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Glossary of Intellectual Property Terms
Abandonment (of a patent application) – stopping the prosecution process; can be implicit (failure to reply to an office action or pay a prescribed fee within the time period allowed) or explicit (PTO is informed by the applicant or his agent that further prosecution will not be pursued).
Application (patent application) – formal documents filed requesting the grant of a patent.
Claim – a statement by the patent applicant describing the "heart" of the invention; subject matter protected by a patent.
Conception (invention conception) – creation in the inventor’s mind of a useful way to solve a problem; act of visualizing an invention, complete in all essential detail; occurs when a solution is formulated, not when the underlying problem is recognized.
Confidentiality Agreement – a legal document through which intellectual property can be disclosed by one party to another to be used only for stated purposes, not to be disclosed to others, and returned to the giver upon request.
Continuation Application (also called a file wrapper continuation application) – an application filed after the final office action on an earlier filed application that consists of the same disclosure; the claims may be the same or there may be a new set of claims directed to the same invention claimed in the prior application; continuation applications must be filed before the earlier application is abandoned and must contain no new matter; a continuation application has the same filing date as the earlier (parent) filed application.
Continuation in Part Application (CIP) – an application filed before the earlier filed application is abandoned that adds new material to or deletes material from the earlier filed application; material in common with the earlier application has the original application’s filing date, new material has the filing date of the CIP.
Copyright – a type of intellectual property protection that protects the manner in which an idea is expressed.
Design Patent – patent used to protect the aesthetic aspects of an article and not the functional aspects.
Disclosure – description of an invention in an application or patent; consists of a specification (written description), drawings, and claims.
Divisional Application – an application during the pendency of a prior application continuing the same disclosure but with claims directed to an invention that differs from the original application; usually filed in response to a Restriction Requirement from the PTO.
Embodiment – one form of an invention; an example of the invention.
Enablement – the requirement of the Patent Code that the patent application disclosure must give a sufficiently clear description of the invention so as to enable a person having ordinary skill in the art (technology) to make and use the invention without undue experimentation.
Examination – process by which the PTO decides to grant a patent.
Exclusive License Agreement – a legal document licensing an intellectual property to another party for their exclusive use. This intellectual property cannot be licensed to any other party for any use.
File Wrapper (also called file history) – folder kept by the PTO that contains all the correspondence/documents involved in a patent application; contents of the file.
Filing Date – date on which all the required parts of an application are received at the PTO.
Improvement Patent – a patent having claims that are an improvement or modification of the invention of a prior patent.
Infringement – an unauthorized attempt to make, use, sell or have made a property right owned by another; can be direct or contributory or can be actively induced (the encouragement of others to infringe).
Intellectual Property – property in the form of patents, trademarks, service marks, trade names, trade secrets, and copyrights.
Interference – priority proceedings in the PTO to determine which of the two or more parties was first to invent the subject matter in conflict.
Invention – conception of a novel, useful, unobvious contribution which is then reduced to practice.
License – an agreement between the owner of a patent and another party that permits the other party to practice the invention or benefit from rights; usually involves some compensation from the licensee to the licensor; does not include legal title (remains with licensor).
Licensee – party obtaining rights under a license agreement.
Licensor – party granting rights under a license agreement.
Maintenance fees – fees that must be paid 4, 8, and 12 years after a utility patent is granted.
Materials Transfer Agreement – a legal document by which exchanges of tangible materials may be transferred among public and non-profit organizations.
Non-exclusive License Agreement – a legal document licensing an intellectual property to another party for use in a defined field. This intellectual property may be licensed to additional parties for use in fields other than the ones specified in previously executed license agreements.
Non-obvious – a criterion in Section 103 of the Patent Code which requires that an invention cannot receive a valid patent if the invention could be readily deduced from publicly available information by one of ordinary skill in the art.
Novel – requirement for patentability: original in conception or style.
Obvious – term used by examiner when rejecting claims that the examiner feels would have been apparent to one "skilled in the art" at the time the invention was made.
Official Gazette – published each Tuesday; officially announces the issuance of patents.
Patent (utility, letters, design, plant) – a grant by a government to an inventor giving the latter the right to exclude others for a limited period of time for making, using, or selling the invention.
Patent Application – formal document submitted to the PTO with a request for a grant; includes an Abstract of Disclosure, patent drawings, specification, claims, oath or declaration, and a filing fee payment.
Patent Cooperation Treaty (PCT) – a multilateral treaty which became effective in 1978 that eliminates some of the duplication involved when obtaining patent protection for the same invention in several countries; more than 40 nations are signatories of the PCT; with the PCT it is possible to file and prosecute a single international application, which has the same effect as filing a separate application in each PCT nation that the inventor designates at the time of filing the application; the PCT neither creates an international patent nor changes the substantive requirements of patentability in any individual PCT nation (including the US), it merely reduces the duplication of effort required to file and processes parallel applications in several nations at the same time.
Patent and Trademark Office (PTO) – organization within the Department of Commerce that deals with the issuance of patents.
Plant Patent – two distinct forms of plant patent or patent-like protection are available for new plant varieties; (a) 1930 Plant Patent Act (PPA), PTO may grant patents for asexually reproduced varieties and (b) under the 1970 Plant Variety Protection Act (PVPA) protection of new sexually reproduced varieties are protected by the Department of Agriculture.
Prior Art – existing technical information against which the patentability of an invention is evaluated; is pertinent in novelty and obviousness requirements for a patent.
Provisional Patent Application – accepted in 1995, the provisional patent application provides an early priority date without counting against the twenty-year life of the patent. Requirements for filing a provisional are specifications, drawings if necessary, filing fee, and assignee. No claims are submitted with the provisional.
Public Disclosure – an unrestricted disclosure to any other person not bound by confidentiality obligations, express or implied.
Reduction to Practice – there are two types: (a) actual - occurs when the invention is physically implemented, the article is manufactured, machine is built and tested, the method is performed and confirmed, or the composition of matter has been synthesized or produced and (b) constructive – filing of a patent application; to show one of average skill in the art how to make and use the invention.
Royalty – a share of income, in accordance with the terms of a license agreement, paid by a licensor for the right to make, use or sell an invention.
Search (location of information) - sometimes performed to determine if prior art exists that would affect the patentability of an invention.
Statutory Bar (requirements) – specific acts related to an invention which if performed more than one year prior to the filing of a patent application will preclude patentability; i.e., publication, sale of invention, abandoning the invention, or public use.
Trademark – a word, name, symbol, or device or any combination of these used by a manufacturer or vendor in connection with a product.
Trade Secret – a property protected by keeping it confidential or secret.
Utility Patent – one of three types of US patents; this type is most widely regarded as "a patent"; protects patentable inventions such as processes, machines, compositions of matter and improvements (other types of patents are design and plant).