List of patent legal concepts
Encyclopedia
This is a list of legal concepts relating to patents. A patent
is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor
or his successor in rights in exchange to a public disclosure of the invention.
must be made within a prescribed time limit. If no reply is received within the time period, the application may be considered, depending on the jurisdiction, as abandoned or deemed to be withdrawn, and, therefore, no longer pending.
, 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.
buying a patent, offering a license
to its members and then selling or donating the patent after a certain period of time.
(PCT), "Chapter I" refers to the prosecution procedure when no demand under is made. The states selected under Chapter I by the applicant are called "designated States".
defining the extent of the protection conferred by a patent, or the extent of protection sought in a patent application.
.
for a skilled person in the art to be able to carry out the invention. The common general knowledge "is the common knowledge in the field to which the invention relates." The information "must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in that art before it becomes part of their common stock of knowledge relating to the art, and so part of the common general knowledge."
Regarding the inventive step assessment, "[if] information is part of the common general knowledge then it forms part of the stock of knowledge which will inform and guide the skilled person's approach to the problem from the outset. It may, for example, affect the steps it will be obvious for him to take, including the nature and extent of any literature search."
, either set by law or determined through some form of arbitration
.
(Auction Method/Hitachi) and T 424/03 (Microsoft).
.
, words identifying subject-matter that is not claimed or, by extension, an amendment consisting in limiting a claim by introducing therein a negative technical feature.
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.
(that is, a licensee that manufactures a patented product or performs a patented process) to do in relation to the patent, by specifying a defined field of permissible operation or specifying fields from which the licensee is excluded.
is the date the patent application was filed in one or more patent office
s, 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.
.
.
. Freedom-to-operate analyses and opinions are aimed at determining the risk of patent infringement in that respect. These searches and opinions are also called clearance searches and opinions.
in German
and Austria
n laws.
(USPTO) by an applicant for a patent during patent prosecution.
.
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
.
(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 decision where inequitable conduct was found where the applicant failed to notify the USPTO of such references. See also Inequitable conduct
.
.
(PCT) becomes subject to examination at a national level. In the United States, the term national stage is used instead—see .
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.
, a legal document filed with the United States Patent Office
. 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.
, an affirmative defense used in patent litigation after the defendant has been found to have infringed a patent.
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.
rights that a company
must navigate through in order to commercialize new technology
.
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.
(EPO), an approach to assess whether an invention involves an inventive step. See Inventive step under the European Patent Convention
(EPC).
(USPTO) that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application within one year.
s conferred to a published patent application
, i.e. the rights conferred before the patent is granted. See also U.S. patent law, 35 USC 154(d). Under the European Patent Convention
,
(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.
, a means of redress following a loss of right due to the non-observance of a time limit in spite of all due care.
, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable.
set or range. A selection patent is a patent granted on a selection invention.
, under TRIPs Agreement
, under United Kingdom patent law
, under United States patent law
, computer programs and the Patent Cooperation Treaty, software patent debate
.
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.
.
).
(often 6 or 10 years) and may have less stringent patentability
requirements.
.
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor
Inventor (patent)
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention and its case law, no explicit, accurate definition of who exactly is an...
or his successor in rights in exchange to a public disclosure of the invention.
Abandonment
The reply of an applicant to an office actionOffice action
An office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark...
must be made within a prescribed time limit. If no reply is received within the time period, the application may be considered, depending on the jurisdiction, as abandoned or deemed to be withdrawn, and, therefore, no longer pending.
Annuity fee
A fee to be paid to maintain a patent or a patent application in force. Also called "maintenance fee" or "renewal fee".Application
An application for a patent, or patent application, is a request by a person or company to the competent authority (usually a patent office) to grant him a patent. By extension, a patent application also refers to the content of the document which that person or company filed to initiate the application process. This document usually contains a description of the invention and at least one claim used to define the sought scope of protection.Assignor estoppel
In United States patent lawUnited States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, an equitable estoppel barring a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
's seller (assignor) from attacking the patent's validity if he/she is found to have infringed that patent later.
Auslegeschrift
In outdated German patent law, the second reading, or publication, of a patent application.Catch and release
The practice of a patent holding companyPatent holding company
Patent holding companies are companies set up to administer, consolidate and license patents or otherwise enforce patent rights, such as through litigation...
buying a patent, offering a license
License
The verb license or grant licence means to give permission. The noun license or licence refers to that permission as well as to the document recording that permission.A license may be granted by a party to another party as an element of an agreement...
to its members and then selling or donating the patent after a certain period of time.
Chapter I
In the Patent Cooperation TreatyPatent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
(PCT), "Chapter I" refers to the prosecution procedure when no demand under is made. The states selected under Chapter I by the applicant are called "designated States".
Chapter II
In the PCT, "Chapter II" refers to the prosecution procedure when a demand under 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").Claim
A noun phraseNoun phrase
In grammar, a noun phrase, nominal phrase, or nominal group is a phrase based on a noun, pronoun, or other noun-like word optionally accompanied by modifiers such as adjectives....
defining the extent of the protection conferred by a patent, or the extent of protection sought in a patent application.
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. These searches and opinions are also called freedom-to-operate searches and opinions. See Patent infringementPatent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
.
Common general knowledge
A legal concept used notably when assessing whether an invention involves an inventive step and whether the disclosure of the invention is sufficiently clear and completeSufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
for a skilled person in the art to be able to carry out the invention. The common general knowledge "is the common knowledge in the field to which the invention relates." The information "must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in that art before it becomes part of their common stock of knowledge relating to the art, and so part of the common general knowledge."
Regarding the inventive step assessment, "[if] information is part of the common general knowledge then it forms part of the stock of knowledge which will inform and guide the skilled person's approach to the problem from the outset. It may, for example, affect the steps it will be obvious for him to take, including the nature and extent of any literature search."
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 royaltiesRoyalties
Royalties are usage-based payments made by one party to another for the right to ongoing use of an asset, sometimes an intellectual property...
, either set by law or determined through some form of arbitration
Arbitration
Arbitration, a form of alternative dispute resolution , is a legal technique for the resolution of disputes outside the courts, where the parties to a dispute refer it to one or more persons , by whose decision they agree to be bound...
.
Continuing application
In United States law, an active patent application, prior to final action, may give rise to additional applications for additional claims carrying the priority date of the original application. With the move to published applications, this has become a common way of producing submarine patents.Contribution approach
Under European patent practice, a legal approach, now abandoned by the European Patent Office (EPO), for assessing whether an invention was patentable. The approach consisted in establishing whether the "contribution to the art" made by the invention was only in a field excluded from patentability by and, if so, the application could be refused. The EPO now applies the sometimes named "any hardware" or "any technical means" approach, notably formulated in EPO Board of Appeal decisions T 258/03T 258/03
T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office , issued on April 21, 2004. It is a landmark decision for interpreting Article 52 and of the European Patent Convention which built on the principles suggested by the same...
(Auction Method/Hitachi) and T 424/03 (Microsoft).
Defensive patenting
A practice consisting in "obtaining patents to stake [one's] claim to an area of technology in hopes of preventing other companies from suing them." See also defensive patent aggregationDefensive patent aggregation
A defensive patent aggregation is the purchasing of patents or patent rights to keep such patents out of the hands of entities that would assert them against operating companies...
.
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.Designated office
Under the Patent Cooperation Treaty (PCT), a national patent office of or acting for a State designated by the applicant under Chapter I of the PCT. See also "Chapter I" above.Disclaimer
In a claimClaim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
, words identifying subject-matter that is not claimed or, by extension, an amendment consisting in limiting a claim by introducing therein 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 infringementPatent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
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
The protection of one single invention by two patents usually owned by the same proprietor.Elected office
Under the Patent Cooperation Treaty (PCT), a national patent office of or acting for a State elected by the applicant under Chapter II of the PCT. See also "Chapter II" above.Embodiment
In a patent or patent application, "a specific combination of features or a specific mode of carrying out the invention, by contrast to a more abstract definition of features which can be carried out in more than one way."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
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.Field-of-use limitation
A provision in a patent license that limits the scope of what the patent owner authorizes a manufacturing licenseeLicensee
A licensee is someone who has been granted a licence.- Tort law :The term is used in the USA law of torts to describe a person who is on the property of another, despite the fact that the property is not open to the general public, because the owner of the property has allowed the licensee to enter...
(that is, a licensee that manufactures a patented product or performs a patented process) to do in relation to the patent, by specifying a defined field of permissible operation or specifying fields from which the licensee is excluded.
Filing date
The filing date of a patent applicationPatent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
is the date the patent application was filed in one or more patent office
Patent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
s, 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
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
.
In the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, if a patent application is mailed to the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) by Express Mail, Post Office to Addressee, then the date the application was deposited in the post office is the filing date.
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 inventFirst to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
.
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 fileFirst to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
.
Flash of genius
A test for patentability formerly used by the United States Federal Courts.Freedom-to-operate
A freedom-to-operate search is a search aimed at establishing whether a product or process is covered by patent rights, including patent and patent applications. If it does, commercially exploiting the product or process may lead to patent infringementPatent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
. Freedom-to-operate analyses and opinions are aimed at determining the risk of patent infringement in that respect. These searches and opinions are also called clearance searches and opinions.
Further medical use
See Second medical use.Gebrauchsmuster
A utility modelUtility model
A utility model is an intellectual property right to protect inventions. This right is available in a number of national statutes, as described below...
in German
Germany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
and Austria
Austria
Austria , officially the Republic of Austria , is a landlocked country of roughly 8.4 million people in Central Europe. It is bordered by the Czech Republic and Germany to the north, Slovakia and Hungary to the east, Slovenia and Italy to the south, and Switzerland and Liechtenstein to the...
n laws.
Indirect infringement
In the United States, indirect infringement can occur by contributory infringement or induced infringement.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
In United States patent law, a submission of relevant background art or information to the United States Patent and Trademark OfficeUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) by an applicant for a patent during patent prosecution.
Interference proceeding
A type of proceedings, particularly at the USPTO, to decide who is entitled to the grant of a patent for an invention.Invalidity opinion
An invalidity opinion, also called "validity opinion", is a legal opinion provided by an attorney on how a court might rule on the validity of an issued patent. Invalidity opinions are often sought prior to patent litigation. See Patent infringementPatent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
.
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
A firm providing services to inventors to help them develop or market their inventions.Inventive step
A patentability requirement according to which an invention should be sufficiently inventive, i.e. non-obvious, in order to be patented.Inventor
The actual devisor of an invention that is the subject of a patent.Kokoku
An examined and approved Japanese patent application.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.Machine-or-transformation test
A criterion in United States patent law, according to which a claimedClaim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
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
In re Bilski
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...
.
Maintenance fee
A fee to be paid to maintain a patent or a patent application in force. Also called "annuity fee" or "renewal fee".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 StatementInformation disclosure statement
An information disclosure statement refers to a submission of relevant background art or information to the United States Patent and Trademark Office by an applicant for a patent during the patent prosecution process...
(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 decision where inequitable conduct was found where the applicant failed to notify the USPTO of such references. See also Inequitable conduct
Inequitable conduct
In United States patent law, inequitable conduct is a defense to allegations of patent infringement. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable...
.
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. decision where the court found that the applicant had a duty to notify the USPTO of such references. See also Inequitable conductInequitable conduct
In United States patent law, inequitable conduct is a defense to allegations of patent infringement. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable...
.
Method
In United States patent law, a patent may notably claim a process or method. The claim gives right to exclude performance of the process or method, regardless of the equipment or technology used to do so.National phase
The prosecution phase wherein an international application filed under the Patent Cooperation TreatyPatent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
(PCT) becomes subject to examination at a national level. In the United States, the term national stage is used instead—see .
Non-obviousness
A patentability requirement according to which an invention should be non-obvious in order to be patented.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 U.S. 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. Opposition proceedings may be pre- or post-grant.Patent ambush
A patent ambush occurs when a member of a standard-setting organizationStandards organization
A standards organization, standards body, standards developing organization , or standards setting organization is any organization whose primary activities are developing, coordinating, promulgating, revising, amending, reissuing, interpreting, or otherwise producing technical standards that are...
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.
Patent caveat
Formerly, in United States patent lawUnited States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, a legal document filed with the United States Patent Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
. Caveats were discontinued in 1909. A caveat was like a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
with a description of an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
and drawings, but without claims
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
. It was an official notice of intention to file a patent application at a later date.
Patent classification
Classification of patents in technological areas for convenient retrieval during prior art searches.Patent drawing
Technical drawing in a patent application, that illustrates the invention. It may be required by law to be in a particular form.Patent infringement
Commercially exploiting an invention claimed in a patent without permission of the patentee.Patent misuse
In United States patent lawUnited States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, an affirmative defense used in patent litigation after the defendant has been found to have infringed a patent.
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 portfolio
A collection of patents owned by a single entity, such as an individual or corporation.Patent thicket
A dense web of overlapping intellectual propertyIntellectual property
Intellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
rights that a company
Company
A company is a form of business organization. It is an association or collection of individual real persons and/or other companies, who each provide some form of capital. This group has a common purpose or focus and an aim of gaining profits. This collection, group or association of persons can be...
must navigate through in order to commercialize new technology
Technology
Technology is the making, usage, and knowledge of tools, machines, techniques, crafts, systems or methods of organization in order to solve a problem or perform a specific function. It can also refer to the collection of such tools, machinery, and procedures. The word technology comes ;...
.
Patent troll
Pejorative term for certain patent holders that use patent infringement litigation threats in a manner considered unduly aggressive or opportunistic.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. An invention satisfying these requirements is said to be patentable.Patentability opinion
An opinion as to whether an invention might be patentable. Such an opinion may be established by a patent attorney to assist an inventor or company into deciding whether to file a patent application.Patentable subject matter
Patent systems exclude certain areas from the grant of patents. Material not so excluded is known as patentable subject matter.Pay-for-delay
A deal under which a company holding a patent on a drug pays a generic manufacturer to delay its launch of a cheap copy of the drug.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 lawUnited States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
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.
PHOSITA
In the United States, an abbreviation for "person having ordinary skill in the art".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.Problem-solution approach
Under the case law and practice of the European Patent OfficeEuropean Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO), an approach to assess whether an invention involves an inventive step. See Inventive step under the European Patent Convention
Inventive step under the European Patent Convention
Under the European Patent Convention , European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is...
(EPC).
Prosecution history estoppel
In certain states, most notably the United States, actions during prosecution can estop a party from certain later actions or assertions.Provisional application
In United States patent law, a legal document filed in the United States Patent and Trademark OfficeUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application within one year.
Provisional (patent) rights or provisional protection
The rightRight
Rights are legal, social, or ethical principles of freedom or entitlement; that is, rights are the fundamental normative rules about what is allowed of people or owed to people, according to some legal system, social convention, or ethical theory...
s conferred to a published patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
, i.e. the rights conferred before the patent is granted. See also U.S. patent law, 35 USC 154(d). Under the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
,
- "for the period of provisional protection, between the moment of publication of the patent application and the moment of the publication of the patent grant, requires Member States to ensure that the applicant can claim compensation reasonable in the circumstances from any person who has used the invention in their territory. Following publication of the mention of the patent grant, full compensation of any losses suffered may be claimed, depending also on whether the infringer knew or should have known that he or she was infringing."
Reading a claim
The process of establishing patent infringement involves "reading" a claim onto the technology of interest. If all of the claim's elements are found in the technology, the claim is said to "read on" the technology; if a single element from the claim is missing from the technology, the claim does not literally read on the technology and the technology does not infringe the patent with respect to that claim. Also, the process of contesting or invalidating a patent can involve showing that the claim reads on prior art, i.e., the claim's elements are found in the prior art.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.Regional phase
The prosecution phase wherein an international application filed under the Patent Cooperation TreatyPatent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
(PCT) becomes subject to examination at a regional level. There are four regional patent treaties: the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
, the Eurasian Patent Convention
Eurasian Patent Convention
The Eurasian Patent Convention is an international patent law treaty instituting the Eurasian Patent Organization . It was signed on September 9, 1994 in Moscow, Russia.- External links :* On the Eurasian Patent Organization web site:** ** **...
, the Bangui Agreement (see African Intellectual Property Organization or OAPI), and the Harare Protocol (see African Regional Intellectual Property Organization
African Regional Intellectual Property Organization
The African Regional Intellectual Property Organization , formerly African Regional Industrial Property Organization, is an intergovernmental organization for cooperation among African states in patent and other industrial property matters...
or ARIPO). See also National phase.
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
In the European Patent ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
, a means of redress following a loss of right due to the non-observance of a time limit in spite of all due care.
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 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.Search report
A report established by a patent officePatent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable.
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.Selection invention
An invention consisting in the selection of individual elements, sub-sets, or sub-ranges, within a larger, knownPrior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
set or range. A selection patent is a patent granted on a selection invention.
Selection patent
See selection invention.Skilled person (in the art)
See person having ordinary skill in the art.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.Software patent
A patent in the field of computer software. Some types of inventions in the field of software are legally considered non-patentable subject-matter, depending on the jurisdiction. See also software patents under the European Patent ConventionSoftware patents under the European Patent Convention
The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973...
, under TRIPs Agreement
Software patents under TRIPs Agreement
The WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights , particularly Article 27, is occasionally referenced in the political debate on the international legal framework for the patentability of software, and on whether software and computer-implemented inventions should be...
, under United Kingdom patent law
Software patents under United Kingdom patent law
There are four over-riding requirements for a patent to be granted under United Kingdom patent law. Firstly, there must have been an invention. That invention must be novel, inventive and susceptible of industrial application...
, under United States patent law
Software patents under United States patent law
Software or computer programs are not explicitly mentioned in United States patent law. In the face of new technologies, decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit in the latter part of the 20th century sought to redefine the boundary...
, computer programs and the Patent Cooperation Treaty, software patent debate
Software patent debate
The software patent debate is the argument dealing with the extent to which it should be possible to patent software and computer-implemented inventions as a matter of public policy. Policy debate on software patents has been active for years. The opponents to software patents have gained more...
.
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 inventionInvention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
must be described in the application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to 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 notably available for medicinal and plant protection products. The right comes into force after the corresponding patent expires and, for medicinal and plant protection products, has a maximum term (i.e., lifetime) of 5 years.Swear back of a reference
A procedure under U.S. patent law whereby an inventor can get a patent even if the invention has become public before the patent application was filed.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 ConventionSoftware patents under the European Patent Convention
The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973...
.
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).Transitional phrase
In United States patent law, a phrase that links the preamble of a patent claim to the specific elements set forth in the claim which define what the invention itself actually is. The transitional phrase acts as a limitation on the claim, indicating whether a similar device, method, or composition infringes the patent if it contains more or fewer elements than the claim in the patent.Unity of invention
A requirement that a patent application can relate only to one invention (or to a group of inventions so linked as to form a single general inventive concept, see for instance Unity of invention under the European Patent ConventionUnity of invention under the European Patent Convention
Under , a European patent application must "relate to one invention only or to a group of inventions so linked as to form a single general inventive concept"...
).
Utility
A patentability requirement mainly used to prevent the patenting of inoperative devices such as perpetual motion machines.Utility model
An intellectual property right which is very similar to the patent, but usually has a shorter termTerm of patent
The term of a patent is the maximum period during which it can be maintained into force. It is usually expressed in number of years either starting from the filing date of the patent application or from the date of grant of the patent. In most patent laws, renewal annuities or maintenance fees have...
(often 6 or 10 years) and may have less stringent patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
requirements.
Validity opinion
A validity opinion, also called "invalidity opinion", is a legal opinion provided by an attorney on how a court might rule on the validity of an issued patent. Validity opinions are often sought prior to patent litigation. See Patent infringementPatent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
.
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.External links
- Glossary at the Deutsches Patent- und MarkenamtDeutsches Patent- und MarkenamtThe Deutsches Patent- und Markenamt or German Patent and Trade Mark Office is the German national patent office, with headquarters in Munich, and offices in Berlin and Jena...
(DPMA), (German Patent and Trade Mark Office) - Glossary at the European Patent OfficeEuropean Patent OfficeThe European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO) - Glossary of patent terms at the United States Patent and Trademark OfficeUnited States Patent and Trademark OfficeThe United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) - PCT (Patent Cooperation Treaty) Glossary at the World Intellectual Property OrganizationWorld Intellectual Property OrganizationThe World Intellectual Property Organization is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world"....
(WIPO) "Definitions"