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.)