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
  • PPH – Patent Prosecution Highway
  • 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 Estoppel: A legal principle that prevents a party from asserting a claim or defense that is inconsistent with a previous position they have taken.
  • 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.