- Glossary of patent legal concepts
(patents for inventions)
Overviews Patents · History
Economics · Societal views
Processes Application · Prosecution
Licensing · Infringement
Patentability Patentable subject matter
Novelty · Utility
Person skilled in the art
Prior art · Inventorship
Additional requirements Sufficiency of disclosure
Unity of invention
By region / country Europe
Subject-matter Biological patent · Gene patent
Business method · Tax patent
Chemical patent · Software patent
Category · Glossary
This is a list of legal concepts relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.
Contents: A B C D E F G H I J K L M N O P Q R S T U V W X Y Z
The reply of an applicant to an office action must be made within a prescribed time limit. If no reply is received within the time period, the application may be considered, depending on the jurisdiction, as abandoned or deemed to be withdrawn, and, therefore, no longer pending.
A fee to be paid to maintain a patent or a patent application in force. Also called "maintenance fee" or "renewal fee".
An application for a patent, or patent application, is a request by a person or company to the competent authority (usually a patent office) to grant him a patent. By extension, a patent application also refers to the content of the document which that person or company filed to initiate the application process. This document usually contains a description of the invention and at least one claim used to define the sought scope of protection.
In outdated German patent law, the second reading, or publication, of a patent application.
Catch and release
In the Patent Cooperation Treaty (PCT), "Chapter I" refers to the prosecution procedure when no demand under Article 31 PCT is made. The states selected under Chapter I by the applicant are called "designated States".
In the PCT, "Chapter II" refers to the prosecution procedure when a demand under Article 31 PCT is made. An international preliminary examination is conducted in this case. The demand indicates the Contracting State or States in which the applicant intends to use the results of the international preliminary examination ("elected States").
A noun phrase defining the extent of the protection conferred by a patent, or the extent of protection sought in a patent application.
Clearance search and opinion
A search done on issued patents or on pending patent applications to determine if a product or process infringes any of the claims of the issued patents or pending patent applications. These searches and opinions are also called freedom-to-operate searches and opinions. See Patent infringement.
Common general knowledge
A legal concept used notably when assessing whether an invention involves an inventive step and whether the disclosure of the invention is sufficiently clear and complete for a skilled person in the art to be able to carry out the invention. The common general knowledge "is the common knowledge in the field to which the invention relates." The information "must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in that art before it becomes part of their common stock of knowledge relating to the art, and so part of the common general knowledge." 
Regarding the inventive step assessment, "[if] information is part of the common general knowledge then it forms part of the stock of knowledge which will inform and guide the skilled person's approach to the problem from the outset. It may, for example, affect the steps it will be obvious for him to take, including the nature and extent of any literature search." 
Using compulsory licenses, a government may force a patent proprietor to grant use to the state or others. Usually, the holder does receive some royalties, either set by law or determined through some form of arbitration.
In United States law, an active patent application, prior to final action, may give rise to additional applications for additional claims carrying the priority date of the original application. With the move to published applications, this has become a common way of producing submarine patents.
Under European patent practice, a legal approach, now abandoned by the European Patent Office (EPO), for assessing whether an invention was patentable. The approach consisted in establishing whether the "contribution to the art" made by the invention was only in a field excluded from patentability by Article 52(2) and (3) EPC and, if so, the application could be refused. The EPO now applies the sometimes named "any hardware" or "any technical means" approach, notably formulated in EPO Board of Appeal decisions T 258/03 (Auction Method/Hitachi) and T 424/03 (Microsoft).
A publication intended to prevent the grant of a patent to a competitor by placing information in the public domain.
An implicit cross license where the licensor can terminate a patent license if the licensee turns around and sues the licensor for infringing a patent.
The act of developing an alternative apparatus or method (which may in itself also be a patentable invention), that does not infringe upon an issued patent. Also used as a noun.
Under the Patent Cooperation Treaty (PCT), a national patent office of or acting for a State designated by the applicant under Chapter I of the PCT. See also "Chapter I" above.
Divisional patent application
A type of patent application which contains matter from a previously-filed application.
Doctrine of equivalents
A legal rule that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention.
The protection of one single invention by two patents usually owned by the same proprietor.
Under the Patent Cooperation Treaty (PCT), a national patent office of or acting for a State elected by the applicant under Chapter II of the PCT. See also "Chapter II" above.
In a patent or patent application, "a specific combination of features or a specific mode of carrying out the invention, by contrast to a more abstract definition of features which can be carried out in more than one way."
A patent that is required to make a certain product is described as essential.
Exhaustion of rights
A legal concept stating that rights in a product are exhausted by its sale.
Examination support document
According to USPTO patent rules, the examination support document (ESD) is a document submitted by an applicant that lists prior art and identifies how the prior art applies to the claims in a pending patent application.
A provision in a patent license that limits the scope of what the patent owner authorizes a manufacturing licensee (that is, a licensee that manufactures a patented product or performs a patented process) to do in relation to the patent, by specifying a defined field of permissible operation or specifying fields from which the licensee is excluded.
The filing date of a patent application is the date the patent application was filed in one or more patent offices, i.e. the date on which that application is legally accepted at the patent office. That date is typically the date on which the documents are deposited at the office, but may be later if there are defects in the documents. See also Priority right.
In the United States, if a patent application is mailed to the United States Patent and Trademark Office (USPTO) by Express Mail, Post Office to Addressee, then the date the application was deposited in the post office is the filing date.
First to file
A legal concept in which the right to a patent for an invention is determined by the first person to file for a patent to protect that invention, cf. First to invent.
First to invent
A legal concept in which the right to a patent for an invention is determined by the first person to make that invention, cf. First to file.
Flash of genius
A test for patentability formerly used by the United States Federal Courts.
A freedom-to-operate search is a search aimed at establishing whether a product or process is covered by patent rights, including patent and patent applications. If it does, commercially exploiting the product or process may lead to patent infringement. Freedom-to-operate analyses and opinions are aimed at determining the risk of patent infringement in that respect. These searches and opinions are also called clearance searches and opinions.
Further medical use
See Second medical use.
In the United States, indirect infringement can occur by contributory infringement or induced infringement.[vague]
A requirement of many patent systems, requiring that an invention be capable of industrial applicability in order for a patent to be granted for that invention.
Information disclosure statement
In United States patent law, a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during patent prosecution.
A type of proceedings, particularly at the USPTO, to decide who is entitled to the grant of a patent for an invention.
An invalidity opinion, also called "validity opinion", is a legal opinion provided by an attorney on how a court might rule on the validity of an issued patent. Invalidity opinions are often sought prior to patent litigation. See Patent infringement.
A confidential document written by a scientist or engineer for use by a company's patent department, or by an external patent attorney, to determine whether patent protection should be sought for the described invention.
Invention promotion firm
A firm providing services to inventors to help them develop or market their inventions.
A patentability requirement according to which an invention should be sufficiently inventive, i.e. non-obvious, in order to be patented.
The actual devisor of an invention that is the subject of a patent.
A published, unexamined Japanese patent application.
An examined and approved Japanese patent application.
An old term for a patent, sometimes used in reference to a bound formal copy of a patent provided by the USPTO to the inventor upon a patent's issue.
A criterion in United States patent law, according to which a claimed process is patent-eligible (under § 101) if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See also: in re Bilski.
A fee to be paid to maintain a patent or a patent application in force. Also called "annuity fee" or "renewal fee".
A pre-trial hearing in the United States court system during which a judge hears testimony from both parties on the appropriate meanings of the relevant key words used in the claims of a patent, the infringement of which is alleged by the plaintiff.
In United States patent law, an Information Disclosure Statement (IDS) reference to a communication with a patenting authority (e.g. office action response, or notice of allowance) in a related patent application. Based on the McKesson v. Bridge Medical decision where inequitable conduct was found where the applicant failed to notify the USPTO of such references. See also Inequitable conduct.
In United States patent law, an IDS reference to a court document (e.g. memorandum opinion, or a court order) pertaining to a litigation involving an application or a related patent/application. Based on the Marlow Industries, Inc. v. Igloo Products Corp. decision where the court found that the applicant had a duty to notify the USPTO of such references. See also Inequitable conduct.
In United States patent law, a patent may notably claim a process or method. The claim gives right to exclude performance of the process or method, regardless of the equipment or technology used to do so.
The prosecution phase wherein an international application filed under the Patent Cooperation Treaty (PCT) becomes subject to examination at a national level. In the United States, the term national stage is used instead—see 35 U.S.C. § 371.
A patentability requirement according to which an invention should be non-obvious in order to be patented.
A patentability requirement according to which an invention is not patentable if it was already known before the date of filing.
A formal report from a Patent Office examiner to an inventor or attorney detailing which claims in a patent application were allowed for later issue (publication) in a patent and which claims were rejected. The examiner gives reasons for allowance or rejection.
A concept of U.S. law in which the grant of a patent is prevented if the invention that is the subject of the patent application was on sale more than one year prior to the priority date.
Proceedings in which a third party opposes the grant of a patent in an attempt to prevent that grant, or have the patent revoked. Opposition proceedings may be pre- or post-grant.
A patent ambush occurs when a member of a standard-setting organization withholds information, during participation in development and setting a standard, about a patent that the member or the member's company owns, has pending, or intends to file, which is relevant to the standard, and subsequently the company asserts that a patent is infringed by use of the standard as adopted.
Formerly, in United States patent law, a legal document filed with the United States Patent Office. Caveats were discontinued in 1909. A caveat was like a patent application with a description of an invention and drawings, but without claims. It was an official notice of intention to file a patent application at a later date.
Classification of patents in technological areas for convenient retrieval during prior art searches.
Technical drawing in a patent application, that illustrates the invention. It may be required by law to be in a particular form.
A group of patents related by a common priority claim.
Patenting every possible way of doing something.
Commercially exploiting an invention claimed in a patent without permission of the patentee.
In United States patent law, an affirmative defense used in patent litigation after the defendant has been found to have infringed a patent.
A miniature model that shows how an invention works.
A term used to describe an invention for which a patent application is pending at a patent office. Used to mark products to alert people to the possible existence of a patent, thereby initiating the date from which damages may be claimed.
A consortium of at least two companies agreeing to cross-license patents and other IP rights relating to a particular technology.
A collection of patents owned by a single entity, such as an individual or corporation.
Pejorative term for certain patent holders that use patent infringement litigation threats in a manner considered unduly aggressive or opportunistic.
A process for monitoring newly issued patents on a periodic basis to see if any of these patents might be of interest.
A set of substantive requirements for a patent to be granted. An invention satisfying these requirements is said to be patentable.
An opinion as to whether an invention might be patentable. Such an opinion may be established by a patent attorney to assist an inventor or company into deciding whether to file a patent application.
Patentable subject matter
Patent systems exclude certain areas from the grant of patents. Material not so excluded is known as patentable subject matter.
A deal under which a company holding a patent on a drug pays a generic manufacturer to delay its launch of a cheap copy of the drug.
Person having ordinary skill in the art
A hypothetical person having typical knowledge of a particular field or art, used such as to assess whether an invention is nonobvious or whether the specification of the patent enables one to practice what is claimed.
Petition to make special
A United States patent law procedure that requests the U.S. Patent and Trademark Office to accelerate a patent's prosecution, based on a showing that certain conditions are met. For example, if the inventor is old or sick, or the field of invention is a favored area of science that significantly enriches people's lives, The U.S. PTO may allow such a petition.
In the United States, an abbreviation for "person having ordinary skill in the art".
Pejorative term. Generally refers to the willful infringement of a patent. May also be applied to the vigorous enforcement of a patent.
Material publicly available prior to the priority date of an application which may anticipate the subject of and prevent the grant of a patent.
The priority right is a right to claim priority from an earlier application. Claiming priority gives the later filed application a priority date of the filing date of the earlier application.
Under the case law and practice of the European Patent Office (EPO), an approach to assess whether an invention involves an inventive step. See Inventive step under the European Patent Convention (EPC).
Prosecution history estoppel
In certain states, most notably the United States, actions during prosecution can estop a party from certain later actions or assertions.
In United States patent law, a legal document filed in the United States Patent and Trademark Office (USPTO) that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application within one year.
Provisional (patent) rights or provisional protection
- "for the period of provisional protection, between the moment of publication of the patent application and the moment of the publication of the patent grant, Article 67 EPC requires Member States to ensure that the applicant can claim compensation reasonable in the circumstances from any person who has used the invention in their territory. Following publication of the mention of the patent grant, full compensation of any losses suffered may be claimed, depending also on whether the infringer knew or should have known that he or she was infringing." 
Reading a claim
The process of establishing patent infringement involves "reading" a claim onto the technology of interest. If all of the claim's elements are found in the technology, the claim is said to "read on" the technology; if a single element from the claim is missing from the technology, the claim does not literally read on the technology and the technology does not infringe the patent with respect to that claim. Also, the process of contesting or invalidating a patent can involve showing that the claim reads on prior art, i.e., the claim's elements are found in the prior art.
Reasonable and Non Discriminatory Licensing
A type of licensing typically used during standardisation processes.
Reduction to practice
In United States patent law, making or performing an invention (actual reduction to practice) or filing a patent application describing how to make and use an invention (constructive reduction to practice). Important for determining which party is "first to invent".
The examination of a granted patent, which can result in the revocation of that patent.
The prosecution phase wherein an international application filed under the Patent Cooperation Treaty (PCT) becomes subject to examination at a regional level. There are four regional patent treaties: the European Patent Convention, the Eurasian Patent Convention, the Bangui Agreement (see African Intellectual Property Organization or OAPI), and the Harare Protocol (see African Regional Intellectual Property Organization or ARIPO). See also National phase.
In some legislations, an exemption to the rights conferred by patents, pursuant to which performing research and tests for preparing regulatory approval does not constitute infringement for a limited term before the end of patent term.
Restitutio in integrum
In the European Patent Convention, a means of redress following a loss of right due to the non-observance of a time limit in spite of all due care.
In United States patent law, an obviousness rejection based on a single reference. Generally a case for an obviousness rejection requires the examiner to rely on 2 or more references. Sandor Obviousness stems from Ex Parte Sandor Nagy where the examiner relied on only a single reference to reject the claims at issue. Ultimately the case was remanded on appeal back to the examiner.
A report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable.
Second medical use
The patenting of a particular medical use of a molecule (or more generally product or composition), wherein a first particular use of a molecule is already known and, therefore, wherein the novel and inventive aspect lies solely in the second use of the molecule. Also known as further medical use.
See selection invention.
Skilled person (in the art)
Small entity status
In United States patent law, a status allowing small businesses, independent inventors, nonprofit organizations to file a patent application and maintain an issued patent for a reduced fee.
A patent in the field of computer software. Some types of inventions in the field of software are legally considered non-patentable subject-matter, depending on the jurisdiction. See also software patents under the European Patent Convention, under TRIPs Agreement, under United Kingdom patent law, under United States patent law, computer programs and the Patent Cooperation Treaty, software patent debate.
State of the art
A synonym for prior art.
A patent first published and granted long after the original application was filed.
Sufficiency of disclosure
An important requirement to be met by a patent in order to be validly granted. According to this requirement, an invention must be described in the application or patent in a sufficiently clear and complete manner to enable the person skilled in the art to carry out the invention.
Supplementary protection certificate
A sui generis right notably available for medicinal and plant protection products. The right comes into force after the corresponding patent expires and, for medicinal and plant protection products, has a maximum term (i.e., lifetime) of 5 years.
Swear back of a reference
A procedure under U.S. patent law whereby an inventor can get a patent even if the invention has become public before the patent application was filed.
A condition for an invention to be considered patentable under the case law and practice of the European Patent Office (EPO). Namely, an invention must notably have a technical character to be patentable. See Software patents under the European Patent Convention.
Term of patent
The maximum period during which it can be maintained in force.
An operation by which ownership of a patent or patent application changes (for instance as a result of a financial transaction).
In United States patent law, a phrase that links the preamble of a patent claim to the specific elements set forth in the claim which define what the invention itself actually is. The transitional phrase acts as a limitation on the claim, indicating whether a similar device, method, or composition infringes the patent if it contains more or fewer elements than the claim in the patent.
Unity of invention
A requirement that a patent application can relate only to one invention (or to a group of inventions so linked as to form a single general inventive concept, see for instance Unity of invention under the European Patent Convention).
A patentability requirement mainly used to prevent the patenting of inoperative devices such as perpetual motion machines.
A validity opinion, also called "invalidity opinion", is a legal opinion provided by an attorney on how a court might rule on the validity of an issued patent. Validity opinions are often sought prior to patent litigation. See Patent infringement.
- ^ Victoria Slind-Flor “Sun, EBay, Rock & Republic, Troyer: Intellectual Property”, Bloomberg.com July 1, 2008.
- ^ Article 4(1)(ii) PCT and Article 2(xiii) PCT.
- ^ Article 31(4)(a) PCT and Article 2(xiv) PCT.
- ^ Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd & Anor  EWHC 2413 (Pat) (15 October 2008), items 36-37.
- ^ Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd & Anor  EWHC 2413 (Pat) (15 October 2008), item 40.
- ^ Mark A. Lemley, Kimberly A. Moore, Ending Abuse of Patent Continuations, Boalt Working Papers in Public Law (University of California, Berkeley), Year 2003, Paper 20
- ^ European Patent Office Enlarged Board of Appeal opinion G 3/08 of May 12, 2010, Reasons 10.4, 10.5, 10.6, 10.7.
- ^ Opinion G 3/08 of May 12, 2010, Reasons 10.6.
- ^ Lemley, Mark A., Rational Ignorance at the Patent Office (February 2001). Northwestern University Law Review, Vol. 95, No. 4, 2001. Available at SSRN: http://ssrn.com/abstract=261400 or doi:10.2139/ssrn.261400
- ^ Article 2(xiii) PCT
- ^ Decision G 2/10 of the Enlarged Board of Appeal of the European Patent Office, August 30, 2011, Reasons for the decision, point 2.1.
- ^ "... the term "disclaimer" is used in the decision as meaning an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a general feature specific embodiments or areas" in Decision G 2/10, August 30, 2011, Reasons for the decision, point 2.2.
- ^ Article 2(xiv) PCT
- ^ Decision G 2/10 of the Enlarged Board of Appeal of the European Patent Office, August 30, 2011, Reasons for the decision, point 2.3.
- ^ USPTO § 1.10 Filing of correspondence by "Express Mail." - Appendix R Patent Rules
- ^ McKesson v. Bridge Medical
- ^ Marlow Industries, Inc. v. Igloo Products Corp., 2002 WL 485698 (N.D. Tex. 2002)
- ^ "Telecom standards face patent ambush threat". ZDNet. 2005-06-15. http://news.zdnet.co.uk/itmanagement/0,1000000308,39203931,00.htm. Retrieved 2007-08-30.
- ^ "Antitrust: Commission confirms sending a Statement of Objections to Rambus". European Commission. 2007-08-23. http://www.europa.eu/rapid/pressReleasesAction.do?reference=MEMO/07/330. Retrieved 2007-08-30.
- ^ Patent Act of 1836
- ^ Carl Shapiro, Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, 2001, Innovation Policy and the Economy (Vol. I) (Jaffe, E. et al., eds), pp. 119–150, MIT Press.
- ^ Mark J. Thronson, Joel M. Grossman, Gabrielle S. Roth, Jon D. Grossman, Intellectual Property Legal Opinions (Loose Leaf), Aspen Publishers, 2008 Supplement, page 1-12. ISBN 9780735561946.
- ^ Something rotten, The Economist, August 6, 2009. Consulted on August 7, 2009.
- ^ European Commission, Pharmaceutical Sector Inquiry, Preliminary Report (DG Competition Staff Working Paper), 28 November 2008, page 98, footnote 116 (pdf, 1.95 MB). (See copyright notice in page 1: "Reproduction of parts of this report that are based on the Commission's own research is authorised, provided that the source is acknowledged. For material quoted in this report that is derived from other sources, permission must be sought directly from the copyright holder.")
- ^ Ex Parte Sandor Nagy Opinion
- ^ Guidelines for Examination in the EPO c.iv.9.8 , Guidelines for Examination in the EPO c.iv.11.11 .
- ^ Jochen E. Bühling, Dariusz Szleper, Thierry Calame, Nicolai Lindgreen, Nicola Dagg, Shoichi Okuyama,Working Guidelines, Question Q209, Selection Inventions – the Inventive Step Requirement, other Patentability Criteria and Scope of Protection, AIPPI. Consulted on March 29, 2009. "A selection patent is a patent granted for making an inventive selection from a field that is already known. Selection inventions may involve the selection of individual elements, sub-sets, or sub-ranges, which have not been explicitly disclosed previously, within a larger known set or range."
- Glossary at the Deutsches Patent- und Markenamt (DPMA), (German Patent and Trade Mark Office)
- Glossary at the European Patent Office (EPO)
- Glossary of patent terms at the United States Patent and Trademark Office (USPTO)
- PCT (Patent Cooperation Treaty) Glossary at the World Intellectual Property Organization (WIPO)
- Article 2 PCT "Definitions"
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