Glossary of Intellectual Property Terms
This is a reference guide for commonly used intellectual property terms.
Abandonment: An application that has been declared abandoned is dead and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response from an applicant to an Office Action letter within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances.
Absolute Novelty: A system whereby any prior publication or prior use anywhere in the world destroys the novelty of a patent.
Acquisition: The Acquiring, or takeover, of a company by buying up the company shares giving the buyer voting control of the company.
Active inducement to infringe: One may be held liable for patent infringement as a result of actively encouraging another to infringe if such other does infringe, even though the inducer has not made, used, sold, offered for sale, or imported the patented invention.
Advisory action: An official action issued by the US examiner when a final rejection is being maintained.
AIPA: American Inventors Protection Act of 1999.
AIPLA: American Intellectual Property Law Association.
AIPPI: The International Association for the Protection of Intellectual Property.
Alternative dispute resolution: Alternatives to the court system to resolve disputes. This usually refers to mediation or arbitration. May include mechanisms set out in contracts.
ANDA, Abbreviated New Drug Application, is the process of obtaining approval to market a generic drug. An ANDA contains information demonstrating that the generic drug is bioequivalent to the brand-name product and certification that the generic drug does not infringe on any patent for the brand-name product listed in the Orange Book or certification that the listed patents are invalid.
Anticipation: Prior art which destroys the novelty of a claim by fully describing something falling within it.
Apparatus claim: This refers to that part of a patent document called the Claims. An apparatus Claim provides a structural description of a piece of equipment that is embraced by the expression “machine” in the definition of patentable subject matter in the US Patent Statute. Drawings of the apparatus are essential.
Appeal brief: A summary of the arguments why the invention should be patentable, submitted to the board of appeals.
applicant1: In the US applicants must be individuals. An application for patent is filed under 35 USC 111(a).
Apportionment of Profit: A measure of damages in patent-infringement litigation. Apportionment generally refers to dividing the profits on the sale of a particular piece of apparatus or a product according to the percentage of cost or sale price attributable to the patented invention. Where the whole of the product is covered by the patent, or where the patented component contributes all of the market value, apportionment of profit is not necessary.
Argument: The process by which a lawyer or other person tries to persuade the court, based on the record, to find for his side. The Attorney’s Canon of Ethics (sic) require there be some basis in the record for such arguments.
Assignee: The person or company to whom ownership of the patent is transferred. Usually by assignment in writing. Note exception…Matrimonial Property Act.
Assignment – in intellectual property an assignment is a legal transfer of ownership or usage rights from one entity to another.
assignment: A transfer of ownership of a patent application or patent from one entity (assignor) to another (assignee). All assignments should be recorded with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.
Automatic prohibition: 30-month stay is the automatic prohibition of FDA action on an ANDA with a Paragraph IV certification if the brand-name company files a patent infringement suit against the generic applicant within 45 days.
Background of the invention: A specific subsection of a patent application outlining the relative prior art and problems associated with a technology.
Best mode requirement: The obligation to describe the best way of carrying out the invention at the date of filing the application. It imposes on the inventor the requirement to disclose the best version of the invention, not an alternative second best another inferior version.
Bioequivalence: The Food & Drug Administration requirement that the active ingredient of a generic drug be absorbed into the body and metabolized in approximately the same amount over approximately the same period as the active ingredient of the innovator drug. Bio-equivalence is demonstrated in two ways. Dissolution testing determines if the generic drug product dissolves in approximately the same amount of time as the innovator product. Blood-level testing is done by giving the generic drug product to humans and measuring how much of the drug enters the bloodstream, how fast it does so, and how long it takes to leave the body.
Bolar Provision: An Exemption which states that it is not an infringement to make, use, offer to sell, or sell within- or import into solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.
BPAI: Board of Appeal Interferences.
Brand – traditionally refers to a distinctive product or service associated with an organization. Recently, this term has been used to define a corporate image associated with a particular organization that is firmly rooted in the public’s mind.
Budapest Treaty: A Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.
CAFC (Court of Appeals for the Federal Circuit): All patent decisions are appealed to this court rather than to the Appellate Courts throughout the United States. While the CAFC decisions can be appealed to, and overturned by, the Supreme Court, the Supreme Court takes few patent cases and so the CAFC is the court which primarily determines the patent law.
Cease and desist letter – a letter (usually issued by an attorney on behalf of an intellectual property rights holder) sent to an accused infringer notifying them of their possible violation of copyright, trademark, or patent law, and requesting that the recipient stop all use (i.e., cease) of the intellectual property in question or face legal action.
Cease and Desist: A letter written by a Patent owner to an alleged infringer, ordering the alleged infringer to stop making, using, selling, or offering for sale the patented Invention. The matter should never be ignored and may result in an injunction to stop the infringing activity. In many cases the order will come with a proposal to negotiate a license from the patent owner..
Certificate of Correction: Issued upon patentee request due to a USPTO or applicant minor error in the patent such as printing, typographical, or clerical errors.
Claim: The part of a patent specification that defines the legal scope of the protection sought by an inventor. Each claim is a single sentence in a legalistic form that defines an invention and its unique technical features. A valid claim is one that reads on the invention described in the specification but does not read on any prior art. Each and every Claim must be clear and concise and supported by the description.
Classes: A term relating to Patents, Trademarks and Designs. Classes allow technical and descriptive matter to be categorized and searched.
Clean hands doctrine: The principle that equitable relief such as enforcement of patent rights by an injunction can be granted only to one who has acted in good faith.
Combining Prior Art: Under Section 102 of the US Patent Statute, a claim must be identically disclosed in a single prior-art reference in order to be rejected as being anticipated by prior art. Under Section 103 of the Patent Statute (which deals with the standard of obviousness) one is permitted to employ a single prior art reference, or may combine two or more references to render a claim obvious if such a combination would be apparent to one skilled in the art. In both cases a patent examiner can reject a patent application, or a patent claim can be ruled invalid by a court.
Common Law Rights: Property or other legal rights that do not absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual. Active Federal registration of trademark can provide a higher degree of legal protection and readily demonstrated evidence of ownership of a mark.
Comprising: The word “comprising” in a claim renders the claim open to allow for additional elements that could be added to the alleged infringing device without avoiding infringement.
Contact Address: The address to which a Patent or Trademark Office will send all correspondence relating to a particular application.
Continuation Application: A new filing of a US application, with unaltered specification to allow presentation of new claims.
Continuation Application: This is a patent application directed toward the same invention as a prior application and filed while the prior application is pending, naming the same inventive entity. The continuation application is given the benefit of the earlier filing date of the application on which it is based.
Continuation in Part Application: A new filing of a US application, with alterations or additions to the specifications.
Continuation-in-Part Application: Continuation-in-Part (CIP). An application filed during the lifetime of an earlier non-provisional application, often repeating a substantial portion or all of the earlier non-provisional application and adding matter not disclosed in the earlier non-provisional application.
Continuation Patent Application: Continued Prosecution Application. A continuation or divisional application filed in a design application under 37 CFR 1.53(d). NB: CPA’s may no longer be filed in utility and plant patent applications, effective 14 July 2003.
Copyright: An Intellectual Property Right. An Automatic that protect works of authorship, such as writings, music, films, computer software and works of art that have been tangibly expressed. In the US, the Library of Congress registers copyrights. In the US the term of copyright last for the lifetime of the author plus 70 years. In most countries the term is the author’s lifetime plus 50 years.
Counterpart: An application filed in a foreign patent office that is substantially similar to (like) the patent application filed with the USPTO and is based upon some or all of the same invention. The two applications would generally have the same applicant. Called an Equivalent in other jurisdictions.
Cultural heritage community: individuals, organizations, associations, and groups who work in the cultural sector and promote its growth, preservation, and sustainability.
Cybersquatting – The process of registering, trafficking in, or using a domain name with bad-faith intent in order to profit from the goodwill of a trademark belonging to someone else.
Delphion: A subscription based searching tool with extensive data coverage including collections from all over the world. Delphion is the most comprehensive sources for finding and viewing patent information.
Dependent claim: A Claim that makes express reference to and depends on an earlier claim. Such a Claim by definition incorporates by reference all of the recitals of the earlier claim from which it depends. A Dependent Claim must be read as containing its unique one or more additional feature plus the recitals of every claim or claims from which it depends.
Depositions: In a US infringement suit, the pre-trial stage of taking down evidence on oath.
Description: That part of a Patent application giving sufficient instruction to enable a person of ordinary skill in the art to make or perform the invention. The description forms the basis for the Claims. The description can cover subject matter broader than the Claims. The Claims may never be broader than the description.
Design Patent: A type of patent covering the new, original and ornamental aspects of an article of manufacture (product). The prime focus is on the overall appearance of the new product. An application will also contain a textual description of the product.
Disclaimer: The exclusion of specific subject matter from the scope of protection claimed.
Disclosure: This term can refer either to an invention disclosure of an product or method that is not the subject of a patent application and may be use, display or an oral or written communication of a development. The term can also refer to portions of a patent application, generally those parts other than the Claims.
Discovery: A court order to parties in an infringement action to produce relevant documents. Here the courts have the power to order a person who has not committed any infringing act, but who has innocently become involved in assisting others to commit infringement, to give full information and disclose the identity of the infringers.
Doctrine of Claim Differentiation: This is a judicially created rule of Claim construction that states that when two claims in the same patent have an apparently similar or identical meaning, an effort should be made to adopt an interpretation that will give them a different (as distinguished from identical) meaning.
Doctrine of Equivalents: A doctrine which says that if a patent claim does not literally read on a possibly infringing device, it can be read more broadly providing it does not read on the prior art. It is designed to allow the inventor to assert a patent where the differences between the inventor’s and an infringer’s product are not substantial.
Double Patenting: A doctrine that states that an invention cannot be twice patented. An inventor cannot obtain claims in two patents directed either to the same invention or to an obvious variation of the same invention. Where the inventions are identical, the second patent is invalid. With respect to obvious variations, this rejection can be overcome by filing a terminal disclaimer which states that the second or any additional patents to issue will expire on the same date as the first patent, thereby eliminating any improper extension of the period of exclusivity resulting from the second or additional patents.
Drawings: Patent drawings must show every feature of the invention as specified in the Claims. Omission of drawings may cause an application to be considered as incomplete. Apparatus Claims must be accompanied by drawings showing the inventive feature(s). This is also important for Provisional Applications.
Due Diligence: the research, review, consideration, and other efforts that an individual or organization undertakes in a particular circumstance in order to avoid harm to other persons or property.
Due Diligence: The process of investigation, performed by investors, into the details of a potential investment or agreement, such as an examination of operations and management and the verification of material facts.
Economic rights: rights that may yield financial or economic benefits to the rights owner. Unlike moral rights (which protect the reputation and personality of the creator), economic rights safeguard the possible financial benefits that are designed to reward and encourage creators to develop new works. In U.S. copyright law, the five rights granted to creators — to reproduce their work, to produce derivative works based upon their work, to distribute their work, to publicly perform the work, to publicly display the work — are all economic rights.
Embodiment: A manner in which an invention can be made, used, practiced or expressed. It is generally considered to be non-limiting and fulfils the best-method obligation.
Enforceability: The right of the patent owner to bring an infringement suit against an alleged infringing party who, without permission, makes, uses or sells the claimed invention. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action.
Equivalence: The extension of the scope of a patent to cover something outside the literal wording of the claims.
eTAS: Electronic Trademark Assignment System.
Examination: A Scrutiny by an Official of a National Department or Region of an application to determine acceptability of a Patent, Trademark or Design. Patents are Examined to determine if an invention is novel, contains an inventive step (not obvious) and is industrial applicable (useful).
Exclusive license: A license that excludes use of the invention by all others, including the patentee himself.
Exclusivity: 180-day exclusivity is the marketing exclusivity granted to the first applicant that files an ANDA with Paragraph IV certification.
Extension or prolongation of term: Prolongation of a normally fixed term such as the life of a patent.
File history or file wrapper: The dossier containing all papers relevant to the prosecution of an application.
File wrapper estoppel: A principle forbidding the patentee from asserting a scope broader than the literal wording of the claims if the claims are narrowed during prosecution to avoid prior art.
Filing Date: The date of receipt in the Office of an application which includes
Final rejection: An official action severely limiting further prosecution. An Office action on the second or any subsequent examination or consideration by an examiner that is intended to close the prosecution of a non-provisional patent application.
Fingerprint claim: A claim characterizing a new product of an unknown structure in terms of its properties.
First to Invent: In the United States the patent is awarded to the first person to make an invention independent of who was the first to file an application for that invention.
Foreign filing: Filing in countries other than the country of first filing.
Fraud on the Patent Office: Obtaining a patent by concealment or misrepresentation of the facts.
Generic claim: A claim that covers a number of compounds defined by common structural features.
Grace period: A period of time before the filing date of an application during which certain types of publication do not invalidate the application. From the date of first disclosure or publication, the US has a 12 month Grace period for filing an application.
Improvement Patent: Refers to a patent that is issued on an application filed later in time than a prior application and tends to build upon the previously disclosed invention or the previously disclosed and claimed invention.
Information Disclosure Statement: A USPTO requirement for the applicant to provide all relevant prior art to the Examining authority at the time of a Patent Application and throughout the course of its prosecution. It is predicated on the belief that the Inventor knows more about the invention as Claimed than does the Examiner. Often abbreviated to IDS. Failure to provide relevant information may invalidate the patent.
Injunction: A court order obligating an offending party to cease doing an illegal act, such as infringing another party’s Intellectual Property Rights.
Intangible Asset: Something of value that cannot be physically touched, such as a brand, franchise, Trademark, Copyright, or Patent. The opposite of a tangible asset.
Integer: A distinct feature or element of a claim.
Inventor: Someone who has a new idea and pursues its development. Inventors apply for patents on their inventions as a part of developing their invention. Many inventors are also product developers, entrepreneurs and businessmen and most inventors find it good marketing practice to sell themselves as product developers or, entrepreneurs or businessman, as the term inventor often having a bad connotation to a business man.
Junior Party: The party in an interference who has the later US filing date.
Know-how: Unpatented technical or commercial information. Can be part of what are considered to be Trade Secrets.
Label license: A statement that the purchase of the labeled goods gives a license to use them in a patented process.
Legal Status: The legal status of a patent publication includes information about events affecting the patent after the initial publication. Examples of legal status include the publication of a Patent, The publication of Equivalent Patents within the Patent Family, Assigments, Licenses, mortgages and most importantly whether the Patent is “in Force”, Lapsed, Expired or if the Patent Term has been Extended.
License: A legal contract given by a licensor to a licensee the right to use a Patented invention, Trademark, Design or Copyrighted work.
Literal Infringement: A term used to refer to an infringing article or process that contains every integer of a claim (literally).
Maintenance fees: Annual fees payable to keep a patent application pending. In the US, maintenance fees must be paid at 3.5, 7.5, and 11.5 years after issuance of a patent in order to keep the patent in force and maintain the exclusive right.
Marking: The placing the word “patent” or “patent pending” or “Patent application” along with the patent number on articles made by the patentee or a licensee. If the patentee fails to mark his or her products, then the patentee may recover only damages for infringement that occurred after the infringer has received actual notice through a charge of patent infringement. Mandatory in some countries before an infringement action can be issued. Also Called Notice.
Marks: a term that refers to the particular words, phrases, logos, symbols, sounds or other unique attributes used by an organization to distinguish its good and services from the goods and services of other organizations.
Mere paper anticipation: Misnomer. Part of Obviousness. An untried paper provisional is of little value.
Merger: The combining of two or more entities into one, through a purchase acquisition or a pooling of financial interests.
Moral rights – rights considered innate to a creator of a work. These rights generally include the right to claim or disavow authorship of a work, the right to object to any modification or use of a work that could be detrimental to the creator’s reputation, and the right to the integrity of a work. Moral rights can be waived but they cannot be transferred. Although they are guaranteed under the Berne convention, many signatories, including the United States, interpret moral rights within their own nation’s very limited national laws.
Moral Rights: Specific rights retained by the author of a copyrighted work to maintain the integrity of a work. Also gives the author the right to be named as the originator or creator of the work even after the copyright to it has been sold.
Multiple Claim Dependency: A dependent claim that further limits and refers back in the alternative to more than one preceding independent or dependent claim. Acceptable multiple dependent claims shall refer to preceding claims using the terms “or, any one of, one of, any of, either.” In the US, a multiple dependent claim may not depend on another multiple dependent claim, either directly or indirectly.
Non Final Office Action: An Office action made by the examiner where the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment.
Non-convention application/filing: An application that does not claim priority from an earlier application, although one exists.
Nondisclosure agreement – a contract in which the parties promise to protect the confidentiality of secret information that is disclosed during employment or another type of business transaction. If you enter into a nondisclosure agreement with someone who uses your secret without authorization, you can request a court to stop the violator from making any further disclosures and you can sue for damages. (From Nondisclosure Agreements. NOLO Plain English Law Centers Encyclopedia, 2003
Non-exclusive license: A license that does not exclude the possibility of further licenses being granted.
Notice of Appeal: A document filed by the applicant in the USPTO to initiate an appeal of an Examiner’s rejection to the Board of Patent Appeals and Interferences.
Novelty: One of the essential conditions for patentability. It is a requirement that what is claimed is new. Novelty is present if no single document discloses every element of the Claimed invention.
Obviousness: Apparent to the averagely skilled man in possession of all the relevant prior art. Prior art may be combined to show that an invention would have been obvious. In ascertaining whether an application is obvious, prior art teachings may be combined or mosaiced. If an invention would have been obvious to a person of only ordinary skill in the art at the time the invention was made, then it is not patentable.
Official action: Communications from the Patent Office examiner raising objections to a patent application. After receiving an adverse office action, the applicant must respond within the set time limits. Six months in the US. A Universal Term.
On Sale: If an inventor places his or her invention on sale more than one year before a US patent application is filed, then a valid patent cannot be obtained. This is sometimes referred to as the on-sale bar to a patent. An invention is on sale where it has actually been sold or an offer of sale has been made.
Orange Book is the common name of “Approved Drug Products with Therapeutic Equivalence Evaluations,” the FDA publication that lists, among others, patents protecting the active ingredient, formulation, and method of use of a drug product.
PAIR: Patent Application Information Retrieval. An excellent USPTO product that provides secure access for customers who want to view current patent application status electronically via the Internet.
Patent: A document issued by the patent office that purports to give an inventor the exclusive right to make, use and sell an invention as specified in the claims of that patent. A patent, which is the mature form of a patent application, consists of drawings of the invention, a specification explaining it, and claims that define the scope of exclusivity. A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.
Patentability: The basic requirements needed to gain monopoly rights. An invention has to be novel, inventive (non-obvious) and capable of being industrially applied (useful).
Patent Application: A document submitted by an inventor requesting to be issued a patent in respect of an invention described in the specification which accompanies the application.
Patent misuse: Any attempt to extend the scope or effect of a patent beyond that granted by law.
Prolixity: Overly worded claims. Repetitious claims.
Prosecution: The process in which an inventor or his lawyer engage with the patent office to obtain a patent and determine the scope of its claims.
Provisional specification: Formerly, a brief description of the invention filed with an application, to be followed by a complete specification.
Reads On: A claim reads on something, if every element of that claim is present in the document with which it is being compared ie reads on. If a claim reads on prior art, then the claim is invalid. A claim must read on an accused device for infringement to occur.
Record: That evidence which is before the court or patent office on which a decision can be made. In a patent prosecution that consists of such things as the inventors’ oath, the patent application, any affidavits submitted, and any prior art.
Reduction to practice: Completion of the inventive act by carrying out the invention and finding a use for it.
Refiling: Abandonment of a first filed application and filing a new application with essentially the same specification.
Reissue: A procedure by which defects in a granted US patent may be corrected on application by the patentee. An application for a patent to take the place of an unexpired patent that is defective in one or more particulars, items, or details.
Rejection: An adverse ruling by an Examiner in an Office Action.
Renewal fee: A fee payable at designated intervals to maintain a granted patent, Registered Trademark or Registered Design in force. If Renewals fees are not paid, the Right is said have lapsed.
Request for Re-examination: A request to the Board of Appeals to reverse its own adverse decision.
Royalty: A payment made for the use of an Intellectual Property Right, such as a Patent, Trademark, Design, Franchise or Copyrighted work. The amount paid is usually a percentage of any revenue obtained through its use.
Senior party: The party in an interference who has the earlier US filing date.
Serial number: A six-figure number allocated to an application on filing.
Shop right: The right of an employer to a free license under a patent belonging to an employee, if the invention was made using the employer’s facilities.
Showing: Evidence of unexpected superiority filed to overcome an objection of obviousness over prior art.
Sole license: A license exclusive except that the patentee retains the right to use the invention.
Species claim: A claim to a single chemical compound, a member of a claimed genus.
State of the art: The total information in the relevant field known to the hypothetical man skilled in the art.
Synergism: What happens when two plus two makes five, that is, greater than the sum of its parts. Generally referred to in Pharmaceutical Inventions where the interaction of two or more compounds gives a super-additive effect.
Tangible Asset: Physical entities, such as cash, equipment, and real estate. For accounting purposes, accounts receivable are also usually considered tangible assets. The opposite of intangible assets.
This type of order for discovery against an innocent party enables a person to discover the identity of any infringer who is manufacturing, importing, supplying or putting the infringing goods into circulation. This type of action is more effective than numerous separate actions against individual retailers.
Trademark: A Trademark is a distinctive sign or word, or combination of signs that identifies (marks) certain goods and services as coming from or being made by a particular person or proprietor. Once Registered, Trademarks may be renewed indefinitely.
Traditional Knowledge: Refers to tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks, names and symbols; undisclosed information; and all other tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields.
Unity statement: The part of the specification that states what the invention is useful for.
USPTO: United States Patent and Trade Mark Office.
Valid: A valid patent is an issued patent that is not invalid for one of several reasons, the most common of which is that one or more of its claims read on prior art that was not considered by the patent office during patent prosecution. While only a court can hold a patent is invalid, many patents are informally referred to as being invalid to indicate that a court would likely rule them so.
WIPO: World Intellectual Property Organization based in Geneva, Switzerland. Administers and Examines PCT applications. By filing one international patent application under the PCT an inventor can simultaneously seek protection for an invention in over 120 Countries and Regions throughout the world.
This list is by no means exhaustive but is pretty inclusive. We are sure with the help of this list, most of your IP related doubts will be taken care of.