Glossary of Patent Terms

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Glossary

allowance

once an application has met all criteria the patent office provides a Notice of Allowability that indicates that an Issue Fee is now due; when one says that the examiner has ‘allowed,’ the application it is only a short time before it becomes a patent

american invents act AIA

2011 law passed by Congress and signed by President Obama making various major changes to US patent law; most notably the US system has been changed from a first to invent to first to file patent system

appeal

a request to overturn the patent examiner’s rejection of the subject claims of an application

applicant

Inventor or joint inventors who are applying for a patent on their own invention or other parties that can file on the behalf thereof

application

a description including any necessary drawings, legal documents such as oath or declaration for concepts filed under 35 USC 111 (a) includes utility, design, plant, reissue applications

application data sheet (ADS)

a form provided by the USPTO having various entry blocks for obtaining bibliographic and demographic information relating to the application

application number

a unique serial number attached to the application at filing having a 2 digit serial code and 6 digit sequence number

assignee

recipient of the property rights transferred in an assignment of a patent or application thereof

assignment

a transfer of patent rights from one person or party to another

assignor

grantor of a property right in an assignment of a patent or application thereof

benefit claim

claim by applicant for an earlier effective filing date using a previous provisional, non provisional or international application

Board of Patent Appeals & Interferences (BPAI)

judicial organization typically made of three judges that receive requests for appeals from patent examiner rejections

claims

the metes and bounds of an invention; in a utility patent these are numbered at the end of the body of the patent and in a design application the drawings themselves are the claims

code of federal regulations (CFR)

a group of codes relating to various federal responsibilities; 37 CFR refers to the implementation of patent laws into executive code for day to day operation of the patent system

confirmation number

a code used by the patent office to ensure the integrity of each action in combination with the application number of a subject application

continuation

a type of patent application having the same specification of a previous application and dependent for a priority claim from that previous application(s)

continuation-in-part (CIP)

a type of patent application adding new subject matter to the specification of a previous application; the CIP is NOT dependent for a priority claim from that previous application(s) for the new subject matter, rather, only material that existed in the original application has the benefit of the original priority date

declaration

a statement by an inventor that he or she is an inventor of the invention described in the disclosure of the application, what citizenship he or she has, that he understands the contents of the specification and claims, and acknowledge the duty to disclose information relating to patentability

dependent claim

a subordinate claim that refers back to a preceding claim

design patent application

an application type that deals solely with the ornamental cosmetic appearances of the item

disclosure

a complete description of the concept of the invention for which patent protection is desired

divisional

a type of patent application having the same specification of a previous application and dependent for a priority claim from that previous application(s); a divisional results from a patent examiner action called a restriction requirement, the restriction requires the separation of distinct inventions from the previous application; therefore, an applicant is required to choose between the various drawings in the specification and to identify what specific claim set covers those drawings

docket

a list of enumerated patent application in a queue pending patent examiner action

electronic filing system (EFS)

the electronic filing system of the US patent system

embodiment

the way which an invention is manufactured, utilized or otherwise operated

file wrapper

folder containing all electronic papers relating to an application

filing date

the date that the required elements of an application are received in the USPTO

final rejection

a patent examiner action having various objections and or rejections that must be responded to by the applicant; the specification, claims, abstract and other parts of the application can be affected by the action; once made final, there is only a limited amount of time to respond to the action until it abandons; response actions include: a continuation, divisional, continuation -in -part , request for continued examination, appeal to a panel of judges

group art unit (GAU)

a group of patent examiners organized around a logical set of related technologies

group director

an official having a leadership role over a technology center comprising a plurality of art units within the technology center

information disclosure statement (IDS)

a document relating to patents or patent applications that an applicant believes are related to his or her invention; applicant has a duty to disclose all information that he or she knows are related to the invention

infringement

illegal manufacture, use, sale of any patented invention

issue date

the date upon which a patent issues

large entity status

companies that have more than 500 employees are required to pay the largest set of fees under USPTO rules

maintenance fees

fees required by the USPTO to maintain the effect of a granted patent at 3.5, 7.5, and 11.5 years after the issuance of a patent

micro entity status

USPTO micro entity status provide individual applicants the least expensive set of fees; they must have gross incomes in a preceding calendar year of less than 3 times the median household income (currently $189,537) in the USA and have no obligations to assign, sell or contract to another party that does not qualify under the same income levels; as a result micro entities pay one fourth of large entity rates which is also one half of small entity rates

non-final rejection

a patent examiner action having various objections and or rejections that must be responded to by the applicant; the specification, claims, abstract and other parts of the application can be affected by the action

non-obvious

is a somewhat murkier factor in the patent world. Put simply, one of ordinary skill in the art of the application’s invention must determine that the invention would not have been obvious to make or use the invention. This is determined by patent office personnel conducting a prior art search and analyzing the state of the technological art. If the sum total of the prior can not be combined to demonstrate an obviousness rejection nor a logical rationale be found for the same then an application passes to issuance.

non-provisional patent application

an application for patent that can be examined for patentability and can mature to a 20 year patent; this type of application must have a specification, claims, drawings and an abstract; additionally, it must have an oath or declaration and the requisite filing fee

office action

a communication from a patent examiner or other USPTO official communicating various items relating to the application that must be responded to in a limited period of time

novelty

means that the same invention must not exist anywhere prior to applicant’s creation of it.

patent

a property right granted by a government to an inventor to prevent others from making or selling an items in exchange for the public disclosure of the concept so as to further arts after the expiration of the patent

patent application publication

pre-grant publication of an application at 18 months from the priority date

patent pending

phrase meaning that an application has been filed at a governmental agency (in America the USPTO) seeking to protect the patent rights of an invention

patentability

comprises the necessary characteristics that an invention must have in order for it to pass muster as a legally patentable innovation. First, they must fall into one of the statutory classes of patents.  Additionally, there are two other main characteristics that an invention must have for it to be rendered patentable. Namely, that the invention must be new (novelty) as well as having no direct or indirect precedent (non-obviousness) with reference to the existing set of technological art

priority date

your patent application can have other earlier parent applications from which it gains the benefit of a priority date which is the filing date of that earlier patent application(s)

Reexam

a request by others to reevaluate the subject matter of an issued patent

Reissue

a request by the owner of the patent to reevaluate an issued patent; the reissue request requires the surrendering of the issued patent so patent owners should weigh the risks of filing for Reissue

Request for Continued Examination (RCE)

an RCE restarts prosecution of the patent application starting from the previous examiner action

small entity

see USPTO small entity

specification

the disclosure in a utility patent having an adequately written description that is enabling of the invention so that one can make and or use the invention as described

supervisor (SPE)

a manager in the USPTO having a leadership role over a group of patent examiners

technology center

a departmental structure within the USPTO having a set of art units organized collectively according to the technological similarity addressed by the various art units; the technology center is typically headed by a Group Director having managerial authority over supervisors (SPEs)

US Copyright Office

government agency handling all copyright applications

USPTO

acronym for the United States Patent and Trademark Office; government agency handling all patent and trademark related applications 

USPTO small entity

status is granted to companies that have fewer than 500 employees, institutions of higher learning, individuals who don’t qualify for micro entity status and non-profits (501(c)(3)); also, none of the above must be required to grant, license, convey or assign any portion of the idea to a large entity

utility patent

is granted to someone who creates a novel, non-obvious article, process, machine, composition of matter or improvement thereof

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