Way Better Patent's alphabetical list of terms, words, jargon, patentspeak, concepts, and buzzwords about patents and intellectual property.
Abandonment — The process where a patent application or a patent is declared abandoned or "dead" at the USPTO. There are two types of abandonment: 1) the abandonment of a patent applicaton; and 2) the abandonment of an invention.
Abandoned Invention — An invention is considered abandoned if the assignee fails to pay the required period maintenance fees causing the patent to expire. Abandoned inventions are no longer protected so that anyone can create the invention defined in the abandoned patents. Be warned, there are lots of rules amd processes that allow the assignee on an abandoned patent to reinstate an abandoned patent. It's important to ensure a patent is really dead before you use the invention disclosed in the patent.
Abandoned Patent Application — An applicant's failure to respond to correspondence from the USPTO. A patent application often becomes abandoned for failure to file a complete and proper reply to a USPTO action within 6 months. After the USPTO examiner reviews your patent application, the Examiner may send an "Office Action Letter" that points out any incorrect claims or other problems. The Inventor must then make corrections and/or appeals to keep the patent prosecution process going. Applications where a timely response has not been received are abandoned by USPTO.
Abstract — A concise statement of the technical disclosure of a patent including what is new in the patent or patent application. Abstracts are supposed to be 150 words long. USPTO routinely ignores this rule when the subject matter in a patent is chemical or biological. The purpose of the abstract is to enable the United States Patent and Trademark Office and the public to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
Applicant — A patent applicant is either the First Named Inventor on a patent application or the Assignee named on a patent application. In the United States only inventors can apply for patents unless the inventor is deceased or incapacitated.
Application Numbers — Patent Application Numbers start with a two digit series number and a six digit serial number. Series numbers increase when the six digit serial number hits 999999.
Application Publication Numbers — Each year the numbering of published patent applications will begin again with the new four digit year and the number 0000001, so the number of a patent application publication must include an associated year.
Assignee — The name of the inventor(s) or entity - company, foundation, partnership, holding company or individual- that owns the patent.
Business Methods Patents — Business method patents cover machines and methods for performing data processing or calculation operations in the practice, administration or management of an enterprise, or processing of financial data, or determination of the charge for goods and services.
Claim — A single sentence that describes an invention as defined in the specification of a patent application. A claim starts with a capital letter and ends with a period. USPTO's definition of a claim is more formal. According to USPTO, a claim defines the invention and the aspects of it that are legally enforceable. The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable (clearly understood ) by reference to the description. (See 37 CFR § 1.58(a)).
Class — A major subject matter division in the United States Patent Classification (USPC) system. A class generally delineates one technology from another. Every class has a unique alphanumeric identifier. A class/subclass pair of identifiers uniquely identifies a subclass within a class (for example, the identifier "2/456" represents Class 2, Apparel, subclass 456, Body cover).
Classification — A collection of documents is defined as a set of documents sharing a common classification. A classification assigned to a document associates the document to the class and subclass identified by the classification. Documents are "classified in a subclass" if a classification corresponding to the unique subclass has been assigned to it. A document may be a member of more than one collection, i.e., it may have more than one classification assigned to it. Classifications are assigned to documents based on disclosure in the document.
Continuing Patent Applications — There are three types of continuing patent applications: 1) a continuation; 2) a continuation-in-part; and, 3) a divisional.
Continuation — A continuation application is a patent application filed by an applicant who wants to pursue additional claims to an invention disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims the priority based on the filing date of the parent, and must name at least one of the inventors named in the parent application. A continuing patent application claims the priority date of the earlier patent it evolves from.
Continuation-In-Part — A continuation-in-part application (CIP or CIP application), claims priority based on the filing date of the parent patent application. In this application the applicant adds subject matter not disclosed in the parent, but repeats substantial portion of the parent's specification, and shares at least one inventor with the parent application. Continuation-in-Part applications are used heavily in the pharmaceutical industry.
Cooperative Patent Classification — The Cooperative Patent Classification (CPC) effort is a joint partnership between the USPTO and the EPO to harmonize their existing classification systems (ECLA and USPC, respectively) and migrate towards a common classification scheme. This is a strategic decision by both offices and is seen as an important step towards advancing harmonization efforts currently being undertaken through the IP5’s Common Hybrid Classification (CHC) project. The migration to CPC will be developed based in large part on the existing European Classification System (ECLA) and will be modified to ensure compliance with the International Patent Classification system (IPC) standards administered by the World Intellectual Property Organization (WIPO). Time will tell if USPTO and EPO have not created yet another classification tht confounds regular non-patent pro users.
Cross Reference Patent Classifications — Cross reference patent classifications are classifications that indicate that an invention has elements reflected by the additional patent classifications that appear to the right of the Original Classification. USPTO refers to these classifications as XRs.
Defensive Publication — Defensive publication or disclosure is an intellectual property strategy where firms release information about their innovations and discoveries rather than seeking to patent the innovation. This strategy prevents others from obtaining patents on the innovation. The company discloses technical and scientific information about the invention to the public. The information then becomes prior art preventing others from obtaining a patent on the information that has been disclosed. While in the public domain, these disclosures are not always easy to find.
Dependent Claim — A claim that refers back to (depends on) and further limits a preceding dependent or independent claim.
Design Patent — Design patents cover the appearance of an article.
Design Patent Claim — A design patent has only one claim.
Design Patent Numbers — Design patent numbers begin with a "D" followed by a six digit number. The first Design Patent was issued in 1843.
Design Patent Term — Design patents are valid for 14 years after the date they are issued (grant date).
Divisional Patent Application — A patent can only describe one invention. A divisional patent application occurs when a patent examiner determines that a patent application describes more than one invention. The original patent application is "divided" into a new application referred to as a divisional patent application. A divisional application has the same filed date as the original application. A Divisional Application need not name any of the inventors named in the parent application.
Double Patenting — Granting two patents for the same invention.
Drawing — Patent drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete. Drawings are only required if drawings are necessary for the understanding of the subject matter sought to be patented.
Enforceable Patents — Patents that have not expired. Patents are enforceable if they have not expired. Utility patents are enforceable if they have not expired and all of their patent maintenance fees are kept current.
Espacenet — The search tool of the European Patent Office.
Essential Patent — An essential patent is a patent that defines a technology that is essential to building products that conform to an industry standard. Since building products that conform to a standard would infringe an essential patent, holders of essential patents offer licenses to the patents under fair and reasonable and nondiscriminatory (FRAND) where all manufacturers pay the same license fees.
Evergreening — The extension of drug patents by making minor changes in existing inventions and filing for new patents which extend the expiration date of the original invention.
Evidence of Use — Evidence of use (EoU) is an investigation undertaken to document how a product or service aligns with a patented invention. The analysis can focus on how an operating company uses its own invention, how a potential infringer's products and services use the patented invention. Evidence of use investigations are a key component in activities to determine how specific products and markets overlap with patented inventions for the purpose of developing licensing pricing or to determine damages in patent infringement lawsuits. Business people facing requests from patent assertion entities often ask to see the results of the evidence of use investigation as part of licensing discussions. EoUs usually include sophisticated claim charts that map the elements of a patent claim to the elements of a product or service.
Examiner — The expert at USPTO who reviews a patent application and determines if a patent should be granted to an inventor for the invention disclosed in a patent application.
Examiner Cited Prior Art — Prior art a patent examiner identifies and adds to a patent examination during patent prosecution.
Examiner Corps — Examiner Corps refers to the patent examiners working at the USPTO.
Examiner Life Time Average Pendency — The average pendency for all patents a patent examiner has examined over their career.
Fair, Reasonable, and Non-Discriminatory— FRAND — A concept in intellectual property law that some patents are essential and need to be licensed to make other technology work. FRAND is the royalty paid by all parties that need to license the technology covered by a patent. FRAND is a term used when describing the licensing of "essential patents" associated with development of standards.
Field of Search — The list of classes and subclasses of patents searched by the patent examiner during the examination of a patent application.
Filed Date — The date a patent application was filed with the USPTO. The Filed Date is used to determine the term of a patent.
First Named Inventor — The first inventor on a patent application. The first named inventor is the applicant when more than one inventor is identified on a patent application. The first named inventor is the Assignee (owner) if the patent application doesn't include an assignee.
First Office Action — The first official communication between a patent applicant and the USPTO patent examiner charged wtih reviewing the patent application. See Office Action.
Geographic Index of Inventors — This index lists issued patent numbers for the week by the state or country of the inventor. It is published weekly as part of the Official Patent Gazette.
Grant Date — The date a patent was issued by the USPTO. Grant dates are always on Tuesday.
Group Art Unit — (AU, GAU or Grp Art Unit on Office Action correspondence) — A working unit of patent examiners responsible for a cluster of related patent art. Each Art Unit is staffed by one supervisory patent examiner (SPE) and a number of patent examiners who determine patentability on applications for a patent. Group Art Units are currently identified by a four digit number, i.e., 1642.
Image File Wrapper (IFW) — The image file wrapper is the electronic file that contains all of the documents filed as part of a patent application or added by the examiner during the prosecution of a patent application.
Independent Claim — A claim that stands by itself, a claim that does not refer back to or depend on another claim.
Indicia of Extortion — filing nearly identical patent infringement complaints against a plethora of diverse defendants where the plaintiff follows each filing with a demand for a quick settlement at a price far lower than the cost to defend the litigation. The term was used by Judge Lourie in the CAFC decision in Eon-Net LP v. Flagstar Bancorp.
Individual Inventors — Inventors who "own" their own patents. The First Named Inventor on a patent becomes the assignee if no assignee is identified on the patent application. Inventors can be practing entities and non-practicing entities.
Informationization — Informationization refers to the process by which information technology — computers, software, the internet, semiconductors, smartphones — have transformed the economic and social elements of society to such an extent that cultural and economic barriers are minimized. Informationization has in turn changed the nature of invention and innovation and blurred the boundaries of what actually constitutes an invention.
International Patent Classification (IPC) — The system of patent classifications published by the World Intellectual Property Organization (WIPO). Most countries other than the United States use the IPC to classify their patents.
Inventor Life Time Average Pendency — The average pendency for all patents a patents granted to an inventor over their career.
IP5 — The five largest intellectual property offices: European Patent Office (EPO); Japan Patent Office (JPO); Korean Intellectual Property Office (KIPO); State Intellectual Property Office of the People's Republic of China (SIPO); and the United States Patent and Trademark Office (USPTO).
Joint Research Agreement (JRA) — A written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
Kind Codes — Kind Codes define the kind of patent and application publications a document is.
Maintenance Fees — Maintenance fees on utility patents in the United States are due 3½, 7½ and 11½ years after grant of the patent. There are no maintenance fees for design or plant patents.
Manual of Patent Examination Procedures (MPEP) — The rules followed by US patent examiners throughout the patent prosecution life cycle. Link to MPEP at USPTO.
Negative Know-How — Negative know-how is the term used to define methods and processes that don't work. Companies consider negative know-how to be trade secrets because knowing what doesn't work is just as important as knowing what does work.
Non-Patent Reference — Publications and printed media cited by either the inventor or the patent examiner to define the prior art to the invention described in a patent application or granted patent. When an examiner adds a specific patent or non-patent reference to a patent application, that reference is followed by an asterisk (*) on the face of the published granted patent. The asterisk only appears on the printed and PDF version of the patent but not in the full text database at USPTO.
Non-Practicing Entities (NPEs) — Organizations that invent things but don't make things. The most common NPE is a research university. Universities and research institutes patent their discoveries and then license the patent to a Practicing Entity to make the products that are covered by the university's patents. Licensees for university patents may include corporations and university spin-out companies. The other type of NPE is referred to as a Patent Assertion Entity. Patent Assertion Entities buy patents as an asset and enforce them against practicing entities to generate revenue and profits for the firm. Patent Assertion Entities can be referred to as "Patent Trolls"
Office Action — An Office Action is written notification of patent examiner's decisions on a patent application or reexamination. Office Actions are normally sent to the attorney or agent of record on a patent application. Patents are rarely granted based on an initial applications. Office Actions are sent to applicants defining the reasons for any adverse action or any objections or requirement are contained in Office Actions. Some of the reasons for an Office Action include claims not directed to patentable subject matter; inventions that lack novelty or are deemed to be obvious in light of prior art. The First Office Action occurs after the examiner has done a thorough review of a patent application. An important measure of patent pendency time is the time between when a patent application is filed and when an applicant receives the First Office Action.
Original Classification (OR) — The primary classification assigned to a patent at the time it is granted. This classification is called the OR classification. It appears in bold on the face of a published patent.
Patent — A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally the term of a patent is 20 years from the date on which the applicaton for the patent was filed in the US, or in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are only in effective within the US, US territories, and US possessions. Under certain circumstances, patent terms extensions or adjustments may be available.
Patent Assertion Entities (PAEs) — A type of Non-Practicing Entity. Organizations that buy patents as an investment and assert (enforce) them. PAEs find companies that they believe make products covered by the patents they ownand make the companies license the technology. PAEs also sue companies they believe are infringing their patents to collect royalties. Patent Assertion Entities are often referred to by the pejorative term "Patent Troll." PAE is a term coined by the Federal Trade Commission to uniquely identify organizations that use patents as an asset and to discriminate them from other Non-Practicing Entities such as universities, research institutes, and others who create inventions, get patents and license the patents to other firms who create new products.
Patent Cliff — A term used to describe the impact and disruption caused when companies and industries loss monopoly patent protection associated with the expiration of one or more patents. Patent cliff discussions appear frequently in news about the pharmaceutical industry.
Patent Exhaustion — The concept of patent exhaustion says that if a supplier licenses a patent to build it into a product, the patent holder doesn't get to double/triple/quadruple collect, by demanding licenses from everyone up and down the supply chain. Patent exhaustion has been an important concept in the smartphone patent wars where Apple and Google have licensed patented technology and included it in their developers products. Developers who used the products are now being sued by patent assertion entities who also want to collect royalties from the developers using Google and Apple developers tools
Patent Family — A set of patents granted in different countries to protect the same invention. The patents in a patent family may be similar but not identical because each country has its own rules for determining which inventions are entitled to a patent. The most common patent families are triadic patent famlies where patents are issued in Europe, Japan, and the United States. USPTO recently added patent family to the data that appears in the full-text digital version of patents.
Patent Monetization Entity — GAO in its analysis of patent litigation under the America Invents Act (AIA) extended the definition of patent assertion entity to add a new level of discrimination. GAO notes, "the Federal Trade Commission uses the related term “patent assertion entities” to focus on entities whose business model solely focuses on asserting typically purchased patents. As such, the PME term also encompasses entities that might use third-party NPEs to assert patents for them." Basically when an operating company that owns patents and makes products creates a separate business entity (company) to enforce its patents and make money from them, that business is a patent monetization entity.
Patent Pool — Patent pools aggregate intellectual property, usually patents, from different rights owners (inventors, assignees) and licenses the patents as a group. This help prevent R&D advances from being blocked by a single rights-holder.
Patent Prosecution — The process of filing and obtaining a patent.
Patent Reference — A reference to a granted patent or a published patent application identified by an inventor as prior art. Patent references that appear as prior art on a granted patent are called citations.
Patent Troll — A pejorative term used to describe organizations that buy and hold patents for the purposes of extracting licensing fees from companies that make the products or deliver services that are covered by the patents they own. See Non-Practicing Entity and Patent Assertion Entity.
Pendency — The time from when an application is filed at the USPTO and when a final grant or rejection decision is made by the patent examiner. Pendency is usually measured in months.
Per Se Inventor — An independent inventor or group of inventors who file a patent application without a patent agent, patent attorney, or patent law firm.
Person of Ordinary Skill In the Art —The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention.
Plant Patent — Plant Patents are granted by the Government to an inventor who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. If you've ever eaten a pluot, you've enjoyed the fruit of a plant patent.
Plant Patent Numbers — Plant patent numbers begin with a "PP" followed by a five digit number. The first Plant Patent was issued in 1931.
Plant Patent Term — Plant patents are valid for 20 years from the filing date.
Practicing Entity — An organization that owns patents and makes the products defined in the patents they own or license from others.
Practicing an invention — Using, making, or selling products based on an invention.
Pre-Grant Publication (PGPub) — The publication of a patent application. Patent applications are published 18 months after the filing date unless an applicant files a request to keep the application private. Applicants may request that USPTO publish their applications BEFORE the 18 month period. Utility and Plant patent applications are published. Because Design patent applications are usually issued in less than a year, design patents are usually not published. Applications that are no longer pending; subject to a secrecy order; or a provisional patent application are not published. Pre-grant publication of patent applications occurs on Thursdays.
Prior Art — All information that has been made available to the public in any form before a given date that is relevant to a patent claim's originality. Prior art is the state of the art before the patent applicant's invention.
Priority Date — The priority date, sometimes called the "effective filing date", is the date used to establish the novelty and/or obviousness of a particular invention relative to other art. This is the date used to determine which prior art will impact a new patent application.
Provisional Patent Application - A provisional patent application is a "placeholder" filed by an inventor. The provisional patent application can be filed with out claims and abbreviated information. The inventor has 12 months to send in a completed standard patent application. The provisional patent application enables an inventor to establish a filed date while the regular patent application that includes the claims is finalized. The 12 month period cannot be extended.
Provisional Patent Numbers — Provisional patent applications begin with 60, 61, or 62. The format for this field is 60, 61 or 62/###,###.
Quadrilateral Patent Family — Patents granted in the Chinese Patent Office (SIPO), the European Patent Office (EPO), the Japanese Patent Office (JPO), and the United States Patent Office (USPTO).
Reexamination — Any person may file a request for reexamination of a patent, along with the required fee, on the basis of prior art consisting of patents or printed publications. At the conclusion of the reexamination proceedings, a certificate setting forth the results of the reexamination proceeding is issued. Reexaminations are signified by a Cn (C1-9) Kind Code suffix after the original patent number followed by the number of the reexamination certificate, for example, 5,480,218 C1 (4328th).
References Cited By Examiner — Patent and Non-Patent Literature appears at the beginning of a granted patent. When the reference is followed by an asterisk (*) it indicates that these references were listed by a patent examiner on a "Notice of References Cited" (PTO-892) that was sent to the inventor during patent prosecution. USPTO began the practice of identifying references cited by the examiner on patents printed after January 1, 2001. Before that date, there was no distinction on the granted patent to indicate which references came from the inventor and which came from the patent examiner.
Reissue Patent — Reissue patents start with patent numbers beginning with RE. A Reissue occurs 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. The inventor 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. An inventor can ask for broader claims than those which were in the issued patent but cannot use a reissue to try to add anything back (recapture) into the claims that was given up to get the patent in the first place. - Also see Reexamination.
Request for Continued Examination (RCE) — A request for continued examination (RCE) is a request by an inventor for continued prosecution after the patent office has issued a Final Office Action for a patent. The Final Office Action can be either a Notice of Allowance which means that a patent will be granted for the application or a Final Rejection which means that the USPTO has rejected the patent application. The inventor pays an additional filing fee and continues to argue his case with the patent examiner. No RCE was allowed prior to June 8, 1995.
Supplemental Complex Repository for Examiners (SCORE) — The official USPTO repository for complex application data — biosequences, mathematical data, design drawings, 3-D protein crystal data, chemical drawing files, search results, etc. Includes biosequence data since 2005.
Search Templates — Search templates define the field of search, search tools, and search methodologies which should be considered each time a patent application is examined in that classification area. The templates describe search tools for U.S. and foreign patents and non-patent literature. Additionally, general Internet search tools used by patent examiners are listed. The search templates are based upon input from patent examiners and other searchers at the USPTO and capture their institutional knowledge of the most relevant prior art search sources for determining the patentability of subject matter in the area of technology. The listed areas represent where (what resources) and how (methodology) most of the prior art considered in the examination process is found during the search process.
Small Entity — Small Entity Designation applies to independent inventors, small businesses, and non-profit organizations. Universities are non-profit organizations and are considered small entities by the USPTO. One indication that a university has licensed its technology is a patent with a university assignee that does NOT have small entity status.
Specification — The written description of the invention and the manner and process of making and using the claimed invention.
Standard Setting Organization — A Standard Setting Organization (SSO) is an industry group that sets a standard for a particular industry or product in order to ensure compatibility and interoperability of devices manufactured by different entities. The Institute of Electrical and Electronics Engineers (IEEE) sets the standards for netowrk connectivity for example. A SSO is also referred to as a Standards Development Organization (SDO).
Statutory Invention Registration (SIR) — A StatutoryInvention Registration is the defensive publication of a patent application designed to prevent others from obtaining a patent on an invention. An SIR is not a patent. An applicant for an original patent may request, at any time during the pendency of applicant's pending complete application, that the specification and drawings be published as a statutory invention registration. The America Invents Act of 2011 repeals the SIR effective March 16, 2013.
Submarine patents — Patents where the inventor delays the issuance and publication of a patent for long periods of time until a market for the invention develops at which time the patent holder accelerates the patent grant process and then sues company using, making, or selling the invention for royalties. A submarine patent is described as a "dangerous" patent stays below the water popping up to sure unexacting companies. Amendments in patent law to change the period a patent is enforceable from 18 years from the grant date to 20 years from the filed date were a way to combat the use of submarine patents. The term submarine patents is resurfacing in the world of patent assertion entities (PAEs), firms that buy and enforce patents, to describe the delay between the time a patent is granted and when the PAE or other entity seeks to enforce the patent.
Substantial New Question of Patentability (SNQ) — A substantial new question of patentability (SNQ) is raised as part of a patent reexamination. The person requesting the reexamination presents prior art in a new light suggesting that the examiner may not have reviewed the art in this way. Determinations on whether a SNQ exists is based upon a fact-specific inquiry done on a case-by-case basis by the USPTO. For example, an SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of a material new argument or interpretation presented in the request. (Patent-speak for finding new prior art that wasn't disclosed before and asking the USPTO to reconsider whether they would have granted the patent had they been aware of this prior art and this way of looking at it.)
Teach — An inventor is granted an exclusive right to their invention in exchange for teaching others skilled in the art how to make their invention by way of the information in the patent. With respect to prior art, teach is defined as informing and instructing by way of the documents making up the prior art. The prior art references teach the technology disclosed in them or revealed by them.
Title — The title of a patent. The title of the invention may not exceed 500 characters in length and must be as short and specific as possible. Characters that cannot be captured and recorded in the Office's automated information systems may not be reflected in the Office's records in such systems or in documents created by the Office. (This is USPTO speak for, "our system can't handle special characters so you've been warned. If you use them they won't show up in our systems or on your patent documents.")
Triadic Patent Family — Patents filed and granted at the European Patent Office (EPO), the Japanese Patent Office (JPO), and the United States Patent Office (USPTO).
United States Patent Classification System (USPC) — The patent classification system used by the USPTO to classify and organize patent applications filed and patents granted in the United States.
Utility Patent — Utility Patents are issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement. Most patents (about 90%) issued in the United States are Utility Patents.
Utility Patent Term — Utility patents are valid for 20 years after the Filed Date on the patent application.
USPTO — The United States Patent and Trademark Office — An Agency in the US Department of Commerce responsible for matters related to intellectual property.
Way Better Analytics — Way Better Patents™ infographics and visualizations to assist in understanding what's happening in patents.
XR — The term used for a cross-reference patent classification. An XR does not identify the primary art defined in a patent, It defines other elements disclosed in the patent that are cross references to other classes a researcher should explore.