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Abandonment An inventor may decide to abandon a patent application that is pending in the patent office by not responding to communications from the patent office or by notifying the patent office that he or she officially abandons the application. Once an application is abandoned, patent office will no longer consider the application for patentability. An inventor may revive an abandoned application if he or she can satisfy the patent office that the abandonment was unintentional or unavoidable.
Abstract The abstract is a required part of a patent application. The abstract should be designed to allow a reader to determine quickly the subject matter of the patent application.
Allowance Allowance is the term used by the patent office to indicate that a patent application is in a condition to become a granted patent.
Amendment Any change to a patent application that is pending in the patent office may be changed by an amendment. Amendments are usually made in response to a communication from the patent office, but an inventor can submit a preliminary amendment before he or she receives any communication from the patent office. Amendments can not add information that was not part of the original patent application, but portions of the application may be deleted or rewritten. Obvious errors in the application may also be corrected.
Anticipation - A reference that contains all of the elements of a claim is considered to anticipate the claim.
Appeal - If there is a disagreement between a patent examiner and an inventor concerning a patent application that can not be resolved between them, then the inventor may appeal to the Board of Patent Appeals and Interferences which is division in the U.S. Patent Office.
Art Unit The examiners in the U.S. Patent Office is divided into divisions called art units which specialize in certain technologies. After a patent application is received by the patent office, the application is initially reviewed make sure that all of the required parts of the application are present. After this initially review, the application will be assigned to an art unit, which will further assign the application to an examiner.
Assignee An assignee is the owner of a patent application or granted patent.
Assignment - The transfer of ownership of patents or patent application is typically referred to as an assignment.
Assignor Someone who is transferring their ownership of a patent application or granted patent is considered to by an assignor.
Best Mode Patent Law requires that a patent application include the best mode in the description of the invention. The best mode is the best way that the inventor considers at the time of filing the patent application for making and using the claimed invention.
Claim A claim in a patent application is the legally binding portion of the patent application. An apparatus claim consists of a series of elements related to one another that describe the invention. A method claim consists of a series of steps that describe the novel method.
Continuation A continuation is a patent application that depends from another patent application (called a parent application) that contains the same subject matter, but usually different claims. A continuation is required to have at least one inventor that is also an invention on the parent application. A continuation also has the same priority date as its parent application.
Continuation-in-Part A continuation-in-part (CIP) is similar to a continuation except that there is some subject matter present in the CIP that is not present in the parent application.
Co-pending Application Patent applications that are pending in the patent office at the same time are considered to be co-pending. A continuation or continuation-in-part are required to be co-pending with their parent application for at least one day.
Declaration An inventor or group of inventors are required to sign and submit an oath or a declaration as part of the patent application. The declaration or oath should state that the inventor believes that he is an inventor, that he is familiar with the contents of the patent application and that if he is aware of any information that will affect the patentability of claimed invention, that he will inform the patent office of that information.
Design Patent A design patent is a patent that protects the appearance of something not the combinations of elements or how they are interrelated which is considered a utility patent. A design patent has a life of 14 years.
Disclaimer A patent owner may disclaim any of the claims in his or her granted patent. These claims are then considered to be dedicated to the public and the patent owner can not recover his rights to those claims if he later changes his mind. In some cases, a patent owner may own two patents that are so similar that the patent office will require the patent owner to terminal disclaim the later filed patent application so that when the first patent expires the second patent will expire at the same time.
Divisional Patent law allows a patent owner to have only one invention per patent. In some cases that the patent examiner will determine that there are at least two different inventions claimed in a single patent application. In such a scenario, the examiner will require the patent owner to divide the application, one division will be elected to continue with the examination with the patent office and the other division may be withdraw to be filed as a new patent application, which is usually referred to as a divisional application.
Double Patenting If the allowance of a second patent application is consider to be so close to a already filed patent application with the same inventorship that the second patent application will extend all of the rights of the first patent application the patent office may decide to reject the second patent application with a double patenting rejection. This rejection can sometimes be overcome by terminal disclaiming the second application so that it will expire at the same time as any patent that grants from the first patent application.
Duty of Disclosure Any inventor, agent, attorney, secretary, engineer, or anyone else that may have helped with the preparation of a patent application is required by law to submit any information to the patent office that may affect the patentability of the claimed invention of the patent application. Patent law however, does not require that anyone perform a search to find any such information.
Enablement Patent law requires that a patent application describe the claimed invention in such a way that anyone of ordinary skill in the technology that the invention is concern with will be able to make and use the claimed invention.
Examiner The examiner is the employee of the patent office who reviews the patent application and judges the novelty of the claimed invention.
Extension of Time When the patent office communicates to the patent owner or his representative, the patent office usually mandates a time in which the owner or representative may respond without paying a late fee. If the owner or representative does not respond within the time period he or she must pay the late fee and request an extension of time.
File Wrapper The file wrapper is the record of documentation kept by the patent office on a patent application or granted patent.
Filing Date The filing date is the date that the patent application was filed at the patent office.
Filing Fee The patent office requires a fee to process the patent application which is required at the time of filing.
Indefiniteness A claim or description in a patent application that is unclear is considered to be indefinite.
Information Disclosure Statement The Information Disclosure Statement is a form provided by the patent office designed to organize the information submitted by those involved in preparing the patent application to submit information to the patent office that would affect the patentability of the claimed invention.
Infringement Infringement is the term used for act of violating a patent owners rights.
Intellectual Property Patents, trademarks, copyrights, trade secrets and other intangible assets are considered to be intellectual property.
Interference An interference occurs when two patent applications are filed about the same time and have almost exactly the same claims. In such a case a patent examiner may try to determine which applicant was the first to invent.
Invalid An invalid patent is a patent that was granted by the patent office, but shouldnt have been. The patent office goes a lot of trouble to make sure that only valid applications become patents but that doesnt mean that some dont get through. The patent may be found invalid because of an technicality or a reference older than the filing date of the patent application is found to disclose the claimed invention.
Invention Disclosure A patent agent or patent attorney will often ask the inventor to provide then with some kind of written description of their invention. This helps the attorney to better understand the invention and prepare a better patent application accordingly.
Inventor In the patent world an inventor is someone who contributed to at least one of the claims in the patent application. Often an engineer may feel that he or she should be included as inventor in a patent application because they contributed to parts of the application, like the background, or they were assigned to work on the engineering the idea, but if they didnt provide an original element of one of the claims then they arent technically an inventor.
Issue When a patent application becomes a patent, it is said to issue as a patent. The patent office charges an issue fee before the application can issue as a patent.
License A patent owner can license a company to make their patented invention in exchange for sum of money and/or royalties.
Maintenance Fee The patent office charges a patent owner a maintenance fee to keep a granted patent from expiring. In the United States, there a fee is due before the 4th year, the 8th year, and the 12th year, after the patent was granted. Failure to pay a maintenance fee will result in the patent expiring and the patent owner losing his rights to the patent.
Manual of Patent Examining Procedure (MPEP) The MPEP is the manual that the examiner at the patent office use for reviewing patent applications. Every patent attorney or patent agent also have passed a test based on the information from the MPEP.
New Matter New matter is subject matter added to a patent application after the application was filed at the patent office. By law no new matter can be added to a application after filing and will be rejected by the examiner. However, if an inventor feels it is critical to added the new subject matter, he may file a new application called a continuation-in-part which claims priority from the first application. This new application will have an independent examination at the patent office.
Non-Obviousness A patentable invention is required to be non-obviousness. This means that there are no references in combination or individually that teach all of the elements of the claimed invention. Non-obviousness also means that one of ordinary skill in the art would not feel that the claimed invention is obviousness.
Non-provisional Patent Application A non-provisional patent application is considered to be a formal patent application filing that is intended to be examined by an examiner. A non-provisional application is contrasted with a provisional application which is not intended to be reviewed by an examiner.
Oath A non-provisional patent filing requires that an oath or declaration be signed and submitted with the application. Basically an oath differs from a declaration in that the oath requires a witness to view the signing of the inventors.
Offer to Sell Patent law tries to restrict products already on the market from getting patented, while at the same time allowing an inventor to determine the marketable value of his invention. One way to satisfy both objectives is to not allow an inventor to file a patent application on an invention that was sold or offered to be sold one year before the filing date.
Office Action An office action is a communication from the patent office requesting that an action be taken concerning the patent application. Typically the office action will request that the inventor overcome an objection (deals with a formatting error) or a rejection (deals with a statutory bar). The objection could request a change to the figures of the application or a spelling mistake; while on the other hand, the rejection may deal with claims that dont definitively define the invention or it may deal with a reference which discloses the claimed invention.
One of Ordinary Skill One of ordinary skill in the art is someone who has ordinary skill in the technology that deals with the claimed invention. The MPEP discloses several characteristics which are used to determine who would be someone of ordinary skill in the art since it would change from field to field. During examination, an inventor has to determine if someone of ordinary skill in the art would consider the invention obvious.
Patent A granted patent is issued by a government which gives an inventor or patent owner certain rights pertaining to the claimed invention defined in the patent. In the United States, the U.S. government grants the owner of the patent a monopoly on the claim invention is exchange for his disclosure of the idea to the public. This tradeoff is designed to encourage innovation, while making society better off in the long run by exposing the public to new ideas.
Patentable Something that is patentable is something that can be patented.
Patent Agent A patent agent is a non-attorney who is recognized by the U.S. patent office as someone who can represent others before the patent office in patent matters. A patent agent is not recognized by the patent office to represent others in trademark matters.
Patent Attorney A patent attorney is a patent agent who is also an attorney.
Patent Cooperation Treaty (PCT) The PCT is a treaty that simplifies foreign patent filings in countries that are members of the World Trade Organization. A PCT filing allows an inventor to initially file a single patent application with a receiving office (usually the U.S. Patent Office or the European Patent Office) where the patent application will receive an initial international examination before the inventor needs to decide which foreign countries he desires to file in. Once the application enters into a foreign country, the patent application will be reviewed again since all countries have different patent laws, but usually those national examinations rely heavily on the international examination.
Patent Examiner - A patent examiner is an employee at the patent office who is authorized to examine patent applications and legally determine the applications fate.
Patent Owner Initially an inventor or group of inventors are the owners of the patent or patent application. All inventors have equal rights to the claimed invention regardless of the contribution of the claims, just as long as they made some contribution. Each inventor can appoint their own agent or attorney, license and/or sell their portion of the patent or application. Typically an inventor who works for a company is required under an employment contract to assign (or transfer ownership) of the patent or patent application to their employer.
Patent Search A patent search is a search typically performed before the filing of a patent application to determine patentability of the invention. Patent law does not require that a patent search be performed although the law does require that anyone involved in the preparation of the patent application submit to the patent office any information that they feel would affect the patentability of the claimed invention.
Patent term adjustment The patent office agrees that patents should be examined and processed through the patent office quickly, but due to a large back-log of pending patent application in the patent office, that is not usually possible. The patent office makes up for this by adjusting the patent term if the patent office feels that the delay in getting the application to grant as a patent was their fault or at least partly their fault. The amount of the adjustment depends on the delay.
Pending While a patent application that is waiting to be either examined by a patent examiner or to be issued in the patent office is considered to be pending.
Preliminary Amendment A preliminary amendment is an amendment sent to the patent office by the inventor before the patent office examines the patent application.
Prior Art Prior art is the term to describe all of the knowledge and references pertaining to the technology of the claimed invention in the patent application.
Priority Date A priority date is the earliest filing date that a patent application can claim. Some patent applications that are related to earlier filed patent applications by the same inventor can claim priority to the earlier applications.
Private PAIR Private PAIR is a system offered by the patent office where the inventor or his representative can view the progress of their patent applications online and their status in the patent office. An inventor or his representative must be registered with the patent office for this service.
Prosecution - Prosecution refers to the interaction between an inventor and the patent office dealing with making a patent application ready for allowance.
Provisional Application A provisional patent application is an informal application that is filed with the patent office that is intended to expire automatically in one year from its filing date without an examination. A provisional application is significantly cheaper to file than a non-provisional application and requires fewer parts. The intent of a provisional patent application is to allow an inventor time to see how marketable his invention is, without having to commit up front to the more expensive process of filing a non-provisional application while retaining an earlier filing date. Since the provisional application requires less effort and is subject to less scrutiny , some inventor may feel more competent in filing their own provisional applications.
Public PAIR - Public PAIR is a system offered by the patent office where everyone can view the progress of all published pending patent applications online. This service does not require that an individual be registration with the patent office.
Published Patent Application 18 months after the filing date of a patent application the patent office will publish the application. This does not give the inventor any more rights, but simply informs the public of what the inventor has filed. Typically at this point the patent application will still be pending in the patent office. An inventor can pay to have a patent application publish earlier, later or not at all depending on the needs of the inventor.
Reduction to Practice An invention is required to be reduced to practice before a patent can be applied for. Actual reduction means that there is at least a prototype of the invention made. Constructive reduction means that all of the details to enable some one to make and use the invention have been thought through. By definition a patent application must contain all of the details required for constructive reduction to practice, so this is not usually an issue.
United States Patent and Trademark Office (USPTO)
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