List of patent legal concepts
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This is a list of legal concepts relating to patents, including special types of patents and patent applications (see end of page).
| Contents: | A B C D E F G H I J K L M N O P Q R S T U V W X Y Z |
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A
Annuity fee
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Main article: Maintenance fee (patent)
A fee to be paid to maintain a patent in force.
Assignor estoppel
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Main article: 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.
Auslegeschrift
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Main article: Auslegeschrift
In German patent law, the second reading, or publication, of a patent application.
C
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
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Main article: Claim (patent)
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. See Patent infringement.
Compulsory license
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Main article: Compulsory license
Using compulsory licenses, a government may force a patent proprietor to grant use to the state or others. Usually, the holder does receive some royalties, either set by law or determined through some form of arbitration.
D
Defensive publication
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Main article: Defensive publication
A publication intended to prevent the grant of a patent to a competitor by placing information in the public domain.
Defensive termination
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Main article: 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
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Main article: 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
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Main article: Disclaimer (patent)
An amendment consisting in limiting a claim by introducing a negative technical feature.
Divisional patent application
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Main article: Divisional patent application
A type of patent application which contains matter from a previously-filed application.
Doctrine of equivalents
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Main article: 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.
Double patenting
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Main article: Double patenting
The protection of one single invention by two patents usually owned by the same proprietor.
E
Essential patent
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Main article: Essential patent
A patent that is required to make a certain product is described as essential.
Exhaustion of rights
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Main article: Exhaustion of rights
A legal concept stating that rights in a product are exhausted by its sale.
Examination support document
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Main article: Examination support document
According to USPTO patent rules, the examination support document (ESD) is 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.
F
Filing date
The filing date of a patent application is the date the patent application was filed in one or more patent offices, i.e. 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. See also Priority right.
In the United States, if a patent application is mailed to the United States Patent and Trademark Office (USPTO) by Express Mail, Post Office to Addressee, then the date the application was deposited in the post office is the filing date.[citation needed]
First to file
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Main article: First to file and first to invent
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
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Main article: First to file and 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
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Main article: Flash of genius
A test for patentability formerly used by the United States Federal Courts.
Further medical use
See Second medical use.
I
Industrial applicability
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Main article: 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.
Information disclosure statement
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Main article: Information disclosure statement
In United States patent law, a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during patent prosecution.
Interference proceeding
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Main article: Interference proceeding
A type of proceedings, particularly at the USPTO, to decide who is entitled to the grant of a patent for an invention.
Invention disclosure
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Main article: Invention disclosure
A confidential document written by a scientist or engineer for use by a company's patent department, or by an external patent attorney, to determine whether patent protection should be sought for the described invention.
Invention promotion firm
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Main article: Invention promotion firm
A firm providing services to inventors to help them develop or market their inventions.
Inventive step
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Main article: Inventive step and non-obviousness
A patentability requirement according to which an invention should be sufficiently inventive, i.e. non-obvious, in order to be patented.
Inventor
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Main article: Inventor (patent)
The actual devisor of an invention that is the subject of a patent.
L
Letters patent
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Main article: 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.
M
Machine-or-transformation test
A criterion in United States patent law, according to which a claimed process is patent-eligible (under § 101) if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See also: in re Bilski.
Maintenance fee
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Main article: Maintenance fee (patent)
A fee to be paid to maintain a patent in force.
Markman hearing
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Main article: Markman hearing
A pre-trial hearing in the United States court system during which a judge hears testimony from both parties on the appropriate meanings of the relevant key words used in the claims of a patent, the infringement of which is alleged by the plaintiff.
McKesson Reference
In United States patent law, an Information Disclosure Statement (IDS) reference to a communication with a patenting authority (e.g. office action response, or notice of allowance) in a related patent application. Based on the McKesson v. Bridge Medical[3] decision where inequitable conduct was found where the applicant failed to notify the USPTO of such references. See also Inequitable conduct.
Marlow Reference
In United States patent law, an IDS reference to a court document (e.g. memorandum opinion, or a court order) pertaining to a litigation involving an application or a related patent/application. Based on the Marlow Industries, Inc. v. Igloo Products Corp.[4] decision where the court found that the applicant had a duty to notify the USPTO of such references. See also Inequitable conduct.
N
National phase
The prosecution phase wherein an international application filed under the Patent Cooperation Treaty (PCT) becomes subject to examination at a national level.
Non-obviousness
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Main article: Inventive step and non-obviousness
A patentability requirement according to which an invention should be non-obvious in order to be patented.
Novelty
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Main article: Novelty (patent)
A patentability requirement according to which an invention is not patentable if it was already known before the date of filing.
O
Office action
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Main article: 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
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Main article: 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
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Main article: 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. Opposition proceedings may be pre- or post-grant.
P
Patent ambush
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Main article: Patent ambush
A patent ambush occurs when a member of a standard-setting organization withholds information, during participation in development and setting a standard, about a patent that the member or the member's company owns, has pending, or intends to file, which is relevant to the standard, and subsequently the company asserts that a patent is infringed by use of the standard as adopted.[5][6]
Patent caveat
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Main article: Patent caveat
Formerly, in United States patent law, a legal document filed with the United States Patent Office.[7] Caveats were discontinued in 1909. A caveat was like a patent application with a description of an invention and drawings, but without claims. It was an official notice of intention to file a patent application at a later date.
Patent classification
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Main article: Patent classification
Classification of patents in technological areas for convenient retrieval during prior art searches.
Patent family
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Main article: Patent family
A group of patents related by a common priority claim.
Patent flooding
Patenting every possible way of doing something.
Patent infringement
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Main article: Patent infringement
Commercially exploiting an invention claimed in a patent without permission of the patentee.
Patent misuse
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Main article: 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
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Main article: Patent model
A miniature model that shows how an invention works.
Patent pending
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Main article: 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
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Main article: Patent pool
A consortium of at least two companies agreeing to cross-license patents and other IP rights relating to a particular technology.
Patent portfolio
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Main article: Patent portfolio
A collection of patents owned by a single entity, such as an individual or corporation.
Patent thicket
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Main article: Patent thicket
A dense web of overlapping intellectual property rights that a company must navigate through in order to commercialize new technology. [8]
Patent troll
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Main article: Patent troll
Pejorative term for patent holding company.
Patent watch
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Main article: 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
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| Patentability |
| Inventorship Patentable subject matter Novelty Utility Industrial applicability Prior art Person skilled in the art |
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Main article: Patentability
A set of substantive requirements for a patent to be granted.
Patentable subject matter
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Main article: 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
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Main article: 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
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Main article: 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
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Main article: Patent infringement#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
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Main article: 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
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Main article: 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.
Problem-solution approach
Under the case law and practice of the European Patent Office (EPO), an approach to assess whether an invention involves an inventive step. See Inventive step under the European Patent Convention (EPC).
Prosecution history estoppel
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Main article: 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).
R
Reasonable and Non Discriminatory Licensing
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Main article: Reasonable and Non Discriminatory Licensing
A type of licensing typically used during standardisation processes.
Reduction to practice
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Main article: 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
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Main article: Reexamination
The examination of a granted patent, which can result in the revocation of that patent.
Regional phase
The prosecution phase wherein an international application filed under the Patent Cooperation Treaty (PCT) becomes subject to examination at a regional level. There are four regional patent treaties: the European Patent Convention, the Eurasian Patent Convention, the Bangui Agreement (see African Intellectual Property Organization or OAPI), and the Harare Protocol (see African Regional Intellectual Property Organization or ARIPO). See also National phase.
Research exemption
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Main article: 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
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Main article: Restitutio in integrum#Patent law
Is a term used in the European Patent Convention with regard to the re-establishment of rights following the inadvertent loss of an application.
S
Sandor Obviousness
In United States patent law, an obviousness rejection based on a single reference. Generally a case for an obviousness rejection requires the examiner to rely on 2 or more references. Sandor Obviousness stems from Ex Parte Sandor Nagy[9] where the examiner relied on only a single reference to reject the claims at issue. Ultimately the case was remanded on appeal back to the examiner.
Second medical use
The patenting of a particular medical use of a molecule (or more generally product or composition), wherein a first particular use of a molecule is already known and, therefore, wherein the novel and inventive aspect lies solely in the second use of the molecule. Also known as further medical use.
Small entity status
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Main article: Small entity status
In United States patent law, a status allowing small businesses, independent inventors, nonprofit organizations to file a patent application and maintain an issued patent for a reduced fee.
State of the art
A synonym for prior art.
Submarine patent
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Main article: Submarine patent
A patent first published and granted long after the original application was filed.
Sufficiency of disclosure
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Main article: 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
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Main article: 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
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Main article: 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.
T
Technical character
A condition for an invention to be considered patentable under the case law and practice of the European Patent Office (EPO). Namely, an invention must notably have a technical character to be patentable. See Software patents under the European Patent Convention.
Term of patent
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Main article: Term of patent
The maximum period during which it can be maintained in force.
Transfer
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Main article: Transfer (patent)
An operation by which ownership of a patent or patent application changes (for instance as a result of a financial transaction).
U
Unity of invention
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Main article: Unity of invention
A requirement that a patent application can relate only to one invention.
Utility
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Main article: Utility (patent)
A patentability requirement mainly used to prevent the patenting of inoperative devices such as perpetual motion machines.
X
X-Patent
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Main article: X-Patent
Patent issued by the United States Patent and Trademark Office between July 1790 (when the first U.S. patent was issued) and July 1836.
Special types of patents and patent applications
- Biological patent
- Business method patent
- Chemical patent
- Design patent
- Patent application
- Continuing patent application (incl. continuation, divisional and continuation-in-part) for instance under United States patent law
- Kokai (published, unexamined Japanese patent application)
- Kokoku (examined and approved Japanese patent application)
- Provisional application under United States patent law
- Software patent
- Utility model
- Gebrauchsmuster (German and Austrian utility models)
References
- ^ Article 4(1)(ii) PCT and Article 2(xiii) PCT.
- ^ Article 31(4)(a) PCT and Article 2(xiv) PCT.
- ^ McKesson v. Bridge Medical
- ^ Marlow Industries, Inc. v. Igloo Products Corp., 2002 WL 485698 (N.D. Tex. 2002)
- ^ "Telecom standards face patent ambush threat". ZDNet (2005-06-15). Retrieved on 2007-08-30.
- ^ "Antitrust: Commission confirms sending a Statement of Objections to Rambus". European Commission (2007-08-23). Retrieved on 2007-08-30.
- ^ Patent Act of 1836
- ^ Carl Shapiro, Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, 2001, Innovation Policy and the Economy (Vol. I) (Jaffe, E. et al., eds), pp. 119–150, MIT Press.
- ^ Ex Parte Sandor Nagy Opinion
See also
External links
- Glossary at the Deutsches Patent- und Markenamt (DPMA), (German Patent and Trade Mark Office)
- Glossary at the European Patent Office (EPO)
- Glossary of patent terms at the United States Patent and Trademark Office (USPTO)
- PCT (Patent Cooperation Treaty) Glossary at the World Intellectual Property Organization (WIPO)
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