By J.D. Houvener
Patent Attorney and Founder
Patent Attorney and Founder
Bold Patents’ Glossary of Important Acronyms and Patent Terms
Acronyms
- USPTO – United States Patent and Trademark Office
- PSO – Patent Search & Opinion
- PPA – Provisional Patent Application
- NPA – Nonprovisional Patent Application
- PCT – Patent Cooperation Treaty
- IP – Intellectual Property
- NDA – Non-Disclosure Agreement
- CSA – Client Service Agreement
- PTAB – Patent Trial and Appeal Board
- FTO – Freedom to Operate
- PGR – Post-Grant Review
- AIA – America Invents Act
- RCE – Request for Continued Examination
- IDS – Information Disclosure Statement
- TSM – Teaching, Suggestion, Motivation
- ITC – International Trade Commission
- CIP – Continuation-In-Part
- NPE – Non-Practicing Entity
- PPH – Patent Prosecution Highway
- ODP – Obviousness Double Patenting
- WIPO – World Intellectual Property Organization
Terms
- Abstract: A brief summary of the invention included in a patent document.
- Abandonment: The status of a patent application that has been voluntarily or involuntarily discontinued by the applicant.
- Amendment: A change made to the claims or specification of a patent application.
- Anticipation: A ground for rejecting a patent claim based on the existence of prior art disclosing the claimed invention.
- Appeal Brief: A written argument submitted to a patent office challenging a rejection of patent claims.
- Assignment: The transfer of rights to a patent from one party to another.
- Claim Element: A component or limitation of a patent claim.
- Claim Limitations: The specific elements or features that define the scope of a patent claim.
- Continuation Application: A patent application filed by the same applicant as a previous application, claiming priority to the earlier application.
- Counterclaim: A claim made by a defendant in response to a plaintiff’s claim in a patent infringement lawsuit.
- Dependent Claim: A patent claim that depends on another claim in the same patent.
- Disclosure: The act of making an invention available to the public.
- Divisional Application: A patent application that is divided out of a previously filed application to pursue claims distinct from those in the original application.
- Doctrine of Equivalents: A legal principle that extends patent protection to minor variations of a patented invention.
- Enablement: A requirement for patentability where the patent application must enable one skilled in the art to make and use the invention without undue experimentation.
- Examiner: A patent office official responsible for examining patent applications.
- Examiner’s Amendment: An amendment to a patent application made by the examiner during prosecution.
- Ex Parte Reexamination: A reexamination of a granted patent initiated by a third party.
- Experimental Use Exception: A defense against patent infringement for activities performed solely for experimental purposes.
- Final Rejection: A rejection of patent claims that is not subject to further amendment or argument without filing an appeal.
- First Action Interview: An interview between an applicant and an examiner before the issuance of a first office action.
- Freedom to Operate: The ability to commercialize a product or process without infringing on the intellectual property rights of others.
- Grace Period: A period of time during which certain public disclosures of an invention do not preclude patentability.
- Grounds of Rejection: The legal basis for rejecting patent claims, such as anticipation, obviousness, or lack of enablement.
- Infringement: The unauthorized use, manufacture, or sale of a patented invention.
- Interference Proceeding: A proceeding to determine priority of invention when two or more patent applications claim the same invention.
- International Patent Application: A patent application filed under the Patent Cooperation Treaty (PCT) that seeks patent protection in multiple countries.
- Invalidity Defense: A defense against a claim of patent infringement asserting that the patent is invalid.
- Jurisdiction: The authority of a court or administrative agency to hear and decide a case.
- License Agreement: An agreement granting permission to use patented technology under specified conditions.
- Maintenance Fee: A fee paid to keep a patent in force after it has been granted.
- Non-Obviousness: A requirement for patentability where the invention must not be obvious to a person having ordinary skill in the art to which the invention pertains.
- Non-Provisional Application: A formal patent application that is examined by a patent office and, if approved, may lead to the grant of a patent. Unlike a provisional application, a non-provisional application requires a detailed description of the invention, formal claims, and other necessary documentation for examination.
- Notice of Allowance: A written notification that patent claims have been approved by a patent office.
- Obviousness: A ground for rejecting a patent claim based on the invention’s obviousness to a person having ordinary skill in the art.
- Office Action: A written communication from a patent office regarding the status of a patent application.
- Patent: A legal protection granted to inventors that gives them exclusive rights to their inventions for a certain period.
- Patentability: The criteria that an invention must meet to be eligible for patent protection.
- Patent Claim: A statement that defines the scope of protection provided by a patent.
- Patent Cooperation Treaty (PCT): An international treaty that facilitates the filing of patent applications in multiple countries through a single application.
- Patent Family: A group of patents and patent applications that share the same priority date and common subject matter.
- Patent Infringement: The unauthorized use, manufacture, or sale of a patented invention.
- Patent Litigation: A legal action to enforce or challenge patent rights.
- Patent Owner: The person or entity that owns the rights to a patent.
- Patent Portfolio: A collection of patents owned by a single entity.
- Patent Prosecution: The process of interacting with a patent office to obtain a patent.
- Patent Term: The period of time during which a patent remains in force.
- Prior Art: Information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality.
- Priority Date: The earliest date on which an application for a patent was filed, used to determine the novelty and non-obviousness of an invention.
- Provisional Patent Application: A temporary patent application that establishes an early filing date but does not result in the grant of a patent.
- Reexamination Request: A request for reexamination of a granted patent by a third party.
- Request for Continued Examination (RCE): A request to reopen prosecution of a patent application after a final rejection.
- Restriction Requirement: A requirement by a patent examiner to restrict a patent application to one invention when it claims multiple inventions.
- Specification: The written description of the invention and how to make and use it, included in a patent application.
- Sufficiency of Disclosure: The extent to which a patent application provides enough information to enable one skilled in the art to make and use the invention.
- Terminal Disclaimer: A statement filed with a patent office to limit the term of a patent that extends beyond the term of another patent.
- Terminal Rejection: A rejection of patent claims that is not subject to further amendment or argument without filing an appeal.
- Trade Secret: Information that is kept confidential and provides a competitive advantage to its owner.
- Trademark: A word, phrase, symbol, or design that identifies and distinguishes the source of goods or services.
- Transfer of Ownership: The transfer of patent rights from one party to another.
- Validity: The legal status of a patent indicating that it meets all the requirements for patentability.
- Written Description Requirement: A requirement for patentability where the patent application must contain a written description of the invention sufficient to enable one skilled in the art to make and use it.
- Assignee: The entity to which the rights to a patent have been assigned.
- Cease and Desist Letter: A letter demanding that an alleged infringer stop using the patented invention.
- Claim Construction: The interpretation of the language used in the patent claims to determine their scope.
- Claim Drafting: The process of crafting the language of patent claims to define the scope of protection sought.
- Claim Interpretation: The process of determining the meaning and scope of patent claims.
- Commercialization: The process of bringing a product or service to market.
- Conflict of Interest: A situation in which a person or entity has competing interests that could bias their decision-making.
- Contribution: The inventive concept or improvement contributed by an inventor to the overall invention.
- Cross-Licensing Agreement: An agreement between two or more parties to license each other’s patents.
- Damages: Monetary compensation awarded to a patent holder for infringement of their patent rights.
- Design Patent: A type of patent that protects the ornamental design of a functional item.
- Direct Infringement: Infringement that occurs when someone makes, uses, sells, offers to sell, or imports a patented invention without permission.
- Doctrine of Laches: A legal doctrine that bars a party from bringing a claim if they unreasonably delay in asserting their rights, resulting in prejudice to the opposing party.
- Enforceability: The ability to enforce patent rights against infringing parties.
- Equitable Estoppel: A defense against patent infringement based on a patent holder’s conduct that leads another party to believe they will not enforce their patent rights.
- Estoppel: A legal principle that prevents a party from asserting a claim or defense that is inconsistent with a previous position they have taken.
- Exhaustion Doctrine: A legal principle that limits a patent holder’s ability to control the use or sale of a patented product after it has been lawfully sold.
- Extrinsic Evidence: Evidence outside the patent document used to interpret the meaning of patent claims.
- Fair Use: A defense against copyright or trademark infringement that allows limited use of a copyrighted work or trademark without permission.
- Functional Claiming: Drafting patent claims to cover the function or result achieved by an invention rather than specific structures or elements.
- Holding: The legal conclusion reached by a court in a case.
- Indirect Infringement: Infringement that occurs when someone contributes to or induces another party to infringe a patent.
- Injunction: A court order requiring a party to stop engaging in a particular activity, such as infringing a patent.
- Inter Partes Review (IPR): A proceeding before the Patent Trial and Appeal Board (PTAB) to challenge the validity of a patent claim based on prior art
- Inventive Step: The level of innovation or non-obviousness required for an invention to be patentable.
- Joint Infringement: Infringement that occurs when multiple parties collectively perform all the steps of a patented method.
- Joint Ownership: Ownership of a patent by two or more parties who have contributed to the invention.
- Licensing: Granting permission to another party to use a patented invention in exchange for royalties or other compensation.
- Markman Hearing: A hearing held by a court to determine the meaning and scope of patent claims.
- Means-Plus-Function Claim: A patent claim that recites a function to be performed rather than the structure or elements that perform the function.
- Non-Disclosure Agreement (NDA): An agreement that protects confidential information shared between parties by restricting its disclosure to third parties.
- Novelty: The requirement for patentability that an invention must be new or original.
- On-Sale Bar: A statutory bar to patentability that prohibits the granting of a patent if the invention has been offered for sale or sold more than one year before the patent application was filed.
- Patent Agent: A professional authorized to represent inventors before the patent office in patent prosecution matters.
- Patent Bar: The group of individuals authorized to represent inventors before the patent office in patent prosecution matters.
- Patent Cooperation Treaty (PCT) Application: An international patent application filed under the Patent Cooperation Treaty (PCT) that seeks patent protection in multiple countries.
- Patent Drafting: The process of preparing a patent application, including describing the invention and drafting the patent claims.
- Patent Examiner Interview: An interview between a patent applicant and a patent examiner to discuss the examination of a patent application.
- Patent Infringement Analysis: An analysis of whether a product or process infringes on a patent.
- Patent Office Action: A written communication from a patent office regarding the status of a patent application.
- Patent Pending: The status of a product or process for which a patent application has been filed but not yet granted.
- Patent Prosecution History: The record of communications between a patent applicant and a patent office during the examination of a patent application.
- Patent Search: A search of prior art to determine the novelty and non-obviousness of an invention before filing a patent application.
- Patentability Opinion: An opinion assessing the likelihood of obtaining a patent for an invention.
- Post-Grant Review (PGR): A proceeding before the Patent Trial and Appeal Board (PTAB) to challenge the validity of a patent claim based on any ground of invalidity.
- Precedent: A legal decision that serves as authority for future similar cases.
- Priority Claim: A claim to the priority date of an earlier-filed patent application for the same invention.
- Pro Se: Representing oneself in a legal proceeding without the assistance of a lawyer.
- Public Use: The use of an invention in public before a patent application is filed, which may bar the invention from being patented.
- Reissue Application: A patent application filed to correct errors in a granted patent.
- Secondary Considerations: Factors considered by a court or examiner when assessing the patentability or validity of an invention, such as commercial success, long-felt but unsolved need, and copying by others.
- Terminal Disclaimer: A statement filed with a patent office to limit the term of a patent that extends beyond the term of another patent.
- Terminal Rejection: A rejection of patent claims that is not subject to further amendment or argument without filing an appeal.
- Utility Patent: A type of patent that protects new and useful processes, machines, articles of manufacture, or compositions of matter.
- Written Description Requirement: A requirement for patentability where the patent application must contain a written description of the invention sufficient to enable one skilled in the art to make and use it.