Abandonment (patents)

A patent application becomes abandoned for failure to file a complete and proper reply as the condition of the response may require within the time period provided under 37 CFR § 1.134 and § 1.136 unless an office action indicates otherwise. Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR §§ 1.135 and 1.138, is one which is removed from the office docket of pending applications.

Absolute Priority

In most foreign countries, any publication before filing is prior art, even if it is the inventor’s own publication. This contrasts with the grace period in the US (and a few other countries) where at least some public disclosure by the inventor during the grace period before the filing date of an application do not count as prior art.

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Advisory Notice

An Advisory Action is a special kind of Office Action, sent if an applicant files a reply to a Final Office Action within two months, but the reply does not place the application in condition for allowance. The Examiner would then issue an Advisory Action, explaining why the reply did not place the application in condition for allowance. If an applicant wants to reply to the Advisory Action or to appeal the Final Office Action, the date used for the purpose of calculating filing extension fees is 3 months from the date of the final rejection or the mailing date of the advisory action, whichever is later (but not more than six months, total, from the date of the Final Office Action). In effect, this gives the applicant a break on late-filing fees if the Examiner issues the Advisory Action after the normal three-month reply period.

Aggregation

A patent claim which just recites a list of elements, without indicating how they are interrelated or assembled into an invention. For example, “A door lock comprising a knob, a latch bar and a plurality of tumblers.” A claim should not be rejected on the ground of “aggregation”

AIPLA

An acronym for the American Intellectual Property Law Association. The AIPLA is an U.S. national organization for patent, trademark, copyright and trade secret law practitioners and owners.

Alice Rejection

The 2014 Supreme Court Alice Corp v. CLS Bank International case which held Alice Corp’s claims on a method of electronic escrow to be invalid because the claims were drawn to an abstract idea, and which further said that implementing those claims on a computer was not enough to transform that idea to a patentable invention. This called into question the patentability of literally thousands of existing patents and pending applications, and led to the USPTO pulling back notices of allowance on a large number of cases which had been allowed to reject them based on Alice. These rejections, and later rejections of pending cases based on section 101 patentable subject matter which quote the Alice decision, have become known as “Alice rejections”.

Allowed, Allowance

When the examiner decides that a claim in an application is patentable, it is “allowed”. If all of the claims in the application are allowed, the examiner will issue a “Notice of Allowance and Issue Fee Due”, indicating that examination of the application is finished, and commencement of a deadline for paying the issue fee.  Often, a Notice of Allowance is accompanied by a document entitled “Reasons for Allowance”, in which the examiner explains why he/she thinks the claims are patentable. Once the issue fee is paid, the USPTO will issue the patent.

notice of allowance
America Invents Act

The America Invents Act is a United States federal law enacted on November 29, 1999 as Public Law 106-113. In 2002, the Intellectual Property and High Technology Technical Amendments Act of 2002, Public Law 107-273, amended AIPA. In the American Invents Act, the U.S. transitioned from a First to Invent patent system to a system where priority is given to the First inventor to File a patent application. The America Invents Act is the most significant change to the U.S. patent system since 1952.

Annuity

Annual payment to keep patent or patent application alive in some countries. Unlike the US, most countries which have annuities require them to be paid both during the pendency of the patent application and after the application issues as a patent.  In some countries, annuities must be paid every year starting from the filing of the application, in others the annuities start some years after the filing date. In the US, similar fees are due only after the patent is issued.

Apparatus Claim

A claim which describes a device or product: “A widget comprising a gronkheiser coupled to a portoflan armature.”

Appeal

An appeal asks a higher authority to review a decision. Some decisions of examiners (i.e. final rejections) may be reviewed by appeal to the Patent Trials and Appeals Board (PTAB). Some PTAB decisions may be appealed to the Court of Appeals for the Federal Circuit (CAFC). Some decisions which are not appealable may be overturned by petitioning the Commissioner of Patents. The backlog of Appeals is great, as such the time for Appeal to be considered can be years.

Application (patent)

An application for patent filed under 35 U.S.C. 111(a) includes all types of patent applications (i.e., utility, design, plant, and reissue) except provisional applications. The non-provisional application establishes the filing date and initiates the examination process. A non-provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee.

Assignment

A document that is used to transfer ownership of a patent.

Beauregard Claim

A Beauregard Claim is named after the case (in re Beauregard 53 F.3d 1583 (Fed. Cir. 1995; which declared Beauregard Claims to be patentable. A Beauregard Claim is really a claim to a computer-implemented method, but it is written to claim a physical product – a computer-readable storage medium containing code for causing a computer to perform the method.

Benefit Claim

The claiming by an applicant in a nonprovisional application of a benefit of an invention disclosed in a prior-filed copending (under examination at the same time) provisional or nonprovisional application, or international application designating the U.S. for the purposes of securing an earlier-effective filing date for the nonprovisional application

Claims

Claims define the invention and are what aspects are legally enforceable. The specification must conclude with a claim specifically pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be clearly understood by reference to the description.

Common Inventor

A common inventor is an inventor whose name is listed on multiple patent applications or granted patents, making the inventions at least partially the work of the same person.

Counterpart

A Counterpart is an application filed in a foreign patent office that is substantially similar to (like) the patent application filed with the USPTO and is based upon some or all of the same invention. The two applications would generally have the same applicant.

Declaration

A declaration is a document which must be signed by the inventor(s) and filed in the USPTO, in which the inventor affirms that he/she believes he/she is an inventor, that the application was filed with his/her authorization, and acknowledging the penalties for filing a false declaration.  Note that the requirements for declarations were changed by the America Invents Act, effective September 16, 2012 – applications filed before that time need to have an “old form” declaration (SB/01) and applications filed after that date need an “AIA compliant” declaration (AIA/01).

Design Patent Application

A design patent application is an application for a patent to protect against the unauthorized use of new, original, and ornamental designs for articles of manufacture.

Drawing (patent)

Patent drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete but are only required if drawings are necessary for the understanding of the subject matter sought to be patented.

Enforceability of Patent

Patent enforceability is the right of the patent owner to bring an infringement suit against a party who, without permission, makes, uses or sells the claimed invention. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action.

Ex Parte Quayle

Ex Parte Quayle is noted in an Office Action when an application is in condition for allowance, except for “formal matters” – usually, correction of minor and obvious mistakes. Your response to the Action will be limited to correcting these mistakes.

Examiner's Amendment

In most cases, if an applicant wants to change something in an application, the applicant will have to file a formal amendment. However, sometimes if an examiner finds a very minor error, and the application is otherwise in condition for allowance, he will offer to fix the error through an examiner’s amendment. The examiner will normally call the applicant’s attorney and ask for permission to enter the amendment, and if permission is granted, the amendment will be made without the need for any filing by the applicant.

First Inventor to File

If two applications claim the same invention, the first inventor to file (that is, the application with the earlier effective filing date) will receive the patent. This change to “first inventor to file” in the 2011 America Invents Act eliminates the need to inquire as to date of invention, although the Act as passed does not go all the way to a pure “first to file” system, where nothing matters but when the application was filed. The applicant still needs to be an inventor – just anyone cannot get a patent simply by filing first – and the patent goes to the application with the earliest “effective date”. Derivation proceedings resolve conflicts where a later-filing inventor believes that the earlier-filing inventor derived his invention from him. The effective date for an application will be its actual filing date or, if the inventor published less than a year before the filing date, the date of publication. The new FITF rules apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.

Information Disclosure Statement (IDS)

An information disclosure statement is a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office in a non-provisional patent application filed under 35 U.S.C. § 111(a) to comply with applicant’s duty to submit to the office information which is material to the patentability of the invention claimed in the non-provisional application.

Intellectual Property

Intellectual property pertain to creations of the mind – creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. There are four ways to protect intellectual property – patents, trademarks, copyrights or trade secrets.

International Application (patents)

An international application is an application filed under the Patent Cooperation Treaty.

Jepson Claim

A special claim form which starts “An improved widget of the kind having…”, followed by the prior art elements of the invention, and then says “in which the improvement comprises”, followed by a description of the novel part of the invention. Jepson claims are similar to the “two part claim form” required in the EPO and some other foreign patent systems.

Kind Codes

WIPO Standard ST. 16 codes (kind codes) include a letter, and in many cases a number, used to distinguish the kind of patent document (e.g., publication of an application for a utility patent (patent application publication), patent, plant patent application publication, plant patent, or design patent) and the level of publication (e.g., first publication, second publication, or corrected publication).

Maintenance Fee

There are maintenance fees to be paid to the US Patent and Trademark Office at 3.5 years, 7.5 years and 11.5 years from the date of issue of a US patent. The fees may be paid no earlier than six months before the due date, and may be paid during the “grace per filing refusal iod” of another six months after that (with a surcharge). If the maintenance fees are not paid, the patent expires at the end of the grace period (4, 8 or 12 years after issue). No maintenance fees are due during the pendency of a patent application, unlike annuities in most foreign countries, which are paid every year throughout the life of a patent.

Method Claim

A Method Claim is a claim which covers a way of doing something, usually expressed as a series of “steps”: “A method of opening a soda bottle comprising the steps of gripping the cap and twisting counterclockwise.

NOA-Notice of Allowance (patents)

A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration.

Notices of allowance are only issued for applications that have been filed based on “intent to use”. The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned.

Novelty Search

A novelty search is a search made to determine whether a particular invention is novel when it is invented. This may be done to check whether an invention may qualify for a patent.

Obvious

In order to be patentable, an invention must not be “obvious” to a “person having ordinary skill in the art to which the invention pertains” – sometimes referred to by the acronym “PHOSITA”. Obviousness is defined in section 103 of the US Patent Law. Basically, “not obvious” is a way of saying “an invention must be more than just a simple development from what went before.” The obviousness test is similar to the “Inventive Step” requirement in many foreign countries. Generally, when a claim is rejected as “obvious”, this means that even if the same thing was not present in any one reference, the Examiner believes that the claimed invention would be obvious because of a combination of two or more references.

Office action

An office action is a letter from a trademark examining attorney setting forth the legal status of a trademark application. There are several types of office actions: examiner’s amendments, priority actions, non-final Office actions, final Office actions, and suspension inquiry letters.

Omnibus Claim

An Omnibus Claim is a claim which merely claims the invention without any detail, as “the widget as shown in the drawings” or “the frammis as described in the specification”. These claims are not permitted in a utility patent in the US, however they are effectively required in design and plant patents.

Patent

Patents are a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

Patentable Subject Matter

Subject matter that is eligible for patent protection, assuming it meets the standards of novelty, utility and non-obviousness.  This may include “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”.

Patent Cooperation Treaty (PCT)

An international treaty, finalized in 1970, allowing a national or resident of a member country to file a single application in his/her own country, which can be filed in any member country at a later date. A patent application filed under the PCT is called an international application, or PCT application

A PCT application does not itself result in the grant of a patent, since there is no such thing as an “international patent”, and the grant of patent is a prerogative of each national or regional authority. In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases to proceed towards grant of one or more patents. The PCT procedure essentially leads to a standard national or regional patent application, which may be granted or rejected according to applicable law, in each jurisdiction in which a patent is desired.

Patent Act of 1790

The Patent Act of 1790 is the first patent statute passed by the federal government of the United States. It was enacted on April 10, 1790, about one year after the constitution was ratified and a new government was organized. The law was concise, defining the subject matter of a U.S. patent as “any useful art, manufacture, engine, machine, or device, or any improvement thereon not before known or used.”[1] It granted the applicant the “sole and exclusive right and liberty of making, constructing, using and vending to others to be used” of his invention. [2]

Patent Infringement

Patent infringement is the unauthorized making, using, offering to sell, selling or importing into the United States any patented invention.

Patent Pending

Patent Pending is a phrase that often appears on manufactured items. It means that someone has applied for a patent on an invention that is contained in the manufactured item. It serves as a warning that a patent may issue that would cover the item and that copiers should be careful because they might infringe if the patent issues. Once the patent issues, the patent owner will stop using the phrase “patent pending” and start using a phrase such as “covered by U.S. Patent Number XXXXXXX.” Applying the patent pending phrase to an item when no patent application has been made can result in a fine.

Practioner

One who stands for or acts on behalf of another. A patent attorney or patent agent may represent the inventors named in a patent application.

Precautionary Designation

Designation of a Contracting State in an international application filed under the Patent Cooperation Treaty which must be confirmed prior to 15 months from the priority date.

Prior Art

Prior art defines “what went before” – publications, earlier patents, public use or sale – anything which is relevant to the patentability of an invention because it shows that the invention was known before the applicant filed his patent application (under the First Inventor to File rules applicable after March 16, 2013) or before the inventor invented the invention

Protest

The USPTO has a procedure whereby someone may file a “protest” with an examiner, bringing prior art references to the attention of the examiner with respect to a pending patent application. This procedure is very seldom used, as it’s a bit of a “Catch 22″ – a protest may only be filed with reference to a specific application, identified by serial number, but it must be filed before the application is published. If the application is not published yet, how is anyone to know of its existence and its serial number? Once it’s published, you know it’s there and what the serial number is, but you’re too late to Restriction Requirement – the Examiner believes there are more than one invention in the application which are patentably distinct from each other. Since the rule is, “one invention to a patent”, you will have to elect one invention to proceed with. The claims directed to that invention will be examined, and the claims directed to the other invention(s) will be withdrawn from consideration. You can file Divisional” applications to pick up the withdrawn claims at any time until the parent application issues.

Provisional Patent Application

A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. § 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C § 111(a) and automatically becomes abandoned after one year. It also allows the term “Patent Pending” to be applied.

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Search

After an application is filed, the USPTO will conduct a search of USPTO records for prior art as part of the official examination process. The official search is not done for the applicant but rather to determine whether the claims applied for can be patented.

Small Entity

A small entity is a designation for individuals, not-for-profits, or companies with less than 500 employees, more or less. Most (but not all) USPTO fees are reduced for Small Entities.

Trademark

Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

USPTO

An acronym for the United States Patent and Trademark Office, designation became effective April 3, 2000; a result of the American Inventors Protection Act of 1999.

Utility Patent

A utility patent may be granted to anyone who invents or discovers any new, useful, and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

Walker Process claim

A Walker Process claim is an assertion by an infringement defendant that the patent it is being sued for infringing was procured by fraud so that the plaintiff can attempt to exert monopolistic power. The word “claim” in “Walker Process claim” does not mean “patent claim”. Rather, the word “claim” means simply “assertion”, and a “Walker Process” claim is a specific kind of defense to an infringement suit in which the defendant raises an anti-trust issue related to fraud in procuring the patent in order to prevent the plaintiff from enforcing the patent.

*CFR-Code of Federal Regulations
**U.S.C-United State Code

An abstract is a brief (150 word or less) summary of a patent, usually printed on the first page. American Inventors Protection Act (AIPA)