an application in Japan on January 1, 1999, and follows up by filing a US application on December 15, 1999, he can claim a priority date of January 1, 1999, for the US application, even though it was not actually filed for nearly a year afterward.
Product by Process - a type of claim which defines a product by the method of making it. "A widget formed by a method comprising the steps of ..." Such claims are allowable if both the product and the process are novel - if only the method of manufacture is novel, it should be claimed as a method, not product-by-process.
Prosecution - the applicant's side of the Examination process, convincing the Examiner to issue a patent.
Prosecution History - the written record of the Examination Process. Also known as the "File Wrapper", because all of the papers involved in a patent application were once covered in a paper wrapper. Today, the "Image File Wrapper" contains much the same information in electronic form, accessible through the USPTO's PAIR website.
Prosecution History Estoppel - see File Wrapper Estoppel
Protest - the USPTO has a procedure whereby someone may file a "protest" with an Examiner, bringing prior art references to the attention of the Examiner with respect to a pending patent application. This procedure is very seldom used, as it's a bit of a "Catch 22" - a protest may only be filed with reference to a specific application, identified by serial number, but it must be filed before the application is published. If the application is not published yet, how is anyone to know of its existence and its serial number? Once it's published, you know it's there and what the serial number is, but you're too late to file a protest. See also Third Party Preissuance Submission
Provisional Application (for Patent) - a sort of "patent application lite", which reserves a filing date for the material in the application, but will never be examined or become a patent. Provisional Applications are automatically abandoned one year after filing, and a utility application must be filed within that year claiming benefit of the Provisional Application to preserve the filing date - see our Provisional Application FAQ for details
Provisional Patent - there is no such thing. See "Provisional Application"
Provisional rights - while patents are only enforceable after they issue, a patentee may ask for a reasonable royalty for activities of an infringer which occur between the publication of the application on which the patent was based and the date of issue, if the invention claimed in the published application and the issued patent are "substantially identical". The ability to ask for pre-issue damages is called "provisional rights". Since no court has yet defined what "substantially identical" means, how broadly provisional rights will be enforced remains an open question.
PTAB - Patent Trial and Appeal Board (previously the Board of Patent Appeals and Interferences (BPAI)) - a part of the USPTO, staffed by very senior Examiners, which hears appeals from decisions of Examiners as well as Post-Grant reviews and Inter-Partes Reviews to issued patents and transitional reviews of Covered Business Method Patents, Derivation Proceedings (for patent applications filed under First Inventor to File rules) and interferences between competing inventors (for patent applications under the First to Invent rules)
PTO - see USPTO
qui tam - literally, an abbreviation of the Law Latin phrase "qui tam pro domino rege quam pro se ipso in hac parte sequitur", which translates to "who sues in this matter sues as much for the king as for himself." In other words, a qui tam suit is brought by a private individual to enforce a law, usually because the individual then gets to keep all or part of any fine which might be imposed by the court. In the patent context, qui tam actions were often brought to enforce the Patent Marking Statute, asking the court to impose fines on a company who improperly marked a patent number on a product - usually, this was an expired patent when the manufacturer had not bothered to remove the reference after expiration. The suits were brought by people who were primarily interested in the money they could get from the company who had mismarked the product, however innocently. This had been viewed by some as an abuse of the system, and therefore the America Invents Act of 2011 prohibited such suits after September 16, 2011, unless the person bringing the suit was damaged by the failure to mark.
RCE (see Request for Continued Examination)
Recapture - see Reissue
Receiving Office (RO) - in PCT practice, the patent office in which an applicant files the International Application. Each PCT member designates certain Receiving Offices to be used by its nationals or residents, and the International Bureau of WIPO is usually available as an RO for nationals and residents of any PCT member.
Reduce to Practice - complete the process of invention by actually building the device (or practicing the method), or filing a patent application ("constructive reduction to practice").
Re-examination - a patent may be subjected to the examination process again after it issues, if the PTO, or a patentee, or a third party thinks there was some prior art missed in the original examination. Re-examinations were either ex parte, where a party requests re-examination but has no further participation in the proceeding (unless they are the patent owner), and inter partes, where the party requesting the re-examination could respond to amendments and arguments made by the patent owner. As part of the America Invents Act, inter partes re-examination was replaced by Post-Grant Review. Ex parte reexamination requested by patent owners is still available after the AIA, but the USPTO expects most owners to use the AIA's Supplemental Examination procedure instead. In a re-examination, an Examiner examines the patent again, and may affirm the claims, or reject them wholly or in part based on the new art cited by the person requesting reexamination. The result of a re-examination is a "Re-examination Certificate", which is published with the issued patent. Re-examination certificates have a prefix "B", followed by the number of the patent. They may also have a suffix "Fx" (or, for pre-2001 patents, "Cx") where "x" is "1" for the first certificate, "2" for the second, and so on. See also Supplemental Examination
Reference - a piece of prior art.
Registration number - all patent attorneys and agents are issued with registration numbers when they are admitted to practice in the USPTO. For what it's worth, the USPTO issued registration number 71,195 on April 2, 2013. Among patent attorneys, there's a certain cachet in having a lower number - by the way, my registration number is 29,619, what's yours?
Rejection - in an Office Action, the Examiner may reject claims based on form (section 112), patentability of the subject matter (section 101), or as unpatentable in view of the prior art (sections 102 or 103). For more information, see "How to read an office action"
Reissue - if there was an error in the examination which might result in some claims being invalid, or if the patentee failed to claim the invention as broadly as he was entitled to, he may ask for the patent to be reissued with amended claims. If the reissue is granted, the result is a new patent called a "Reissue Patent" which replaces the original patent. Reissue patents are distinguished by patent numbers starting with "RE". Note that while you can use a reissue to ask for broader claims than those which were in the issued patent, you cannot use reissue to try to add anything back into the claims which you had to give up to get the patent in the first place - this is called "recapture".
Request for Continued Examination (RCE) - basically, "buying another bite at the apple" during examination. If the Examiner issues a final office action, the applicant's options are limited, and the Examiner does not have to enter any claim amendments offered after the final rejection. By filing an RCE, the applicant can amend the application and make any arguments he would have made after final, and the Examiner must enter and consider them. An RCE is an alternative to filing a Continuation, which is a new application - an RCE merely continues the same application in the examination process. (see our page "how to read an office action"). Note that RCE's may not be used for design patent applications - for such applications, you must use a CPA (Continuing Practice Application), instead. An RCE may also have to be filed if the application has been allowed, so that the examination is concluded, and the applicant becomes aware of a new reference that the examiner had not previously considered (from a new office action the applicant received from a foreign counterpart or related US application, for example). The applicant needs to file an IDS so that the examiner can look at the new reference and reaffirm that the application is still allowable, and therefore has to request continued examination for the examiner to reopen prosecution to consider the IDS. Note that the USPTO issued rules in September 2012 which say that the RCE is not necessary, however, if the applicant had known about the new reference for less than 90 days before he filed the IDS.
"Request for Prioritized Examination" - see Fast Track
Restriction Requirement - the Examiner believes there are more than one invention in the application which are patentably distinct from each other. Since the rule is, "one invention to a patent", you will have to elect one invention to proceed with. The claims directed to that invention will be examined, and the claims directed to the other invention(s) will be withdrawn from consideration. You can file "Divisional" applications to pick up the withdrawn claims at any time until the parent application issues. See also election of species
RO - see Receiving Office
Royalty - a payment by a licensee to the owner of a patent under the terms of a license. Royalties are usually either a percentage of the sales price of a product, or a fixed dollar amount per unit - a royalty based on a percentage of the licensee's profit is possible, but usually not desirable for the licensor. Royalties are usually paid on a periodic basis - monthly, quarterly or annually. A license could call for a one-time royalty payment which would cover use of the patent for the rest of its term - such licenses are called "paid up" licenses.
Section 101 - See "Patentable Subject Matter"
Section 102 - See "Novelty"
Section 103 - See "Obviousness"
Section 112 - the section of the patent law which deals with matters of formality, primarily. Rejections under this section include failures of enablement or written description, or antecedent basis, or simply because the words are vague or fail to clearly describe the invention.
Sectional view - a figure showing a cut through the invention, like slicing an apple through the core. If the section is taken from another drawing, the other drawing should have a "section line" indicating where the cut is made, and which direction it is "looking". (See our page "how to read a patent drawing")
Serial number - a number assigned by the USPTO to identify a patent application. The number is usually a two digit series number, followed by a slash and a six digit application number - for example, 11/123,456. The six-digit application numbers will repeat from series to series. Utility and plant patent applications receive numbers in series 02 through 1x (series 14 was being used from Feb. 2012). Design applications are in series 29, and provisional applications are in series 60-61. Reexaminations get serial numbers in the 90 or 95 series. See our page "how to read a patent" for more information. (For what it's worth, trademark applications have serial numbers in the "seventy" and "eighty" series - in July 2013 the USPTO started issuing 86/ numbers to trademark applications)
SIR (see Statutory Invention Registration)
Small Entity - individuals, not-for-profits, or companies with less than 500 employees, more or less. Determination of Large or Small Entity status is a bit more complicated than that - see our web page "How can I tell if I am a Small Entity?" for more information. Most (but not all) USPTO fees are reduced for Small Entities. See also Micro Entity
SPE (see Supervisory Primary Examiner)
Statutory Invention Registration (SIR) - obs. - an applicant who did not want a patent, but also did not want anyone else to get a patent on their invention, could request the USPTO to publish a disclosure solely for the defensive purpose of preventing others from getting patents. SIRs did not give any right to exclude others from making, using or selling, as would a patent. SIRs were introduced in 1985, replacing the earlier Defensive Publication program. They were given numbers starting with "H". SIRs were not widely used, and when patent applications became published in 2000, SIRs became essentially redundant - it was less expensive for an applicant who wanted their invention published for defensive purposes to just file a regular utility application, then abandon it after publication. SIRs were eliminated by the 2011 America Invents Act, and the last SIR to be published was H2273, in December, 2012.
Subclass: see Class
Substitute Statement - for applications filed after September 16, 2012, if an inventor cannot be found or is dead, or refuses to sign the application, and if that inventor was under an obligation to assign the application to the assignee/applicant, the assignee (or some other persons) can file a Substitute Statement instead of the Declaration signed by that inventor. The USPTO form for this is AIA/02
Supervisory Primary Examiner (SPE) - a higher-level Examiner, who has the authority to decide certain matters (See MPEP section 1002.02(d))
Supplemental Examination - a post-grant proceeding introduced in the America Invents Act of 2011 which became available on September 16, 2012. A patent owner can file a Request for Supplemental Examination for his issued patent, asking an examiner to review information which might be relevant to the validity of their patent. If the information supplied raises at least one "substantial new question of patentability", the USPTO will start a proceeding to reexamine the patent. It is expected by the USPTO that Supplemental Examination will replace ex parte Re-examinations requested by patent owners.
Supplemental IDS - (see Information Disclosure Statement)
Technological Invention: a patent is for a "technological invention" solely for purposes of the Transitional Program for Covered Business Methods, if the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution. (definition from the August 14, 2012, rules issued by the USPTO)
Terminal Disclaimer - the terms of some patents are limited to coincide with the terms of earlier-issued patents as a result of filing two applications which claimed essentially the same invention. Terminal disclaimers are usually marked on the later-issued patent. See "how to figure out if a patent is still in force"
Third Party Preissuance Submission: Third parties are allowed to submit certain types of information to the examiner with regards to the patentability of someone else's application before the earlier of (i) allowance or (ii) the later of six months after the publication of the application or the first rejection. The informatin can be publications, patents, or published applications - but not information regarding public use or sale or improper inventorship. Submissions are made through a web-based submission system which can be accessed through the normal USPTO e-filing system, EFS-Web.
Track 1 - see Fast Track
Two-part claim form - This claim format, similar to Jepson Claims, is strongly encouraged, if not actually required, in the EPO and some other foreign patent offices. The claim starts "A widget of the kind having...", followed by the prior art elements of the claim, and then says "characterized in that...", followed by the novel part of the invention. Two-part claims are accepted in the USPTO, although they are seldom used here.
Useful/utility - in order to be patentable, an invention must be "useful". That is, it must have some definable use, no matter how trivial. Most rejections for lack of utility are for applications claiming perpetual motion or antigravity, or for chemical compounds, drugs or DNA sequences with no known (or stated) practical application. See "How to read an office action" for more information on utility - and see our Weird and Wonderful Patents page for examples of issued patents with, shall we say, questionable real-world utility.
Utility Model -see "petty patent"
USPTO - United States Patent and Trademark Office - branch of the Department of Commerce which is in charge of patent and trademark matters. Often called simply "the Patent Office". Since 2004, the USPTO has been located in Alexandria, Virginia. It was in Crystal City, Arlington, VA, from the 1960's, and in Washington, DC, before that (the old Patent Office building is now the Smithsonian's Museum of American Art and National Portrait Gallery, for what that's worth). Interesting bit of trivia - the Patent Office was the only government building in Washington which was not burned by the British when they occupied the city during the War of 1812, on the grounds that it was a repository of knowledge for all people, rather than a government building as such.
Virtual Marking - marking a product with a web page address instead of a patent number - see Patent Marking Statute for an explanation. For an example of virtual marking, see this page (external link to the rapiscansystem.com website).
Walker Process claim - an assertion by an infringement defendant that the patent it is being sued for infringing was procured by fraud so that the plaintiff can attempt to exert monopolistic power. The word "claim" in "Walker Process claim" does not mean "patent claim". Rather, the word "claim" means simply "assertion", and a "Walker Process" claim is a specific kind of defense to an infringement suit in which the defendant raises an antitrust issue related to fraud in procuring the patent in order to prevent the plaintiff from enforcing the patent.
WIPO - World Intellectual Property Office - the office which administers a number of international IP treaties, including the Paris Convention and PCT for patents, the Madrid Protocol for trademarks, and the Hague system for Industrial Designs. WIPO is located in The Hague in the Netherlands.
Withdrawn -claims are "alive", but the Examiner is not reviewing them because of an election in an earlier Restriction Requirement or Election of Species.
Written Description - a patent (or application) must describe the invention in terms clear enough to indicate that the inventor was in possession of the claimed invention at the time of application. This is related to, but different from, enablement - an invention can be enabled, in that Mr. Phosita could build it from the description, but fail the written description requirement because it does not show that the inventor had possession of the invention. This most often comes up where a defendant is sued for infringing a patent based on making, using or selling a product which the patent owner thinks is covered by the claims, if interpreted broadly enough, but which was not exactly described in the patent.
USPTO Glossary of Terms
"Understanding Patentese" - from the Journal of the Minerals, Metals & Materials Society
Don't forget our "Patent FAQ" page - it has lots of information about patents and the patent process.
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