Patent law (patents for inventions)
Overviews
Patents · History Economics · Criticism
Processes
Application · Prosecution Licensing · Infringement
Patentability
Patentable subject matter Novelty  · Utility Inventive step and non-obviousness Industrial applicability Person skilled in the art Prior art · Inventorship
By region / country
Europe Japan United States
Subject-matter
Biological patent · Gene patent Business method · Tax patent Chemical patent · Software patent
Category List of concepts
v • d • e

This is a list of legal concepts relating to patents, including special types of patents and patent applications (see end of page).

Contents:		A B C D E F G H I J K L M N O P Q R S T U V W X Y Z

[edit] A

[edit] Abandonment

The reply of an applicant to an office action 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within the time period, the application may be considered, depending on the jurisdiction, as abandoned or deemed to be withdrawn, and, therefore, no longer pending.

[edit] Annuity fee

A fee to be paid to maintain a patent or a patent application in force. Also called "maintenance fee" or "renewal fee".

[edit] Assignor estoppel

In United States patent law, 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.

[edit] Auslegeschrift

In German patent law, the second reading, or publication, of a patent application.

[edit] C

[edit] Chapter I

In the Patent Cooperation Treaty (PCT), "Chapter I" refers to the prosecution procedure when no demand under Article 31 PCT is made. The states selected under Chapter I by the applicant are called "designated States".^[1]

[edit] Chapter II

In the PCT, "Chapter II" refers to the prosecution procedure when a demand under Article 31 PCT 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").^[2]

[edit] Claim

A noun phrase defining the extent of the protection conferred by a patent, or the extent of protection sought in a patent application.

[edit] 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 infringement.

[edit] 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 complete 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." ^[3]

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." ^[4]

[edit] 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 royalties, either set by law or determined through some form of arbitration.

[edit] D

[edit] Defensive publication

A publication intended to prevent the grant of a patent to a competitor by placing information in the public domain.

[edit] 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.

[edit] 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.

[edit] 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.^[5] See also "Chapter I" above.

[edit] Disclaimer

An amendment consisting in limiting a claim by introducing a negative technical feature.

[edit] Divisional patent application

A type of patent application which contains matter from a previously-filed application.

[edit] Doctrine of equivalents

A legal rule that allows a court to hold a party liable for patent infringement 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.

[edit] Double patenting

The protection of one single invention by two patents usually owned by the same proprietor.

[edit] E

[edit] 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.^[6] See also "Chapter II" above.

[edit] Essential patent

A patent that is required to make a certain product is described as essential.

[edit] Exhaustion of rights

A legal concept stating that rights in a product are exhausted by its sale.

[edit] 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.

[edit] F

[edit] Field-of-use limitation

A provision in a patent license that limits the scope of what the patent owner authorizes a manufacturing licensee (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.

[edit] Filing date

The filing date of a patent application is the date the patent application was filed in one or more patent offices, 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.^{[citation needed]}

[edit] 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 invent.

[edit] 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 file.

[edit] Flash of genius

A test for patentability formerly used by the United States Federal Courts.

[edit] 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 infringement. 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.

[edit] Further medical use

See Second medical use.

[edit] I

[edit] Indirect infringement

The examples and perspective in this section may not represent a worldwide view of the subject. Please improve this article and discuss the issue on the talk page.

In the United States, indirect infringement can occur by contributory infringement or induced infringement.^[vague]

[edit] 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.

[edit] Information disclosure statement

In United States patent law, a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during patent prosecution.

[edit] Interference proceeding

A type of proceedings, particularly at the USPTO, to decide who is entitled to the grant of a patent for an invention.

[edit] Invalidity opinion

"Invalidity opinion", a synonym for "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 infringement.

[edit] 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.

[edit] Invention promotion firm

A firm providing services to inventors to help them develop or market their inventions.

[edit] Inventive step

A patentability requirement according to which an invention should be sufficiently inventive, i.e. non-obvious, in order to be patented.

[edit] Inventor

The actual devisor of an invention that is the subject of a patent.

[edit] L

[edit] 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.

[edit] M

[edit] Machine-or-transformation test

A criterion in United States patent law, according to which a claimed 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.

[edit] Maintenance fee

A fee to be paid to maintain a patent or a patent application in force. Also called "annuity fee" or "renewal fee".

[edit] 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.

[edit] McKesson Reference

In United States patent law, an Information Disclosure Statement (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^[7] decision where inequitable conduct was found where the applicant failed to notify the USPTO of such references. See also Inequitable conduct.

[edit] 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.^[8] decision where the court found that the applicant had a duty to notify the USPTO of such references. See also Inequitable conduct.

[edit] N

[edit] National phase

The prosecution phase wherein an international application filed under the Patent Cooperation Treaty (PCT) becomes subject to examination at a national level. In the United States, the term national stage is used instead—see 35 U.S.C. § 371.

[edit] Non-obviousness

A patentability requirement according to which an invention should be non-obvious in order to be patented.

[edit] Novelty

A patentability requirement according to which an invention is not patentable if it was already known before the date of filing.

[edit] O

[edit] 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.

[edit] On-sale bar

A concept of US 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.

[edit] 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.

[edit] P

[edit] Patent ambush

A patent ambush occurs when a member of a standard-setting organization 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.^[9][10]

[edit] Patent caveat

Formerly, in United States patent law, a legal document filed with the United States Patent Office.^[11] 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.

[edit] Patent classification

Classification of patents in technological areas for convenient retrieval during prior art searches.

[edit] Patent drawing

Technical drawing in a patent application, that illustrates the invention. It may be required by law to be in a particular form.

[edit] Patent family

A group of patents related by a common priority claim.

[edit] Patent flooding

Patenting every possible way of doing something.

[edit] Patent infringement

Commercially exploiting an invention claimed in a patent without permission of the patentee.

[edit] Patent misuse

In United States patent law, an affirmative defense used in patent litigation after the defendant has been found to have infringed a patent.

[edit] Patent model

A miniature model that shows how an invention works.

[edit] 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.

[edit] Patent pool

A consortium of at least two companies agreeing to cross-license patents and other IP rights relating to a particular technology.

[edit] Patent portfolio

A collection of patents owned by a single entity, such as an individual or corporation.

[edit] Patent thicket

A dense web of overlapping intellectual property rights that a company must navigate through in order to commercialize new technology.^[12]

[edit] Patent troll

Pejorative term for patent holding company.

[edit] Patent watch

A process for monitoring newly issued patents on a periodic basis to see if any of these patents might be of interest.

[edit] Patentability

A set of substantive requirements for a patent to be granted.

[edit] Patentable subject matter

Patent systems exclude certain areas from the grant of patents. Material not so excluded is known as patentable subject matter.

[edit] 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.^[13]

[edit] 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.

[edit] Petition to make special

A United States patent law 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.

[edit] Piracy

Pejorative term. Generally refers to the willful infringement of a patent. May also be applied to the vigorous enforcement of a patent.

[edit] 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.

[edit] 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.

[edit] Problem-solution approach

Under the case law and practice of the European Patent Office (EPO), an approach to assess whether an invention involves an inventive step. See Inventive step under the European Patent Convention (EPC).

[edit] Prosecution history estoppel

In certain states, most notably the United States, actions during prosecution can estop a party from certain later actions or assertions.

[edit] Provisional (patent) rights or provisional protection

The rights 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,

"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, Article 67 EPC 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." ^[14]

[edit] R

[edit] Reasonable and Non Discriminatory Licensing

A type of licensing typically used during standardisation processes.

[edit] 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".

[edit] Reexamination

The examination of a granted patent, which can result in the revocation of that patent.

[edit] Regional phase

The prosecution phase wherein an international application filed under the Patent Cooperation Treaty (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.

[edit] 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.

[edit] Restitutio in integrum

In the European Patent Convention, a means of redress following a loss of right due to the non-observance of a time limit in spite of all due care.

[edit] S

[edit] 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^[15] 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.

[edit] Search report

A report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable.

[edit] 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.

[edit] Selection invention

An invention consisting in the selection of individual elements, sub-sets, or sub-ranges, within a larger, known set or range.^[16] A selection patent is a patent granted on an selection invention.^[17]

[edit] Selection patent

See selection invention.

[edit] Skilled person (in the art)

See person having ordinary skill in the art.

[edit] 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.

[edit] State of the art

A synonym for prior art.

[edit] Submarine patent

A patent first published and granted long after the original application was filed.

[edit] Sufficiency of disclosure

An important requirement to be met by a patent in order to be validly granted. According to this requirement, an invention 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.

[edit] Supplementary protection certificate

A sui generis right available for medicinal and plant protection products. The right comes into force after the corresponding patent expires and has a maximum life time of 5 years.

[edit] Swear back of a reference

A procedure under US patent law whereby an inventor can get a patent even if the invention has become public before the patent application was filed.

[edit] T

[edit] 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 Convention.

[edit] Term of patent

The maximum period during which it can be maintained in force.

[edit] Transfer

An operation by which ownership of a patent or patent application changes (for instance as a result of a financial transaction).

[edit] 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.

[edit] U

[edit] 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 Convention).

[edit] Utility

A patentability requirement mainly used to prevent the patenting of inoperative devices such as perpetual motion machines.

[edit] V

[edit] Validity opinion

A validity 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 infringement.

[edit] X

[edit] 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.

[edit] Special types of patents and patent applications

• Patent application
  • Continuing patent application (incl. continuation, divisional and continuation-in-part) for instance under United States patent law
  • Kokai (published, unexamined Japanese patent application)
  • Kokoku (examined and approved Japanese patent application)
  • Provisional application under United States patent law
• Software patent
  • List of software patents
  • Software patent debate
  • Software patents under the European Patent Convention
  • Software patents under TRIPs Agreement
  • Software patents under United Kingdom patent law
  • Software patents under United States patent law
  • Computer programs and the Patent Cooperation Treaty
• Utility model
  • Gebrauchsmuster (German and Austrian utility models)

[edit] See also

• List of patent case law
• List of people associated with patent law

[edit] References

[edit] External links

• Glossary at the Deutsches Patent- und Markenamt (DPMA), (German Patent and Trade Mark Office)
• Glossary at the European Patent Office (EPO)
• Glossary of patent terms at the United States Patent and Trademark Office (USPTO)
• PCT (Patent Cooperation Treaty) Glossary at the World Intellectual Property Organization (WIPO)
• Article 2 PCT "Definitions"