| Concept |
Meaning |
| Assignor estoppel |
In United States patent law, an equitable estoppel barring a patent's seller (assignor) from attacking the patent's validity if he/she is found to have infringed that patent later. |
| Chapter I |
In the Patent Cooperation Treaty (PCT), "Chapter I" refers to the prosecution procedure when no demand under Article 31 PCT is made. The states selected under Chapter I by the applicant are called "designated States". [1] |
| Chapter II |
In the PCT, "Chapter II" refers to the prosecution procedure when a demand under Article 31 PCT is made. An international preliminary examination is conducted in this case. The demand indicates the Contracting State or States in which the applicant intends to use the results of the international preliminary examination ("elected States"). [2] |
| Claim |
A sentence defining the extent of the protection conferred by a patent. |
| Clearance search and opinion |
A search done on issued patents or on pending patent applications to determine if a product or process infringes any of the claims of the issued patents or pending patent applications. |
| Defensive publication |
A publication intended to prevent the grant of a patent to a competitor by placing information in the public domain. |
| Defensive termination |
An implicit cross license where the licensor can terminate a patent license if the licensee turns around and sues the licensor for infringing a patent. |
| Design around |
The act of developing an alternative apparatus or method (which may in itself also be a patentable invention), that does not infringe upon an issued patent. Also used as a noun. |
| Disclaimer |
An amendment consisting in limiting a claim by introducing a negative technical feature. |
| Divisional patent application |
A type of patent application which contains matter from a previously-filed application. |
| Doctrine of equivalents |
A legal rule that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention. |
| Essential patent |
A patent that is required to make a certain product is described as essential. |
| Exhaustion of rights |
A legal concept stating that rights in a product are exhausted by its sale. |
| Examination support document or ESD |
According to USPTO patent rules, a document submitted by an applicant that lists prior art and identifies how the prior art applies to the claims in a pending patent application. |
| Filing date |
The filing date of a patent application is the date on which that application is legally accepted at the patent office. That date is typically the date on which the documents are deposited at the office, but may be later if there are defects in the documents. |
| First to file |
A legal concept in which the right to a patent for an invention is determined by the first person to file for a patent to protect that invention, cf. First to invent. |
| First to invent |
A legal concept in which the right to a patent for an invention is determined by the first person to make that invention, cf. First to file. |
| Flash of genius |
A test for patentability formerly used by the United States Federal Courts. |
| Industrial applicability |
A requirement of many patent systems, requiring that an invention be capable of industrial applicability in order for a patent to be granted for that invention. |
| Interference proceeding |
A type of proceedings, particularly at the USPTO, to decide who is entitled to the grant of a patent for an invention. |
| Inventive step |
A patentability requirement according to which an invention should be sufficiently inventive, i.e. non-obvious, in order to be patented. See also non-obviousness. |
| Inventor |
The actual devisor of an invention that is the subject of a patent. |
| Letters patent |
An old term for a patent, sometimes used in reference to a bound formal copy of a patent provided by the USPTO to the inventor upon a patent's issue. |
| Maintenance fee |
A fee to be paid to maintain a patent in force. |
| Non-obviousness |
A patentability requirement according to which an invention should be non-obvious in order to be patented. See also Inventive step. |
| Novelty |
A patentability requirement according to which an invention is not patentable if it was already known before the date of filing. |
| Office action |
A formal report from a Patent Office examiner to an inventor or attorney detailing which claims in a patent application were allowed for later issue (publication) in a patent and which claims were rejected. The examiner gives reasons for allowance or rejection. |
| On-sale bar |
A concept of US law in which the grant of a patent is prevented if the invention that is the subject of the patent application was on sale more than one year prior to the priority date. |
| Opposition proceeding |
Proceedings in which a third party opposes the grant of a patent in an attempt to prevent that grant, or have the patent revoked. |
| Patent classification |
Classification of patents in technological areas for convenient retrieval during prior art searches. |
| Patent family |
A group of patents related by a common priority claim. |
| Patent flooding |
Patenting every possible way of doing something. |
| Patent infringement |
Commercially exploiting an invention claimed in a patent without permission of the patentee. |
| Patent misuse |
In United States patent law, an affirmative defense used in patent litigation after the defendant has been found to have infringed a patent. |
| Patent model |
A miniature model that shows how an invention works. |
| Patent pending |
A term used to describe an invention for which a patent application is pending at a patent office. Used to mark products to alert people to the possible existence of a patent, thereby initiating the date from which damages may be claimed. |
| Patent pool |
A consortium of at least two companies agreeing to cross-license patents and other IP rights relating to a particular technology. |
| Patent thicket |
A dense web of overlapping intellectual property rights that a company must navigate through in order to commercialize new technology. [3] |
| Patent troll |
Pejorative term for patent holding company. |
| Patent watch |
A process for monitoring newly issued patents on a periodic basis to see if any of these patents might be of interest. |
| Patentability |
A set of substantive requirements for a patent to be granted. |
| Patentable subject matter |
Patent systems exclude certain areas from the grant of patents. Material not so excluded is known as patentable subject matter. |
| Person having ordinary skill in the art |
A hypothetical person having typical knowledge of a particular field or art, used such as to assess whether an invention is nonobvious or whether the specification of the patent enables one to practice what is claimed. |
| Petition to make special |
A United States patent law procedure that requests the U.S. Patent and Trademark Office to accelerate a patent's prosecution, based on a showing that certain conditions are met. For example, if the inventor is old or sick, or the field of invention is a favored area of science that significantly enriches people's lives, The U.S. PTO may allow such a petition. |
| Piracy |
Pejorative term. Generally refers to the willful infringement of a patent. May also be applied to the vigorous enforcement of a patent. |
| Prior art |
Material publicly available prior to the priority date of an application which may anticipate the subject of and prevent the grant of a patent. |
| Priority right |
The priority right is a right to claim priority from an earlier application. Claiming priority gives the later filed application a priority date of the filing date of the earlier application. |
| Prosecution history estoppel |
In certain states actions during prosecution can estop a party from certain later actions or assertions. |
| Provisional rights |
The rights conferred to a published or non-published patent application, i.e. the rights conferred before the patent is granted. See also U.S. patent law, 35 USC 154(d). |
| Reasonable and Non Discriminatory Licensing |
A type of licensing typically used during standardisation processes. |
| Reduction to practice |
In United States patent law, making or performing an invention (actual reduction to practice) or filing a patent application describing how to make and use an invention (constructive reduction to practice). Important for determining which party is "first to invent". |
| Reexamination |
The examination of a granted patent, which can result in the revocation of that patent. |
| Research exemption |
In some legislations, an exemption to the rights conferred by patents, pursuant to which performing research and tests for preparing regulatory approval does not constitute infringement for a limited term before the end of patent term. |
| Restitutio in integrum |
Is a term used in the European Patent Convention with regard to the re-establishment of rights following the inadvertent loss of an application. |
| Submarine patent |
A patent first published and granted long after the original application was filed. |
| Sufficiency of disclosure |
An important requirement to be met by a patent in order to be validly granted. According to this requirement, an invention must be described in the application or patent in a sufficiently clear and complete manner to enable the person skilled in the art to carry out the invention. |
| Supplementary protection certificate |
A sui generis right available for medicinal and plant protection products. The right comes into force after the corresponding patent expires and has a maximum life time of 5 years. |
| Swear back of a reference |
A procedure under US patent law whereby an inventor can get a patent even if the invention has become public before the patent application was filed. |
| Term of patent |
The maximum period during which it can be maintained in force. |
| Transfer |
An operation by which ownership of a patent or patent application changes (for instance as a result of a financial transaction). |
| Unity of invention |
A requirement that a patent application can relate only to one invention. |
| Utility |
A patentability requirement mainly used to prevent the patenting of inoperative devices such as perpetual motion machines. |
