Inventors' Glossary: Plain English Guide to Patents
By Absolute Technology Law Group, LLC
Jill Welytok and Michael Baffa
Business Method Patent - A patent that protects a new way of conducting
business, rather than protecting a new device or process. However, simply
using a computer to perform a method already known is generally not
patentable.
Claims - That part of a patent or patent application that legally defines the
scope of protection of an invention.
Continuation, continuation-in-part applications - These are applications you
file after your original application to amend it in some way. If you do not
disclose anything new, the application is called a continuation application and
is entitled to the date of your original application. If there is new mater in
the application, the new matter gets the new (later) later filing. (See also
new matter.)
Critical Date - The date by which an application must be filed to avoid losing
rights in the invention. For example, if you publicly disclose an invention,
your critical date is one year from the date of disclosure in the U.S.
Doctrine of Equivalents - This is a judicial doctrine that says a patent
holder is entitled to protection from infringers who make trivial
modifications but still has the same function as your invention and is not
literally infringing on your invention. (Does it perform substantially the same
function, in substantially the same way, to achieve substantially the same
result? If so, it may be infringing on your patent.)
Examiner - The representative at the USPTO that will determine the
patentability of an application. This person is not necessarily an attorney,
but has passed the patent bar, and thus has some technical background.
(Try not to irritate them.)
Experimental Use Doctrine - This is a judicial doctrine that provides an
exception to the rule that inventions must be patented within one year of
the date they are publicly disclosed in the U.S. An inventor is allowed to
develop the invention publicly without running into the on-sale bar so long as
the invention is still being developed or improved. (Inventors should always
keep a notebook to document experimentation is ongoing - see Inventors'
Notebook and On-sale bar)
First to Invent - U.S. patent rights are based on which inventor was first to
invent (i.e., be in possession of all the knowledge to make or use an
invention). The rest of the world uses a "first to file" system.
Infringement - The event(s) that encroach upon the rights of a patent
owner protected by a patent.
Markman Hearing - A court hearing conducted early in a patent
infringement lawsuit where a judge decides what the terms in a patent mean.
Non-Disclosure Agreement (NDA) - An agreement between parties to keep information confidential.
Non-Provisional Application - An application that will be substantively
examined by an examiner. The application must include a written description
of the invention, the best mode for carrying out the invention, and claims
defining what the applicant believes to be the invention. (See also,
provisional application)
Office Action - This is letter where a patent examiner allows, rejects, or
objects to an application and explains his or her reasons for doing so. The
patent applicant has a set time period to respond.
On-Sale Bar - In the US, selling an invention or offering the invention for
sale presents a bar to the patentability of the invention beginning 1 year
after the sale or offer for sale date. In almost every other jurisdiction,
selling an invention or offering the invention for sale presents an immediate
bar to patenting the invention.
Patent Attorney - One of the most expensive types of attorney, but
certainly worth every penny. They must have special training and pass a
special bar exam which requires them to have either a science or engineering
degree, special lab experience, or something deemed equivalent.
Patent Cooperation Treaty (PCT) - An international filing system for filing
patents in multiple international jurisdictions.
Patent Term - The period in which a patent is enforceable. 3.5-, 7.5-, and
11.5-year maintenance fees must be paid for utility patents. If all
maintenance fees are paid, the term of a utility patent is 20 years from the
filing date. A design patent term is 12 years and does not require the
payment of maintenance fees.
Prior Art - That which is known in the field of the invention and which one
of ordinary skill in the art would consider relevant to determining the
patentability, i.e., the novelty and obviousness, of an application at the time
of the invention.
Prosecution- The process by which a patent attorney or agent interacts
with the USPTO to obtain a patent.
Provisional Application - This is a way to establish a filing date for your
patent application without incurring all of the costs for filing a patent
application. It is a good way to "test the market." A provisional application,
allows an applicant to use the "patent pending" designation, but does not
include claims and is not examined by the patent office. The applicant has 1
year from the filing date of the provisional application to file a non-provisional
application if the applicant wants to take advantage of the
original filing date. Applicants should discuss the advantages and
disadvantages of filing a provisional application with their attorney.
Reexamination - After issuance of a patent, upon a request from a third
party that the USPTO take another look at the patent, this is another
examination of the patent. The USPTO will not get involved unless an
examiner decides a substantial question of patentability exists. On the
reexamination, the USPTO can consider prior art it did not consider in the
first examination.
Right to Exclude - The right of a patent holder is the right to exclude
others from making, practicing, importing, or selling their invention.
United States Patent & Trademark Office (USPTO) - The governmental
agency charged with determining the patentability of all US applications,
issuing all US patents, maintaining a patent database, and acting as a
Receiving Office for some international applications (see peT).
Willful Infringement -The intentional infringement of a patent despite
knowledge of the existence of the patent. The existence of willful
infringement allows for treble damages. If someone notifies you that you
are infringing their patent, you may be considered a willful infringer unless
you get an independent legal opinion that says you are not. (You generally
should not your in-house counsel in preparing this opinion.) |