MODULE 15: SUPPLEMENTAL MATERIAL
15.1 IP GLOSSARY
Abandonment (industrial designs): If a response to an examiner's report is not received
within the specified period for reply, the application shall be considered abandoned.
Abandonment (patents): A pending patent application may become abandoned for
different reasons. These reasons may include not receiving a reply in good faith to an
examiner's requisition within the time frame specified, not completing the application
within three months of the notice requiring completion, not paying the maintenance fees on
time, not requesting examination and paying the fee within five years of filing the
application or seven years as the case may be, and others.
Abandonment (trade-marks): An application for trade-mark registration may be considered
abandoned if the applicant does not take steps to complete the process.
Abandonment (US): An application that has been declared abandoned is dead and no
longer pending. Abandonment occurs under several circumstances. The most common
reason is when the USPTO does not receive a response from an applicant to an Office Action
letter within 6 months from the date the Office action letter was mailed. Another instance is
when the USPTO does not receive a Statement of Use (or request for an extension of time to
file a statement of use) from an applicant within 6 months from the issuance of a Notice of
Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of
Allowance can be revived or reinstated in certain circumstances. See Request for
Abandonment of Invention: To relinquish rights in an invention. In the U.S., an invention is
considered to be abandoned, if within a reasonable time after the invention is completed,
no actions are taken to make the invention publicly known.
Abandonment of Patent Application: To relinquish, either by express abandonment or by
inaction, a patent application. Abandonment by inaction typically involves failure to take a
required action (e.g., filing an incomplete response or not paying a fee) during the statutory
period for taking the action. A U.S. patent application that was unavoidably or
unintentionally abandoned can be revived by petition.
Abridgement (NZ): A summary of the disclosure of a patent specification, formerly written
by the Patent Office examiner.
Absolute Novelty: 1) A requirement of some patent offices (but not the USPTO) that public
disclosure or sale of an invention anywhere in the world cannot occur prior to the filing of a
valid patent application. 2) A system whereby any prior publication or prior use anywhere in
the world destroys the novelty of a patent.
Abstract (EP): A summary of the disclosure of a patent specification, written by the
Abstract of the Disclosure: A short description of the novel features of an invention.
Abstract: A brief summary of an invention to identify the key features.
Acceptance (NZ): The formal decision by the Patent Office that a patent should be granted.
Account of profits (EP): Alternative to damages, based on profits made by infringer.
Acquisition (ALL): The Acquiring, or takeover, of a company by buying up the company
shares giving the buyer voting control of the company.
Action: An official communication from a patent office, usually requiring some response by
Active Inducement to Infringe (US): One may be held liable for patent infringement as a
result of actively encouraging another to infringe if such other does infringe, even though
the inducer has not made, used, sold, offered for sale, or imported the patented invention.
Address for service (UK): The address to which a court will send or serve all correspondence
relating to a particular Patent application. See Contact Address.
Admissions by Applicant: A statement by an applicant for patent that can or is used to deny
the patentability of an invention, in some cases regardless of whether the statement is true.
Advertisement: Publication of applications for registration of trade-marks in the Trade-
marks Journal. Details are published to allow opportunity for challenges to the application.
Advisory action (US): An official action issued by the US examiner when a final rejection is
Advisory Action: An action advising an applicant of the status of an application, typically
advising him/her that the amendment filed just prior to the mailing of the advisory action
does not place the application in condition for allowance of the claims.
Affidavit (UK): A signed and sworn statement putting certain facts or opinion on record.
Such a document is often used as evidence in court proceedings
Affidavit: A written, sworn statement that includes facts in support of the patentability of
an invention. Under U.S. rules, an affidavit or declaration under 37 CFR 1.131 is used to
"swearing behind" a reference and an affidavit or declaration under 37 CFR 1.132 is used in
traversing a rejection.
Aggregation: A ground for rejection of a patent claim that is based on a lack of cooperation
among the elements of an invention.
Aggrieved Person (UK): Interested person: person prejudiced by the grant of patent.
AIPA (US): American Inventors Protection Act of 1999.
AIPLA (US): American Intellectual Property Law Association.
AIPPI (ALL): The International Association for the Protection of Intellectual Property.
Allowance (US): This is the same as the UK concept of acceptance.
Allowance: 1) A decision by a patent office that an applicant is entitled to a patent on an
invention. 2) Acknowledgement by the Trade-marks Office that an application is eligible for
registration of a trade-mark or an acknowledgement by the Patent Office that you will be
granted a patent.
Allowance, Notice of: A written notice by a patent office that an applicant is entitled to a
patent on an invention. In the U.S., an issue fee must be paid within the period for response
or the application will become abandoned.
Alpha Subclasses: In the U.S. patent classification system, subclasses that have an
Alternative Dispute Resolution (ADR) (US): Alternatives to the court system to resolve
disputes. This usually refers to mediation or arbitration. May include mechanisms set out in
Ambiguity (NZ): One of the grounds used for Revoking a Patent where an objection is made
that the scope of any Claim of the complete specification is not sufficiently and clearly
Amendment (UK): Alteration made to a patent specification during prosecution or after
Amendment: A change in any part of a patent application made after it is filed. Also, the
communication from the applicant to a patent office directing or requesting that a change
be made is also called an amendment. Amendments are typically made to overcome
rejections, objections or requirements made by the patent office.
Amicus curie (UK): A brief filed before a court by a party that is not a party to the lawsuit
usually to speak to the desirability of legal precedents that may be made in the decision or
the public interest.
Analogous use (UK): "The application of a well-known thing to an analogous use is not the
proper subject for a patent." But must have been an analogous use before the mere
proposal; to use is not sufficient.
ANDA: Abbreviated New Drug Application is the process of obtaining approval to market a
generic drug. An ANDA contains information demonstrating that the generic drug is
bioequivalent to the brand-name product and certification that the generic drug does not
infringe on any patent for the brand-name product listed in the Orange Book or certification
that the listed patents are invalid.
Annuity: An annual fee that must be paid to most patent offices to maintain a patent in
force. In the U.S., the fee is called a maintenance fee.
Anticipation (UK/US): Prior art which destroys the novelty of a claim by fully describing
something falling within it.
Anticipation: A situation that exists when claimed invention is not novel in view of the prior
art. To anticipate a claimed invention, a prior art reference (normally one) must teach every
element (or step) of the claim.
Anti-trust (US): Laws or regulations to prevent the abuse of monopoly
Anton Piller Order (UK): Is a special type of injunction, which can be granted by the
discretion of the court. An Anton Piller Order is granted where there is a real risk that the
defendant may dispose of infringing items and documents relating to it are infringing
activities. With an Anton Piller order the court, in addition to granting an injunction against
the defendant, also orders the defendant to allow the plaintiff's solicitors to enter its
premises to look for, inspect and take away any infringing items and documents relating to
the defendant's infringing acts. This type of order is not granted lightly. It is only available
where there is clear evidence that the defendant has incriminating evidence and may
destroy such evidence before an application can be made to the court. Such an order can be
obtained in a matter of hours.
Apparatus Claim (US): This refers to that part of a patent document called the Claims. An
apparatus Claim provides a structural description of a piece of equipment that is embraced
by the expression "machine" in the definition of patentable subject matter in the US Patent
Statute. Drawings of the apparatus are essential.
Appeal: A request that a higher authority (in a patent office or a court) review an adverse
patentability decision (a rejection of a claim) by an Examiner. In the USPTO, an appeal is first
taken to the Board of Patent Appeals and Interferences.
Appeal brief (US): A summary of the arguments why the invention should be patentable,
submitted to the board of appeals.
Appeal Brief: A written communication submitted to a higher authority reviewing an
adverse patentability decision (rejection of a claim) by an Examiner. In the U.S., an appeal
brief must set forth arguments and cite authorities (e.g., statutes and case law) in support of
the patentability of the claim or claims under appeal.
Appeal, Notice of: A written communication to a patent office indicating that an adverse
patentability decision (rejection of a claim) by an Examiner will be appealed.
Appellant: A patent applicant who has appeal the decision of a patent Examiner to a higher
Applicant: A person who is applying for a patent. In the U.S., the applicant must be the
inventor, except in exceptional circumstances. One or more than one person can apply for a
patent. In jurisdictions other than the U.S., any legal "person" (e.g., individual or
corporation) may be an applicant for a patent.
Applicant1 (US): In the US applicants must be individuals. An application for patent is filed
under 35 USC 111(a).
Applicant2 (NZ): See s7 NZ Patents Act: may be person claiming to be the first and true
inventor, or assignee of the first and true inventor, and may be made by that person alone
or jointly with any other person. Universal term.
Application (for Patent): A document describing a claimed invention and requesting that a
patent on the claimed invention be granted to an applicant. In the U.S., an application must
include a specification and a drawing (if required to understand the invention). A regular
U.S. patent application must also include at least one claim and it must be accompanied by
an oath and a fee. In addition to a specification and a fee, a provisional U.S. patent
application must be accompanied by a cover sheet and a fee.
Application Series: A grouping of application serial numbers (the last six digits of the
application number) having the same series code.
Application: The formal request for obtaining protection of an intellectual property right.
Application, Continuation: A subsequent application for the same invention disclosed in a
prior (regular or nonprovisional) application that is filed before the original application
becomes abandoned or patented. Also called a continuing application.
Application, Continuation-in-Part: An application by the same applicant repeating a
substantial portion or all of an earlier (regular or nonprovisional) application and adding
matter not disclosed in the original application that is filed before the original application
becomes abandoned or patented. Also called a CIP.
Application, Divisional: A later application "carved out of" an earlier application for an
invention that is disclosed in the earlier application but that is distinct or independent from
the invention claimed in the earlier application that is filed before the earlier application
becomes abandoned or patented. Also known as a division.
Apportionment of Profit (US): A measure of damages in patent-infringement litigation.
Apportionment generally refers to dividing the profits on the sale of a particular piece of
apparatus or a product according to the percentage of cost or sale price attributable to the
patented invention. Where the whole of the product is covered by the patent, or where the
patented component contributes all of the market value, apportionment of profit is not
Approval: When an application for obtaining protection of an intellectual property right has
Arbitration (UK): A method of ADR whereby a mutually agreed to third party resolves a
dispute. Normally both sides agree to be bound by the decision in contrast to mediation.
Argument (US): The process by which a lawyer or other person tries to persuade the court,
based on the record, to find for his side. The Attorney’s Canon of Ethics (sic) requires there
be some basis in the record for such arguments.
Art Unit: A subunit of a patent examining group. Also called Group Art Unit.
Article (NZ): Section 2 of the NZ Patents Act: includes any substance or material, and any
plant, machinery, or apparatus, whether affixed to land or not.
Article of Manufacture: A product, a physical thing. There is no clear difference between an
article of manufacture and a machine. Under U.S. law, one of the statutory classes of
Artistic work: Any visual representation such as a painting, drawing, map, photograph,
sculpture, engraving or architectural plan.
Assert: To assert a patent is to attempt to enforce it. To attempt to prevent an unlicensed
party from practicing an invention.
Assignee (US): The person or company to whom ownership of the patent is transferred.
Usually by assignment in writing. Note exception...Matrimonial Property Act. A Universal
Assignee: A recipient of an ownership right in a patent application, patent or interest in a
patent application or patent.
Assignment (US): A transfer of ownership of a patent application or patent from one entity
(assignor) to another (assignee). All assignments should be recorded with the USPTO
Assignment Services Division to maintain clear title to pending patent applications and
Assignment: A transfer by a party (the assignor) of all or part of its right, title and interest in
a patent or patent application to another party (the assignee). In this regard, patents have
the attributes of personal property.
Assignment: In terms of intellectual property, it is the complete transfer of all or part of the
intellectual property rights from the owner to another party.
Assignor: To transferor of an ownership right in a patent application, patent or interest in a
patent application or patent.
Auslegeschrift: An examined German patent application (now eliminated).
Author: The creator of an artistic, literary, musical or dramatic work.
Automatic prohibition: 30-month stay is the automatic prohibition of FDA action on an
ANDA with a Paragraph IV certification if the brand-name company files a patent
infringement suit against the generic applicant within 45 days.
Background of the Invention (ALL): A specific subsection of a patent application outlining
the relative prior art and problems associated with a technology.
Background of the Invention: A section heading in the specification of a U.S. patent
application that includes a statement of the technical field of the invention and a description
of related art.
Bar, Statutory: A circumstance that prevents (bars) issuance of a valid patent.
Base Claim: A claim from which another claim depends, either directly or indirectly.
Basic Patent: The first member of a "family" of patents (which may or may not be the first
Belated opposition (NZ): An application to the Patent Office for revocation of a newly
granted patent. Under s42 of the Patents Act – Revocation of Patent by Commissioner.
Berne Convention: A Convention for the Protection of Literary and Artistic Works. See
Best Endeavours (UK): A licensee must use best efforts to ensure that the product for
which he holds the licence sells.
Best mode requirement: (US/UK/NZ) The obligation to describe the best way of carrying out
the invention at the date of filing the application. It imposes on the inventor the
requirement to disclose the best version of the invention, not an alternative second best
another inferior version.
Best Mode: The way of implementing the inventive concept contemplated by the inventor
on the filing date of the patent application.
Bioequivalence: It is the Food & Drug Administration requirement that the active ingredient
of a generic drug be absorbed into the body and metabolized in approximately the same
amount over approximately the same period as the active ingredient of the innovator drug.
Bio-equivalence is demonstrated in two ways. Dissolution testing determines if the generic
drug product dissolves in approximately the same amount of time as the innovator product.
Blood-level testing is done by giving the generic drug product to humans and measuring
how much of the drug enters the bloodstream, how fast it does so, and how long it takes to
leave the body.
Biological Material: Material referenced in the disclosure of a patent application that is
capable of self-replicating, either directly or indirectly. Examples include bacteria, fungi
including yeasts, algae, protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses,
plant tissue cells, lichens and seeds.
Blocking patent (UK): See defensive patent.
Board of Patent Appeals and Interferences: A board of senior examiners that hears appeals
of adverse patentability decisions of examiners.
Boiler plate (UK): Standard clauses in contracts.
Bolar Provision (US/UK/EU/NZ): An Exemption which states that it is not an infringement
to make, use, offer to sell, or sell within- or import into - eg the United States a patented
invention . . . solely for uses reasonably related to the development and submission of
information under a Federal law which regulates the manufacture, use, or sale of drugs or
veterinary biological products. A specific 'Bolar' type exemption has been included in
Directive 2004/27/EC which allows for: conducting the necessary studies and trials with a
view to the application of [the abridged procedure for obtaining a marketing authorisation
for generic medicinal products] and the consequential practical requirements shall not be
regarded as contrary to patent rights or to supplementary protection certificates for
Other Countries having similar exemptions include Australia, New Zealand, Argentina, Japan,
Canada and Malaysia. The wording of the EU exemption is narrower than that for the US.
BPAI (US): Board of Appeal Interferences.
Branding strategy: A strategy that identifies a mark, symbol, word(s) or combination of
same that separates one company's product or service from that of another. The brand
strategy involves deciding which brands or brand elements (e.g. names, logos, symbols,
characters, slogans, jingles or packages) will be applied to the company's products or
services. The purpose of a brand is to establish a meaningful, differentiated presence that
will attract and retain loyal customers.
Brevet: French for "patent."
Budapest Treaty (ALL): A Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure. See
Business Gateway: The Web site designed to provide Canadian small and medium-sized
enterprises with an entry point for direct access to key services and information from across
the Government of Canada.
CAFC (US) (Court of Appeals for the Federal Circuit): All patent decisions are appealed to
this court rather than to the Appellate Courts throughout the United States. While the CAFC
decisions can be appealed to, and overturned by, the Supreme Court, the Supreme Court
takes few patent cases and so the CAFC is the court which primarily determines the patent
Canada Business: Canada Business provides a comprehensive first stop for information on
government services, programs and regulatory requirements for both the federal and
provincial/territorial orders of government.
Canadian Copyrights Database: On-line database including all Canadian copyrights which
were registered since October 1, 1991, pursuant to the Copyright Act.
Canadian Food Inspection Agency (CFIA): An agency of Agriculture and Agri-Food Canada
delivering all federal inspection services related to food, animal health, and plant protection.
CFIA administers and enforces 13 federal acts and their respective regulations; the Plant
Breeders' Rights Act is one of them.
Canadian Intellectual Property Office (CIPO): An agency of Industry Canada that
administers Canada's intellectual property legislation and regulations regarding patents,
trade-marks, copyrights, industrial designs and integrated circuit topographies to ensure
that they meet present and future client needs and best contribute to the Canadian
Canadian Patents: On-line database containing patent bibliographical information,
descriptions and image documents on issued patents in Canada since 1920.
Canadian Trade-marks Database: On-line database containing all active and many inactive
marks that were either applied for or registered pursuant to the current Canadian Trade-
marks Act or former trade-mark legislation.
Cancellation of Claims: Removal of claims from a patent application, usually by way of an
Cancelled Matter: Matter that is removed from the specification or claims of a patent
Caveat (UK): A request to be informed of future events relating to a patent application or
granted Patent. See Request for Information. .
CCPA: See Court of Customs and Patent Appeals.
Cease and Desist(US/UK/NZ): A letter written by a Patent owner to an alleged infringer,
ordering the alleged infringer to stop making, using, selling, or offering for sale the patented
Invention. The matter should never be ignored and may result in an injunction to stop the
infringing activity. In many cases the order will come with a proposal to negotiate a license
from the patent owner..
Celotex Order (UK/NZ): Arises with respect to extension of term of patent, it is a protective
order for third parties beginning trade in the patented goods during the inter regnum.
Certificate of Correction (US): Issued upon patentee request due to a USPTO or applicant
minor error in the patent such as printing, typographical, or clerical errors.
Certiorari (US): The Supreme Court has discretion as to which cases it wants to hear and
decide. To have the Supreme Court review a lower court decision, a litigant must petition
the Supreme Court on a writ of certiori. If the Supreme Court grants the petitioners request
for certiorari, the litigants prepare appeal briefs and the Supreme Court hears the case. The
Supreme Court grants certiorari on about 1% of the certiorari petitions.
CFR: The Code of Federal Regulations.
Chapter One (PCT): The first, mandatory phase under the Patent Cooperation Treaty (PCT).
This phase includes an international-type search, issuance of an International Search Report
and publication of the application and Search Report by the International Bureau of WIPO.
Chapter Two (PCT): Second stage in PCT. Extra fee for International Preliminary Examination
Report (IPER) and defer national phase Entry for 30/31 months (country dependent).
Characterising clause (EP): The part of a German or European style claim that indicates the
novel features of the invention.
CIP (US): See Continuation-In-Part below.
CIP: See Application, Continuation-in-part.
Citation: A reference to a document considered relevant to the examination of a patent
application. Citations by the Examiner appear on the front page of a U.S. patent. Citations by
the applicant may appear in the specification and/or in an Information Disclosure
Civil Procedure Rules (UK): The rules, which govern the procedure and format of
proceedings before the courts. Hearings before the UK Patent Office are also based on the
provisions of the Civil Procedure Rules.
Claim (ALL): The part of a patent specification that defines the legal scope of the protection
sought by an inventor. Each claim is a single sentence in a legalistic form that defines an
invention and its unique technical features. A valid claim is one that reads on the invention
described in the specification but does not read on any prior art. Each and every Claim must
be clear and concise and supported by the description.
Claim (patents): A concise written statement that defines the invention covered by the
patent application. The patent protects what falls within that definition. Anything outside
the identified claim is not protected.
Claim: The definition of a monopoly right that an applicant is trying to obtain. The claims
define the actual monopoly when the patent is granted.
Claim, Dependent: A claim that refers back to and further limits or restricts the breadth of
another claim. The other claim may be an independent claim or another dependent claim.
Claim, Generic: A claim that describes ("reads on") a generic form of an invention. A generic
claim generally reads on all the claimed species of an invention.
Claim, Independent: A claim that does not reference (depend from) another claim.
Claim, Jepson: A form of a claim with a preamble that describes what is known in the art
followed by a transitional phrase such as "the improvement comprising" and then a
description of the claimed improvement.
Claim, Markush: A form of a claim that allows claiming of members of a finite group by
means of a phrase like "a member selected from the group consisting of" followed by a list
of the members of the group linked by the word "and." The members of a Markush group
must have at least one property that is mainly responsible for their membership in the
Claim, Multiple Dependent: A claim that refers back to and depends from more than one
other claim. The other claims may be referred to in the alternative only.
Claim, Picture: A claim that sets forth an invention in great detail. Also called a Specific
Claim, Process: A claim that recites the steps of a process. The process may be a method of
making something, a process of operating something or a process of using something. 35
Claim, Product: A claim that recites the elements or features of a product (i.e., a machine,
an article of manufacture or a composition of matter). A claim recites the physical form of
an invention. 35 U.S.C. 101.
Claim, Species: A claim that describes ("reads on") a species of an invention. A generic claim
generally reads on all the claimed species of an invention.
Claimed Invention: The invention that the inventor(s) claim to have invented and for which
he/she/they seek patent protection.
Classes (ALL): A term relating to both Patents, Trademarks and Designs. Classes allow
technical and descriptive matter to be categorised and searched.
Classification: A subdivision of technology (and, hence, patents) by subject matter.
Clean hands doctrine (US/UK/NZ): The principle that equitable relief such as enforcement
of patent rights by an injunction can be granted only to one who has acted in good faith.
Cognating (NZ): The combination of two provisional specifications into one Complete after
Provisional (C.A.P.) application.
Collocation (UK): Admixture of known things, no synergy. See s2. cf combination.
Colorable Deviation: A small change (in a product or process) from what is claimed that is
made solely for the purpose of avoiding literal infringement of the claim.
Combination (UK): A number of parts interacting together. cf collocation. A Universal term.
Combining Prior Art (US): Under Section 102 of the US Patent Statute, a claim must be
identically disclosed in a single prior-art reference in order to be rejected as being
anticipated by prior art. Under Section 103 of the Patent Statute (which deals with the
standard of obviousness) one is permitted to employ a single prior art reference, or may
combine two or more references to render a claim obvious if such a combination would be
apparent to one skilled in the art. In both cases a patent examiner can reject a patent
application, or a patent claim can be ruled invalid by a court.
Common general knowledge (UK): Goes to obviousness. Allows you to rely on textbooks,
lectures notes etc, as basis for what general state of the art is. An Expert Witness is required
to confirm cgk status.
Common Law Rights (US): Property or other legal rights that do not absolutely require
formal registration in order to enforce them. Proving such rights for a trademark in court
can be very difficult, requires meticulous documentation, and places a heavy burden on the
individual. Active Federal registration of trademark can provide a higher degree of legal
protection and readily demonstrated evidence of ownership of a mark. Universal term.
Communicatee (NZ): Receiver of information from overseas, who may apply for a patent in
Community Patent (EP): A proposal for a single Patent application to be granted for the
whole of the 25 European Union States. Does not yet exist (2005).
Community Trademark (EP): A mechanism allowing a single application to be given uniform
Trademark protection and to be enforceable in all 25 European States.
Complete Specification (NZ): A full description of an invention filed after an initial brief
Completion of Invention: Conception and reduction to practice of an invention. Also called
"making an invention". Conception is the formation in the mind of the inventor of a definite
and permanent idea of the invention. The reduction to practice may be a constructive
reduction to practice (filing of a patent application containing sufficient disclosure to enable
a person skilled in the art to make and use the invention) or an actual reduction to practice
(making and testing the invention sufficiently to demonstrate to a person skilled in the art
that it will work for its intended purpose).
Composition of Matter: An invention in which the substance and not the form or shape is
the inventive subject matter. Under U.S. law, one of the statutory classes of inventions. 35
Comprising (ALL): The word "comprising" in a claim renders the claim open to allow for
additional elements that could be added to the alleged infringing device without avoiding
infringement. For example, if a claim stated that a chair had three legs and employed the
word "comprising," a chair having four legs would infringe. At the other end of the spectrum
is a closed claim, which uses the expression "consisting of." This means that in a product
alleged to infringe, if meaningful additional elements are added to the features recited in a
claim there is no infringement. These types of claims frequently appear in the chemical and
metallurgical arts. A Universal term.
Comprising: A transitional phrase used in claims that means including, containing,
characterized by. The term is inclusive or open-ended and does not exclude additional,
unrecited elements or steps.
Compulsory licence (UK): A licence which government authorities or courts force the
patentee to grant to a third party. Universal term.
Conception: The formation in the mind of the inventor of a definite and permanent idea of
Confidential disclosure (ALL): Self explanatory, disclosure in confidence of an invention to
another party. Universal term.
Confidentiality agreements: Confidentiality agreements, known also as non-disclosure
agreements, are contracts in which the parties agree not to disclose the secret information
they share and not to make unauthorised use of such information (e.g. a secret innovation
Consisting of: A transitional phrase used in claims that excludes any element, step or
ingredient not specified in the claim.
Consistory clause (UK): Statement of invention in complete specification, e.g. the invention
Constructive Reduction to Practice (US)2: A reduction to practice involves physical
verification of the operability of the invention or its suitability for its intended purpose.
When an applicant files a US patent application he/she obtains a constructive reduction to
practice as at the filing date.
Constructive reduction to practice (US)1: The filing of an adequate patent as evidence of
having fully worked out the invention.
Contact Address (ALL): The address to which a Patent or Trademark Office will send all
correspondence relating to a particular application.
Contemporaneously witnessed: Observed or read and understood by a witness who is not
one of the inventors at the time the event occurred.
Continuation application (US): A new filing of a US application, with unaltered specification
to allow presentation of new claims.
Continuation Application (US): This is a patent application directed toward the same
invention as a prior application and filed while the prior application is pending, naming the
same inventive entity. The continuation application is given the benefit of the earlier filing
date of the application on which it is based.
Continuation in part application (US): A new filing of a US application, with alterations or
additions to the specifications.
Continuation Patent Application (US): Continued Prosecution Application. A continuation or
divisional application filed in a design application under 37 CFR 1.53(d). NB: CPA’s may no
longer be filed in utility and plant patent applications, effective 14 July 2003.
Continuation-in-Part Application (US): Continuation-in-Part (CIP). An application filed
during the lifetime of an earlier non-provisional application, often repeating a substantial
portion or all of the earlier non-provisional application and adding matter not disclosed in
the earlier non-provisional application.
Contracting State (EP/PCT): A national Patent Office that is party to the Patent Cooperation
Treaty. See http://www.wipo.int/pct/en/.
Contributory infringement (UK): Infringement by supplying another with the means to
infringe a patent. A Universal term.
Contributory Infringement: Selling a part of a patented product or a material for use in
practicing a patented process that is especially adapted for the patented product or process,
done with knowledge of the infringement.
Convention Country (ALL): A state, which is a member of the Paris Convention for the
Protection of Industrial Property. A Universal term.
Convention: The Paris Convention for the Protection of Industrial Property. The Paris
Convention provides that applicants to file in a second convention country within 12 months
of the original filing.
Convention year (US): A period of 12 months from a first application in a convention
country within which applications having the effective date of the original filing may be filed
in other convention countries. N.B. 6 months for TM and designs. A Universal Term.
Convention, EPC: The European Patent Convention. An agreement among countries in
Europe establishing a system of filing and examination of a single patent application in a
central patent office called the European Patent Organization.
Copending Application or Copendency: A patent application that is pending (not
abandoned or issued) at the same time another, related patent application is pending.
Copyright (US): An Intellectual Property Right. An Automatic that protect works of
authorship, such as writings, music, films, computer software and works of art that have
been tangibly expressed. In the US, the Library of Congress registers copyrights. In the US
the term of copyright last for the lifetime of the author plus 70 years. In most countries the
term is the author’s lifetime plus 50 years.
A intellectual property right that protects the manner in which an idea is expressed and not
the idea itself.
Federal legislation governing copyright in Canada
A document specifying the title and type of work protected along with other information
from a copyright file with the Copyright Office.
Violation of copyright through unauthorized copying or use of a work or other subject
matter under copyright.
Legal agreement granting someone permission to use a work for certain purposes or under
certain conditions. A licence does not constitute a change in ownership of the copyright.
The office that is responsible for registering copyrights. Registration means that the office
has recorded the details of the copyright and has issued a certificate of registration. The
Copyright Office is part of CIPO's Copyright and Industrial Design Branch. The Branch
maintains the Register of Copyrights, which contains information regarding specific
copyrights. The Branch also maintains a Register of copyright assignments and licences.
Copyrights, industrial designs and integrated circuit topographies are all managed under the
direction of the Copyright and Industrial Design Branch.
In general, copyright means the sole right to produce or reproduce a work or a substantial
part of it in any form.
The right to copy, which means that an owner is the only person who may copy his or her,
work or permit someone else to do so.
Corresponding Foreign Application
An international patent application or a regional or national patent application or inventor's
certificate filed in a country other than the U.S. that establishes a priority date for a later-
filed U.S. application.
Evidence provided by other than an inventor that shows that an important event occurred
when the inventor said it did.
A claim made in common by two or more alleged inventors (opposing parties) in legal
contest to determine who was the first inventor, and, hence, who is deserving of a U.S.
patent (called an interference). The count defines the interfering subject matter between
two or more patent applications or between one or more applications and one or more
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. Called an Equivalent in other
Court of Appeals for the Federal Circuit (CAFC or Fed. Cir.)
A U.S. court to which an applicant for patent can appeal a decision of the USPTO Board of
Patent Appeals and Interferences.
Court of Customs and Patent Appeals (CCPA)
The historical court that reviewed USPTO decisions and decided customs cases, that was
replaced by the U.S. Court of Appeals for the Federal Circuit.
Cripps Question (UK):
Test for Obviousness. Originally propounded by Sir Stafford Cripps in Sharpe & Dohme v
Boots "Was it for all practical purposes obvious to any skilled chemist in the state of
chemical knowledge existing at the date of the patent, which consists of the chemical
literature available...and his general chemical knowledge, that he could manufacture
valuable therapeutic agents by....?"
Critical Date (US):
This refers to the date of the initial placing on sale, publication, or public or commercial use
of an invention. At the end of the one-year period, a US patent application cannot be filed
because the statute bars such filing. A Universal term.
A license between two patent owners wherein each licenses its patent(s) to the other.
A reference (issued patent) in another class or subclass, or a reference made in a later-filed
patent application to a related, earlier-filed application.
Crowded Art (US):
This refers to an area of technology in which there have been a large number of prior
inventions. In a crowded art, it takes less of an advancement to obtain a valid patent. A
De Minimis (UK):
A Short form of the Latin De minimis non curat lex, a legal term meaning that "the law does
not concern itself with trifles".
De Novo (UK):
A legal term meaning "anew".
A written statement made with the understanding that willfully providing false information
is punishable by fines or imprisonment or both. In the U.S., declaration may be used instead
of an oath (a sworn statement) to verify that information being submitted to the USPTO is
Declaratory judgement (UK):
A lawsuit filed to determine where the plaintiff is in doubt as to his legal rights. With respect
to patents, this is a lawsuit filed by someone against the patent holder asking the court to
declare that the inventors patent is invalid or that the plaintiff is not infringing the patent.
The possibility of such a lawsuit is a source of concern for poorly financed patent holders
who must be careful least something they do be seem as accusing others of infringement
requiring them to defend against a lawsuit often at a distant location and at great expense.
An express or implied surrender to the public of an actual or potential patent right.
Dedication to the Public (US):
A document signed by a patent owner filed in the U.S. Patent and Trademark Office giving
up all patent rights. This is generally done when the owner believes the patent is invalid.
Defensive patent (UK):
A patent that does not cover what the patentee is doing, but which helps to keep
competitors away from his area of interest.
Publication of the abstract of the technical disclosure of a pending patent application if the
applicant waived his or her rights to an enforceable patent. The official program at the
USPTO that allowed defensive publication has been replaced by the Statutory Invention
Deferred examination (AU/CA/MY):
A system in which the examination of a patent application may be postponed for several
years until requested by the applicant.
A characteristic of a patent claim in which claim language makes the scope of the claim clear
to a person skilled in the art to which the invention pertains.
Delivery up (UK):
A court order compelling an infringer to deliver infringing goods to the patentee for
alteration or destruction.
A subscription based searching tool with extensive data coverage including collections from
all over the world. Delphion is the most comprehensive sources for finding and viewing
patent information. See http://www.delphion.com
Form PCT/IPEA/401 that is filed with an International Preliminary Examining Authority (IPEA)
demanding that an international application shall be the subject of an international
Dependent claim (US):
A Claim that makes express reference to and depends on an earlier claim. Such a Claim by
definition incorporates by reference all of the recitals of the earlier claim from which it
depends. A Dependent Claim must be read as containing its unique one or more additional
feature plus the recitals of every claim or claims from which it depends.
A claim that refers back to and further limits or restrict another claim.
Filing written papers with a patent office.
Testimony of a witness taken under oath, reduced to writing and authenticated.
In a US infringement suit, the pre-trial stage of taking down evidence on oath.
That part of a Patent application giving sufficient instruction to enable a person of ordinary
skill in the art to make or perform the invention. The description forms the basis for the
Claims. The description can cover subject matter broader than the Claims. The Claims may
never be broader than the description.
Design Patent (US):
A type of patent covering the new, original and ornamental aspects of an article of
manufacture (product). The prime focus is on the overall appearance of the new product.
An application will also contain a textual description of the product.
A patent that protects the visual characteristics of, or aspects displayed by, an object.
Designated Office (EP/PCT):
Designated Office. The national Office or intergovernmental organization of or acting for the
Contracting State designated by the applicant under Chapter I of the Patent Cooperation
Designation (EP Patent Office, PCT):
The naming of the countries and Regions for which a European or PCT application is being
filed. In most instances all countries and Regions are designated.
The part of a courts decision that was not necessary to reach a decision. As such it has
relatively low weight as precedent. A.k.a. obiter dicta. cf ratio decidendi.
The activity required of an inventor and his attorney that must have started just prior to the
entry into the field of another "inventor" and continue until the invention is reduced to
practice, either by building and testing it or filing an enabling patent application. Diligence
towards the building and testing of an invention typically includes such activities as ordering
parts, fabrication of a prototype or working model, testing of a prototype under the
expected conditions of normal use of the invention, etc. Diligence towards the filing of a
patent application typically involves preparation of an invention disclosure, hiring a patent
agent or patent attorney, with the patent agent or attorney taking up preparation of the
patent application in chronological order. Diligence must be able to be proven and, in an
interference proceeding, must be corroborated by a person who is not an inventor.
Diligent Searcher (ALL):
A substantive search looking at the state of the art at the earliest date of Filing of the
Patent. Using the “diligent searcher concept” the search agency conducts an investigation of
the art without knowledge of the scope of the claims or of the "invention". The Diligent
Searcher simply knows the problem the invention purports to solve. It is permissible to cast
the problem using the terminology from the patent specification as long as it does not
delineate the solution but simply sets the bounds for the search enquiry
Making, using or selling a patented invention in the jurisdiction within which the patent is
enforceable, or importing a patented invention or a product made using a patented process,
during the term of the patent.
The exclusion of specific subject matter from the scope of protection claimed.
An express surrender to the public of an actual or potential patent right. An entire patent
can be disclaimed, or any claim or claims in a patent or a terminal portion of the normal
term of the patent.
This term can refer either to an invention disclosure of a product or method that is not the
subject of a patent application and may be use, display or an oral or written communication
of a development. The term can also refer to portions of a patent application, generally
those parts other than the Claims. A Universal term.
Communication to another of how to make and how to use an invention to the extent
necessary for the disclosure to meet its purpose. In the U.S, the disclosure of a patent
application must be sufficient for a person who is skilled in the art to which the invention
pertains to (1) understand what is being claimed (the description requirement) and (2) to
enable the person to make and use the invention (the enablement requirement). Also, in
the U.S., the best mode of the invention must be disclosed.
Disclosure Document Program
A program of the USPTO wherein, for a small fee, the USPTO will maintain a written
document disclosing an invention and signed by the inventor in confidence for a period of
two years as evidence of the date of conception. Diligent efforts to reduce the invention to
practice must still occur from a period before the entry of another inventor into the field
until the invention is completed. Many patent agents and patent attorneys recommend that
it is better to disclose an invention in confidence to a person who is not an inventor in
writing and then have the person sign and date the disclosure indicating that he/she has
"read, discussed and understood the disclosure."
A court order to parties in an infringement action to produce relevant documents. Here the
courts have the power to order a person who has not committed any infringing act, but who
has innocently become involved in assisting others to commit infringement, to give full
information and disclose the identity of the infringers.
This type of order for discovery against an innocent party enables a person to discover the
identity of any infringer who is manufacturing, importing, supplying or putting the infringing
goods into circulation. This type of action is more effective than numerous separate actions
against individual retailers.
An invention or, in litigation or interference proceedings, the process of retrieving pertinent
information from the opponent's records under a court order.
A term used in some countries, including the U.S., to mean that an application has been
abandoned, denied (rejected) or allowed (granted). The term is also used to quantify
Examiner productivity, i.e., to "count" Examiner actions.
See Application, Divisional.
See Application, Divisional.
Doctrine of Claim Differentiation (US):
This is a judicially created rule of Claim construction that states that when two claims in the
same patent have an apparently similar or identical meaning, an effort should be made to
adopt an interpretation that will give them a different (as distinguished from identical)
Doctrine of Equivalents (US):
A doctrine which says that if a patent claim does not literally read on a possibly infringing
device, it can be read more broadly providing it does not read on the prior art. It is designed
to allow the inventor to assert a patent where the differences between the inventor’s and
an infringer’s product are not substantial. (See Hilton Davis Chemical Company v. Warner-
Jenkinson Company, Inc. 93-1088). A Universal Term.
Doctrine of Equivalents
A legal doctrine that allows a court to expand the literal language of claims so that one who
has made inconsequential changes in the product or process to avoid infringement will
nevertheless be found to be infringing.
Covered by one or more claims in a patent.
A patent having a claim broad enough to encompass the subject matter of a claim in a
subsequent patent. The patentee of a dominating patent can prevent the patentee of the
subsequent patent from practicing his/her "improvement" invention. The patentee of the
subsequent patent can prevent the patentee of the dominating patent from practicing the
"improved" invention only, but not the original invention.
Double Patenting (US):
A doctrine that states that an invention cannot be twice patented. An inventor cannot
obtain claims in two patents directed either to the same invention or to an obvious variation
of the same invention. Where the inventions are identical, the second patent is invalid. With
respect to obvious variations, this rejection can be overcome by filing a terminal disclaimer
which states that the second or any additional patents to issue will expire on the same date
as the first patent, thereby eliminating any improper extension of the period of exclusivity
resulting from the second or additional patents.
Double Patenting Rejection
A rejection of a patent claim on the grounds that it is an improper attempt to obtain more
than one patent on the same invention or on an obvious variant of the same invention.
An improper attempt to obtain more than one patent on the same invention or on an
obvious variant of the same invention.
A figure filed as part of a patent application to describe and explain an invention. At some
point in the proceedings, the drawings must comply with the patent office requirements for
Patent drawings must show every feature of the invention as specified in the Claims.
Omission of drawings may cause an application to be considered as incomplete. Apparatus
Claims must be accompanied by drawings showing the inventive feature(s). This is also
important for Provisional Applications.
Due Diligence (ALL):
The process of investigation, performed by investors, into the details of a potential
investment or agreement, such as an examination of operations and management and the
verification of material facts.
Duty of Disclosure
A duty imposed on each individual associated with the filing and prosecution of a U.S.
patent application to disclose to the USPTO all information known to that individual to be
material to the patentability of the claimed invention.
Early publication (US/EP/PCT):
Publication of an application before examination. Most countries, including the US now
publish before examination 18 months from earliest priority. New Zealand is an exception
and makes public the invention only after acceptance of an application.
The date as of which a reference is available as "prior art" in determining the patentability
of an invention. The Effective Date of a reference usually something different from the
Effective Filing Date of a patent application.
The choice by the applicant of the invention to be prosecuted and, hence, the claims to be
Element of Claim
A (usually indented) portion of the body of a patent claim that describes a feature of an
invention and that interrelates the feature with the other features of the invention.
A manner in which an invention can be made, used, practiced or expressed. It is generally
considered to be non-limiting and fulfils the best-method obligation.
One (generally of many possible) concrete (physical) form of an invention as described in a
patent application or patent.
A thing in which something, as a soul, idea or principle, or type is embodied.
To make concrete by expression in perceptible form as in words, acts, institutions, or works
En banc (US):
Normally an appellate court such as the CAFC randomly assigns a panel of three of the
court’s full complement of 12 (or more) judges to consider each case. When the whole court
considers a case it is called an en banc decision and is generally done to address
fundamental and controversial issues that have been before the court and so has very
strong value as precedent.
Support within a disclosure of a claimed invention. Enablement occurs when a person skilled
in the art to which the invention pertains is taught how to make and how to use an
Enabling disclosure (ALL):
A description sufficient to enable the reader to carry out the invention.
The right of the patent owner to bring an infringement suit against an alleged infringing
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. See 35 USC 286-296
Direct or impose by court order.
The right to own a patent or patent application. A dispute about entitlement can be
resolved by bringing entitlement proceedings before the UK Patent Office or the courts.
Electronic Patent Assignment System. See Also eTAS.
See European Patent Convention.
European Patent Office. See http://www.european-patent-office.org/index.en.php.
The extension of the scope of a patent to cover something outside the literal wording of the
An application filed in a foreign patent office that is substantially similar or equivalent to the
first filed patent and is based upon some or all of the same invention. The two applications
would generally have the same applicant and priority date.
Equal under patent law.
The barring of a person from claiming a legal right because of an earlier act incompatible
with his claim, e.g. File Wrapper Estoppel.
Electronic Trademark Assignment System.
electronic Trademark Examination Application System - electronic trademark filing system.
It allows the public to complete various trademark filings and transactions on-line. For
example, eTEAS allows you to complete trademark Applications, preliminary amendments,
amendments to allege use/statements of use in responses to Office Actions, and post
registration filings online, and then submit them directly over the Internet, paying by credit
card, electronic funds transfer or an existing USPTO deposit account.
European Patent (EP):
Allows an applicant to file a single application covering all 25 EPC Contracting States. A
European Application must be filed in an "Official Language", either German, French or
English. In most contracting states for a Patent to take effect it must be validated for that
European Patent Convention
An agreement among European nations that establishes a regional, European patent
European Patent Office (EPO)
The European Patent Office (EPO) grants European patents for the contracting states to the
European Patent Convention (EPC).
Ex parte (ALL):
A procedure between a single party and a decision maker, as opposed to inter partes which
is a procedure between a two parties with a decision maker. The patent prosecution process
is an ex parte procedure.
A legal proceeding with no adversary, as in a normal patent prosecution.
A Scrutiny by an Official of a National Department or Region of an application to determine
acceptability of a Patent, Trademark or Design. Patents are Examined to determine if an
invention is novel, contains an inventive step (not obvious) and is industrial applicable
The process by which the office determines whether an application warrants a registration
or a grant.
Review of a patent application to determine if a claimed invention is patentable.
An official of a patent office charged with determining the patentability of inventions
claimed in patent applications.
A written communication from a patent Examiner that contains requirements and/or
documents the reasons behind the Examiner's patentability decisions and usually sets a time
for response by the applicant.
See Art Unit.
An example of one embodiment (implementation) of an invention. If the example is an
actual ("working") example, i.e., an example of work actually done, it is described in the past
tense. If it is a prophetical example, or if simulated or predicted test results are presented,
the present tense is used.
Exclusive licence (US):
A licence that excludes use of the invention by all others, including the patentee himself. A
180-day exclusivity is the marketing exclusivity granted to the first applicant that files an
ANDA with Paragraph IV certification.
Excusable Non-Use (US):
A Trademark term relating to a Section 8 application for non-use. A sworn statement, filed
by the owner of a registration, that the mark is not in use in commerce due to special
circumstances that excuse such non-use and is not due to any intention to abandon the
mark. Section 8 of the Trademark Act, 15 U.S.C. 1058. It must be filed by the current owner
of the registration and the USPTO must receive it during the following time periods:
(1) At the end of the 6th year after the date of registration (or the date of publication under
15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed
the benefits of the Act of 1946), AND
(2) At the end of each successive 10-year period after the date of registration. There is a six-
month grace period. If these rules and deadlines are not met, the USPTO will cancel the
Once the USPTO accepts the Section 8 Declaration of Excusable Non-use, the owner of the
registration is not required to file another Section 8 Declaration until the next statutory
With reference to a patent application, to sign an oath or declaration.
Exhaustion of rights (EP):
The principle that when the patented goods have been sold by the patentee, he has no
further control over them. A Universal Term.
A physical embodiment of an invention; a model or specimen.
Experimental Use (US):
Under Section 102(b) of the US Patent Statute, there are a number of statutory bars which
state that one cannot file a US patent application more than one year after the initial placing
on sale, publication, or public use of an invention. If the use was, in fact, experimental use
rather than public or commercial use, such use is not counted in computing the one-year
period. The experimentation must be to verify that the invention works for its intended
purpose as distinguished from other factors such as marketing research. In addition,
exceptions are allowed for in Canada and NZ allowing manufacturers of generic products to
circumvent patent infringement liability if they make, sell, conduct field trials or
experiments in respect of a patented product, regardless of the extent of those activities as
long as they can prove that the use was to obtain regulatory approval for the product.
A public use of the invention that having the primary purpose is of testing of the invention.
Experimental use is allowed in the U.S. and Japan (for a short period) but not in most
The date when a patent has run its full term and the invention is no longer protected by it.
Express Abandonment (US):
A patent application may be expressly abandoned by filing a written declaration of
abandonment identifying the application in the United States Patent and Trademark Office.
Express abandonment becomes effective when an appropriate official of the Office takes
action thereon. Express abandonment of the application may not be recognized by the
USPTO before the date of issue or publication unless it is actually received by appropriate
officials in time to act. 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 USPTO docket of pending applications.
Expressio Unius est exclusio alterius (UK)
A legal term meaning "the mention of one is to the exclusion of the other".
Extension of Time
An extension of the "period for response" stipulated in an Office action.
Extension or prolongation of term:
Prolongation of a normally fixed term such as the life of a patent.
Fairly based [of a claim] (UK, NZ):
The descriptive part of the specification or by a priority document that provides support for
a later filed application or the monopoly being sought.
False Suggestion (NZ):
One of the Grounds for Revoking a Patent where an objection is made that the patent was
obtained on a false suggestion or representation".
See Court of Appeals for the Federal Circuit (CAFC or Fed. Cir.).
Incorporation of a business at the federal level according to the Canada Business
The regulations of the departments and agencies of the U.S. Federal Government as
published in the Code of Federal Regulations.
The fee charged by a patent office for filing a patent application.
The fee charged by a patent office for issuing (granting) a patent.
The periodic fee charge by the U.S. patent office for maintaining a patent in force.
The fee charged by a patent office for reviewing a petition filed by an applicant.
Field of Endeavor
The area of technology that an inventor invents within. Also called technical field or field of
Field of the Invention
See Field of Endeavor.
Field of Use
The technical field or market within which an invention is licensed. The licensee may not
sell the invention within other markets.
An explanation of what marks mean on a drawing. Patent drawings do not have legends.
File history or file wrapper (US):
The dossier containing all papers relevant to the prosecution of an application.
The complete file of a patent application containing all related papers prepared by the
patent office and the applicant during the prosecution of the application. Also called File
File wrapper estoppel (US):
A principle forbidding the patentee from asserting a scope broader than the literal wording
of the claims if the claims are narrowed during prosecution to avoid prior art.
File Wrapper Estoppel
A restriction in the interpretation of a claim that exists because of an admission in the
record by the applicant.
The folder in which the file history is kept.
Filing Date (ALL):
The date of receipt in the Office of an application which includes
(1) a specification containing a description and, if the application is a non-provisional
application, at least one claim, and
(2) any required drawings.
The date when a sufficiently-complete patent application reaches a patent office.
The fee charged by a patent office for processing a patent application.
An Office action that contains a final rejection of one or more claims or another final action.
Notification by the examiner that indicates this action is the final one. A final action may be
appealed to the Commissioner of Patents, the Federal Court of Canada and to the Supreme
Court of Canada.
Final rejection (US):
An official action severely limiting further prosecution. An Office action on the second or any
subsequent examination or consideration by an examiner that is intended to close the
prosecution of a non-provisional patent application. An Applicant's reply under 37 CFR 1.113
to a final rejection is limited either to an appeal in the case of rejection of any claim to the
Board of Patent Appeals and Interferences (37 CFR 1.191) or to an amendment complying
with the requirements set forth in the Office action (37 CFR1.114 or 1.116). Reply to a final
rejection must comply with 37 CFR 1.114 or include cancellation of, or appeal from the
rejection of, each rejected Claim. If any claim stands allowed, the reply to a final rejection
must comply with any requirements or objections as to form (37 CFR1.113(c)).
A rejection of a claim that is made final on a second or subsequent examination or
consideration. After a rejection of a claim is made final, an applicant must generally either
agree with Examiner suggestions or appeal the rejection.
A claim characterising a new product of an unknown structure in terms of its properties.
The first examination on the merits of the claims.
First to File (EP):
In the European patent system, the patent is awarded to the first person to file an
application on that invention independent of who was the first to invent. (cf First to Invent).
First to File
A system in which the first person to file a patent application on a patentable invention will
be awarded a patent. Patent systems in all countries other than the U.S. and the Philippines
use this system.
First to Invent (US):
In the United States the patent is awarded to the first person to make an invention
independent of who was the first to file an application for that invention. (cf First to File).
First to Invent
A system in which the first person to invent an invention will be awarded a patent. This
system is used in the U.S. and in the Philippines.
Foreign Filing Date
The date a non-U.S. patent application was filed that establishes priority of invention.
Filing in countries other than the country of first filing.
An allowed patent application on which the issue fee or a maintenance fee has not been
paid within the proscribed period.
Forum shopping (US):
Legal manoeuvring to try to have a suit heard by a court thought favourable to one’s own
Franchising may be defined as a business arrangement which allows for the reputation
(goodwill), innovation, technical know-how and expertise of the innovator (franchisor) to be
combined with the energy, industry and investment of another party (franchisee) to conduct
the business of providing and selling of goods and services. The franchisee will operate
under the franchisor's Trade name, usually with the franchisor's guidance, in exchange for a
Franchising is a method of doing business where a company (sometimes even an individual)
called a franchisor licenses its intellectual property (e.g. its trade-marks, trade secrets,
know-how) usually along with its business methods to an individual called franchisee in
exchange for a fee. This business method allows the franchisor to expand and distribute its
products or services while giving the franchisee the opportunity to operate his/her own
Fraud on the Patent Office:
(US) Obtaining a patent by concealment or misrepresentation of the facts.
Searchers who provide intellectual property searching services to the public in exchange for
An invention that lacks utility because it is frivolous.
Front Page Drawing
The drawing selected by the Examiner to appear on the front page of a U.S. patent.
A German utility patent.
General Agreement on Tariffs and Trade (GATT)
An agreement among industrialized nations that contain the Trade-Related Aspects of
Intellectual Property Rights (TRIPs) provisions. To comply with TRIPs, Congress amended 35
U.S.C. 104 under which proof of date of invention in a foreign country is allowable if the
country is a North American Free Trade Agreement (NAFTA) country for events after
December 8, 1993, or a World Trade Organization (WTO) country for events after January 1,
Generic claim (ALL):
A claim that covers a number of compounds defined by common structural features.
It (multisource pharmaceutical) is a pharmaceutical preparation that is essentially similar to
an original product, involves an active ingredient that is no longer protected by patent, is
approved for sale by a simplified registration, and is sold under a common name with little,
if any, promotion.
Geographical Indication (ALL):
A sign used on goods that has a specific geographical origin and possesses qualities or a
reputation that are due to that place of origin, e.g. "Roquefort" for cheese produced in
A geographical indication is an indication, which identifies that a wine or spirit originates
from a territory where a quality, reputation or other characteristics of the wine or spirit is
essentially attributable to its geographical origin. In Canada, geographical indications are
also listed on the List of Geographical Indications kept by the Registrar of Trade-marks.
A German design patent.
Gillette Defence (UK/NZ):
Given to us in the Gillette Safety Razor V Anglo Trading Case (1913) where a defence to an
alleged infringement was made that the infringement was obvious. The argument was that
if the Patent in suit was read broadly it covered areas it wasn’t entitled too, if the Patent
was read narrowly then there was no infringement.
The benefit and advantage of the good name, reputation and correction of a business with
its customers, suppliers, and distributors". It is often referred to as the attractive force,
which brings in custom.
Goodwill as the subject of proprietary rights cannot exist by itself. It has no independent
existence apart from the business to which it is attached. In an acquisition, goodwill appears
on the balance sheet of the acquirer in the amount by which the purchase price exceeds the
net tangible assets of the acquired company. The most obvious form of goodwill is seen as
the name, sign or trade marks under which a business trades and by which it is recognized in
the market place.
Grace period (US/AU/MX):
A period of time before the filing date of an application during which certain types of
publication do not invalidate the application. From the date of first disclosure or publication,
the US has a 12 month Grace period for filing an application.
Following the examination of a patent application a patent may be granted or refused. After
a patent is granted, the patent owner has the right to exclude others from making, using
and or selling an invention.
The issuance of a patent; a right given by a patent office to an applicant that allows the
grantee (patentee) to prevent anyone else from using the technology defined in the claims
of a patent during the term of the patent.
Hague System (ALL):
A system for the International Registration of Industrial Designs. See
The proposed harmonizing of patent laws in different countries to produce essentially one,
worldwide patent law.
How to Make (US):
This is part of the obligation to provide a disclosure in the patent application that would
enable one skilled in the art to practice the invention without engaging in undue
How to Use:
This is a similar standard to the "how-to-make" standard and relates to the use aspect of an
invention, if appropriate.
What exists in the mind as an intangible creation.
Imformation Disclosure Statement (US/AU)
A USPTO or AIPO requirement for the applicant to provide all relevant prior art to the
Examining authority at the time of a Patent Application and throughout the course of its
prosecution. It is predicated on the belief that the Inventor knows more about the invention
as Claimed than does the Examiner. Often abbreviated to IDS. Failure to provide relevant
information may invalidate the patent.
(UK,NZ) formerly, an invention known but brought into the UK for the first time. Still applies
to New Zealand.
A patent claiming an invention that is an improvement or modification of an invention
claimed in a prior patent. In some instances, it means a patent that cannot be practiced
without infringement of a prior patent.
Refers to a patent that is issued on an application filed later in time than a prior application
and tends to build upon the previously disclosed invention or the previously disclosed and
In re Pardo (US):
An important precedent that says that something does not cease to become patentable
merely because the point of novelty is an algorithm. (Scheme or plan).
Incorporation by Reference
To supplement the disclosure of a patent application by making a specific statement in the
application that other material is to be considered to be incorporated in the application.
A claim that fails to particularly point out the claimed invention.
Indefiniteness of Claim (US):
Section 112 of the Patent Statute requires that the claims be sufficiently definite so as to
provide a standard by which a third party could, with some degree of certainty, determine
whether a given practice would or would not be an infringement of the claims.
The opposite of definiteness.
Indemnity from Suit
A situation in which one party has agreed to sue another party, e.g., for patent
A patent claim that stands alone in that it does not depend from (contain the limitations of)
any other claim.
Independent Claims (US):
Claims that do not depend from another are referred to as independent Claims.
Inducement to Infringe
An act that encourages another party to infringe a patent.
Industrial Design (EP, UK):
An industrial Design is the ornamental or pleasing appearance of an article. A Design can
have 3-Dimensional (shape) or 2-Dimensional (pattern) when applied to an article.
Industrial Design Office
The office that receives, processes, classifies, searches and examines applications for
registration of industrial designs. The Canadian Industrial Design Office is known as the
Industrial Design Division and belongs to the Copyright and Industrial Design Branch. The
Division also registers assignments, licences and changes of ownership, and collects fees.
Once registered, industrial designs are publicly disclosed and become part of the register
maintained by the Division. Copyrights, industrial designs and integrated circuit
topographies are all managed under the direction of the Copyright and Industrial Design
Industrial design right
In general, it is the exclusive right to use a design. More precisely, it is the exclusive right to
make, import for trade or business, rent or sell or expose for sale or rent in Canada, any
article in respect of which the design is registered and to which the design is applied.
The visual features of shape, configuration, pattern or ornament (or any combination of
these features), applied to a finished article of manufacture.
The department of Industry Canada works with Canadians throughout the economy and in
all parts of the country to improve conditions for investment, improve Canada's innovation
performance, increase Canada's share of global trade and build a fair, efficient and
Information Disclosure Statement (IDS)
A list of all patents, publications and other information submitted by an applicant for patent
to the USPTO in discharging his duty of disclosure or to ensure that the Examiner considers
Federal employees who work in the Client Service Centre of the Canadian Intellectual
Property Office and who provide assistance to the public.
To make, use or sell a patented invention in the jurisdiction and during the term of a
A situation wherein an issued patent is infringed (practiced without a license to do so) by a
product or process that has all of features of the invention claimed in the patent.
(1) Doing something forbidden by the grant of a patent to another.
(2) Encroach or trespass on the rights of others, usually involving intellectual property. A
device infringes on a patent if the claims of a valid patent read on that device. Infringement
can be direct or Literal Infringement, infringement under the Doctrine of Equivalents,
Contributory Infringement or Active Inducement to Infringe.
Violation of copyright through unauthorized copying or use of a work or other subject
matter under copyright.
Infringement (industrial designs)
Violation of industrial design rights through unauthorized use of a design.
Infringement (integrated circuit topographies)
Violation of the integrated circuit topography rights by reproducing a protected topography
or any substantial part of one; manufacturing an integrated circuit product incorporating
the topography or a substantial part of one; importing or commercially exploiting a
topography or a substantial part of one, or of an integrated circuit product that embodies a
protected topography or a substantial part of one; importing or commercially exploiting an
industrial article which incorporates an integrated circuit product that embodies a protected
topography, or a substantial part of one.
Violation of patent rights through unauthorized use, making and or selling of the patented
Violation of trademarks owners' rights through unauthorized use of a trademark.
Infringement By Equivalents
Infringement in the situation that the infringing product or process does not have exactly
the same features as the invention claimed in the patent but that any different feature
performs the identical function specified for the claimed feature.
The practice of a claimed invention without a license to do so.
Infringement Under Doctrine of Equivalents
See Infringement By Equivalents.
Any party that who makes, uses, sells, places on sale, or imports into the country where the
patent is in force the invention as claimed.
Violator of intellectual property rights.
A development or an improvement is considered ingenious if it is not obvious to workers of
average skill in this area of technology.
Present in the essential character of something.
A court order obligating an offending party to cease doing an illegal act, such as infringing
another party’s Intellectual Property Rights.
A writ granted by a court whereby one is required to do or to refrain from doing a specified
An order by a Court instructing a person to stop or start doing a particular act.
Innocent infringer (UK):
An infringer who could not be expected to know of the existence of the patent, and
consequently who does not have to pay damages.
A wonderful Resource for obtaining Patent Information. INPADOC is one of the most
comprehensive patent collections in the world. Produced by the European Patent Office and
updated weekly, this database contains patent family documents and legal status
information from 65 WIPO signatories and 22 patent offices, respectively. See
A ground of invalidity of a patent, if the description does not enable the reader to work the
Intangible Asset (ALL):
Something of value that cannot be physically touched, such as a brand, franchise,
Trademark, Copyright, or Patent. The opposite of a tangible asset.
The assets of a company that are saleable but not material or physical as the tangible assets
What exists in the mind and is not yet developed into a tangible creation.
A distinct feature or element of a claim.
Integrated Circuit Topographies
The three-dimensional configuration of the electronic circuits embodied in integrated circuit
products or layout designs.
Integrated circuit topography document
A document showing drawings of the three-dimensional configuration of the electronic
circuits used in microchips and semiconductor chips along with other information from an
integrated circuit topography file with the Integrated Circuit Topography Office.
Integrated Circuit Topography Office
The office registering integrated circuit topographies. The Canadian Integrated Circuit
Topography Office belongs to CIPO's Copyright and Industrial Design Branch. Copyrights,
industrial designs and integrated circuit topographies are all managed under the direction of
the Copyright and Industrial Design Branch.
Integrated circuit topography rights
Canada's integrated circuit topography legislation protects the original design of a registered
topography, whether it has been embodied in an integrated circuit product or not. More
precisely, the legislation permits owners of registered topographies to exclude others from:
reproducing a protected topography or any substantial part of one; manufacturing an
integrated circuit product incorporating the topography or a substantial part of one;
importing or commercially exploiting a topography or a substantial part of one, or of an
integrated circuit product that embodies a protected topography or a substantial part of
one; importing or commercially exploiting an industrial article which incorporates an
integrated circuit product that embodies a protected topography, or a substantial part of
It is the sum of an organization's ideas, inventions, technologies, brands, general
knowledge, software, designs, processes, etc. i.e., knowledge that can be converted into
Intellectual Property (ALL): Creations of the mind: inventions, literary and artistic works,
and symbols, names, images, and designs used in commerce.
Intellectual property is divided into two categories: Industrial property, which includes
inventions (patents), trademarks, industrial designs, and geographic indications of source;
and Copyright, which includes literary and artistic works such as novels, poems and plays,
films, musical works, artistic works such as drawings, paintings, photographs and sculptures,
and architectural designs. Rights related to copyright include those of performing artists in
their performances, producers of phonograms in their recordings, and those of broadcasters
in their radio and television programs.
Intellectual property (IP)
Very broadly, means legal rights that result from intellectual activity in the industrial,
scientific, literary and artistic fields.
An intangible form of personal property. Patents, copyrights, trademarks, service marks,
trade names and trade secrets are examples of intellectual property.
Intellectual property assets (IP assets)
Those intangible assets that may be protected by formal legislation (e.g. patents, trade-
marks, industrial designs, copyrights, integrated circuit topographies, plant breeders' rights)
or that are provided national and international value (e.g. know-how, trade-secrets).
Intellectual property infringement (IP infringement)
A violation of intellectual property rights while they are in force. See also Infringement
(patents, trade-marks, copyrights, industrial designs and integrated circuit topographies).
Intellectual Property Institute of Canada (IPIC)
The intellectual property association in Canada to which nearly all registered patent agents,
registered trademark agents and lawyers specializing in intellectual property belong.
Intellectual property laws (IP laws)
The group of laws relating to different types of intellectual property rights.
Intellectual property lawyer (IP lawyer)
A lawyer advising or representing clients on intellectual property issues or court
Intellectual property licence (IP licence)
It is the formal agreement to transfer a portion of the intellectual property rights from the
owner called licensor to another party called licensee. The grant of a licence implies the
agreement of the intellectual property owner not to enforce his/her intellectual property
rights against the licensee.
Intellectual property ownership (IP ownership)
Ownership of a type of intellectual property obtained as result of a grant or registration or
through an assignment.
Intellectual property protection (IP protection)
The protection involving the possibility of enforcing the intellectual property rights by the
intellectual property owner with the help of the legal system.
Intellectual Property Regulations (37 CFR) Index (US):
A list of the Rules concerning Patents, Trademarks, Designs and Copyrights in the US. See
Intellectual property rights (IP rights)
Intellectual property rights, whether in the form of patents, trade-marks, copyrights,
industrial designs, integrated circuit topographies, or plant breeders' rights reward this
intellectual activity in the industrial, scientific, literary and artistic fields.
Intellectual property search (IP search)
Search of different intellectual property documents (e.g. patent, trade-mark, copyright or
industrial design documents).
Inter partes (UK):
A procedure between two parties and a decision maker, as for example a court proceeding,
in contrast to ex parte.
Interested person (UK):
See aggrieved person.
A procedure declared by the patent office when it appears that two or more people made
the same invention at roughly the same time. It is an expensive, lengthy court-like
proceeding designed to determine who was the first inventor. About 1/10 of 1% of patents
are involved in interference.
A priority contest in the USPTO to determine which of two or more parties was the first to
invent commonly-claimed subject matter.
Interlocutory injunction or interim injunction (UK):
A court order to (usually) cease certain acts e.g. alleged infringing acts pending the trial of
the action. Continue with rest of definition. In seeking this discretionary remedy it is vital
that the plaintiff act quickly. Delay may foreclose any chance of obtaining an injunction.
To obtain a pre-trial injunction a plaintiff will need to satisfy the court that there is a serious
question to be tried and that if the defendant is not stopped now the damage to the
plaintiff's business will be so great that there could be no adequate financial compensation
Internal priority (UK):
the possibility of filing, within 12 months, an application claiming priority from an earlier
application in the same country (e.g. C.A.P.).
International application (PCT):
An application made under the provisions of the PCT.
International or Canadian Patent Classification
Detailed classification systems of patent documents that help people to retrieve relevant
patent information. Canadian patent documents filed prior to October 1,1989, are classified
according to the Canadian Patent Classification system. Patent documents filed on or after
October 1,1989, are classified and searchable according to the International Patent
Classification (IPC) system.
A defense to an allegation of infringement. Intervening rights exist when a patent is later
reissued with broader claims because of inadvertent errors in claim instruction in the
original patent. Any person who practiced the broadened claims prior to the reissue can
continue. For such a person, infringement would result only if he or she practiced the
surviving, narrower claims.
Integrated trademark electronic processing of information and designs.
A ground of invalidity of a patent, if the claimed product does not give the promised results.
Ineffective or void under the law. A patent can be invalided if it was issued in error.
A solution to a technical problem (i.e., technology) that may or not be patentable.
From a legal standpoint, a description of an invention that would enable a person skilled in
the art to which the invention pertains to build and use the invention. Invention disclosure
documents are used for a variety of legal and commercial purposes. See Disclosure.
See Abandonment of Invention.
Inventive Step (EP/PCT):
Inventive step goes to a feature that is non-obvious and is mandatory to gaining Patent
To be patentable, an invention must be a development or an improvement that would not
have been obvious beforehand to workers of average skill in the technology involved.
Someone who has a new idea and pursues its development. Inventors apply for patents on
their inventions as a part of developing their invention. Many inventors are also product
developers, entrepreneurs and businessmen and most inventors find it good marketing
practice to sell themselves as product developers or, entrepreneurs or businessman, as the
term inventor often having a bad connotation to a business man.
See Inventive Entity.
A person who collaborates with another inventor in the conception of an invention.
Inventor’s certificate (UK):
Previous system for patents owned by state, giving the inventor some reward. Was in
mainly Communist countries.
The condition of being an inventor under the law.
International Patent Classification is a hierarchical system in which the whole area of
technology is divided into a range of sections, classes, subclasses and groups. The eighth
edition of the IPC entered into force on January 1, 2006. See
International Preliminary Examination Authority.
International Preliminary Examination Report Released after Demand has been filed.
International Searching Authority. There are 12 such authorities, the latest addition being
that of Finland.
International Search Report. Usually within 16 months from priority date.
The fee paid by an applicant a patent office prior to the granting of a patent.
The grant of a patent by a patent office.
Jepson claim (US):
Relates to a claim format. A claim in the German style that distinguishes the new from the
old features. The new features are generally introduced by the words "the improvement
comprising" or "the improvement consisting of" or "the improvement consisting essentially
A claim that contains in its preamble subject matter that is in the prior art.
A patent application in which the invention is presented as that of joint inventors.
An invention conceived by more than one person. See Inventor, Joint.
See Inventor, Joint.
Junior Party (US):
The party in an interference who has the later US filing date.
Unpatented technical or commercial information. Can be part of what are considered to be
They are assets of an organization such as ideas, inventions, technologies, brands, general
knowledge, software, designs or processes.
An organized repository of knowledge about a particular subject. For example, a set of U.S.
patentability rules is a knowledgebase.
Knowledge-based Expert System
A computer program that uses knowledge and inference procedures for solving a problem
that is sufficiently difficult to require a significant amount of human expertise to arrive at a
An unexamined Japanese patent application.
An examined and allowed Japanese patent application.
Label licence (US):
A statement that the purchase of the labelled goods gives a licence to use them in a
Language of the proceedings (EP):
The language (French, English or German) in which a European patent application is filed.
A term used in some jurisdictions to show when an IP is no longer protected in a country or
system due to failure to pay renewal fees or maintenance fees. In many cases a Patent can
be reinstated with good reason and within a limited time period.
The date when a patent is no longer enforceable in a jurisdiction due to a failure to pay
renewal (maintenance) fees. Often, the patent can be reinstated if appropriate fees are paid
within a limited period after the lapse date.
Large entity (US/CA):
Not a small entity: In the US more than 500 employees. In Canada more than 50 employees.
The legal status of a patent publication includes information about events affecting the
patent after the initial publication. Examples of legal status include the publication of a
Patent, The publication of Equivalent Patents within the Patent Family, Assignments,
Licenses, mortgages and most importantly whether the Patent is "in Force", Lapsed, Expired
or if the Patent Term has been Extended
Letters Patent (UK):
An ‘Open Letter’ from the sovereign to notify the grant, such as of a monopoly for a new
Level of Ordinary Skill
The level of skill in the art(s) to which an invention pertains that is used in judging whether
a disclosure or claim is enabling.
Licences of right (EP/UK):
An endorsement on a patent to the effect that anyone may have a licence upon reasonable
A legal contract given by a licensor to a licensee the right to use a Patented invention,
Trademark, Design or Copyrighted work.
Any conveyance of a right under a patent that is not an assignment (transfer of ownership).
Licensing (intellectual property rights)
The transfer of a portion of the intellectual property rights from the owner called licensor to
another party called licensee. It is not a complete transfer of intellectual property rights as
in the case of an assignment. Licensing may be subject to a variety of terms and conditions
specified in the licensing agreement.
Likelihood of Confusion (USA): A Trademark term.
The statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) for refusing
registration of a trademark or service mark because it is likely to conflict with a mark or
marks already registered or pending before the USPTO. After an application is filed, the
assigned examining attorney will search the USPTO records to determine if such a conflict
exists between the mark in the application and another mark that is registered or pending
before the USPTO. The USPTO will not conduct any preliminary searches for conflicting
marks before an applicant files an application and cannot provide legal advice on whether a
particular mark can be registered.
The principal factors considered by the examining attorney in determining whether there is
a likelihood of confusion are:
(1) the similarity of the marks; and
(2) the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do
not have to be the same. It may be enough that the marks are similar and the goods and/or
services related. If a conflict exists between your mark and a registered mark, the examining
attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists
between your mark and a mark in a pending application that was filed before your
application, the examining attorney will notify you of the potential conflict and possibly
suspend action on your application. If the earlier-filed application registers, the Examining
Attorney will refuse registration of your mark on the ground of likelihood of confusion.
All other Examining Offices have a similar requirement.
Language in a claim that constrains the breath of a claim.
Lisbon Agreement (ALL)
: for the Protection of Appellations of Origin and their International Registration. See
Literal Infringement (ALL):
A term used to refer to an infringing article or process that contains every integer of a claim
See Infringed Literally.
Local novelty (NZ):
The principle that a patent can be invalidated by prior publication only if the publication was
in the country granting the patent.
Locarno Classification (ALL):
The International Designs Classification System. See
Long felt want (NZ/UK):
A rebuttal for allegation of obviousness. No one else had seen the solution to satisfy the
want in the marketplace. Equivalent to Long Felt Need above.
Long-Felt Need (ALL):
Refers to a known problem facing a particular technical area that has gone unsolved for a
prolonged period. The presumption is if the solution had been obvious to those skilled in the
art, they would have solved the problem.
Lost Profits (ALL):
This is a measure of damages and is generally keyed to the profits that could have been the
patentee’s, but were lost to the infringer. The alternate standard, where the patentee is
either not in the business or cannot prove that profits made by the infringer would have
been his or hers, is to employ the standard of the statute that is not less than a reasonable
A device, a product, a physical thing. Under U.S. law, one of the statutory classes of
Madrid Protocol (US/EP/UK/AU):
A Trademark term. An mechanism that allows the owner of a Trademark registered in one
country to apply for protection of that Trademark in other countries within the system.
Administered by WIPO. See http://www.wipo.int/madrid/en/.
Maintenance fee (industrial designs)
A fee required before the expiry of 5 years plus 6 months from the date of registration in
order to maintain the registration for a further 5 years (for a maximum of 10 years
See Fee, Maintenance.
Maintenance fees (EP/US):
Annual fees payable to keep a patent application pending. In the US, maintenance fees must
be paid at 3.5, 7.5, and 11.5 years after issuance of a patent in order to keep the patent in
force and maintain the exclusive right.
Maintenance fees (patents)
Yearly fees required to either, maintain a patent application or to keep a patent in force.
Maintenance fees encourage the applicant or patent holder to re-evaluate the economic
value of their applications and patents.
Man skilled in the art (UK):
The hypothetical person to whom the patent specification is addressed.
Manner of new manufacture (UK):
The term used in the Statute of Monopolies (q.v.) for the proper subject of a patent.
Incorporated into the NZ Patents Act definition of Invention s2.
Manual of Patent Examining Procedure (MPEP)
A document that contains a description of the practices and procedures of the USPTO.
One of the classes of patentable subject matter under U.S. law.
The placing the word "patent" or "patent pending" or "Patent application" along with the
patent number on articles made by the patentee or a licensee. If the patentee fails to mark
his or her products, then the patentee may recover only damages for infringement that
occurred after the infringer has received actual notice through a charge of patent
infringement. Mandatory in some countries before an infringement action can be issued.
Also Called Notice.
See Claim, Markush.
Markush Group (US):
A group of compounds or substituents defined for the purpose of a patent claim and lacking
a common generic description.
In a claim, a finite group from which an element is selected. See Claim, Markush.
Means for Claim
A patent claim that recites an element as a means for accomplishing a particular function.
Means Plus Function Claims (US):
Goes to equivalence. This concept allows an applicant rather than referring to a component
by a specific, limiting term or feature such as "a screw" or a "nail" but may instead refer to a
feature as a means for accomplishing something. For example a "screw" or "nail" may be
refer to as a "a fixing means for uniting A with B."
Means Plus Function Language
See Means for Claim.
See Means for Claim.
A method of alternative dispute resolution in which a mutually agreed on mediator works
with the disputing parties to help them reach an agreement. While mediation has a high
rate of success in resolving disputes, in contrast to arbitration, a mediator has no authority
to force a decision on the parties.
Mere Descriptiveness (US):
A Trademark term. A statutory basis (Trademark Act Section 2(e)(1), 15 U.S.C. Section
1052(e)(1), for refusing registration of trademarks and service marks because the proposed
mark merely describes an ingredient, quality, characteristic, function, feature, purpose or
use of the specified goods or services. With regard to trademark significance, matter may be
categorized along a continuum, ranging from marks that are highly distinctive to matter that
is a generic name for the goods or services.
The degree of descriptiveness can be determined only by considering it in relation to the
specific goods or services. At one extreme are marks that are completely arbitrary or
fanciful. Next on the continuum are suggestive marks, followed by merely descriptive
matter. Finally, generic terms for the goods or services are at the opposite end of the
continuum from arbitrary or fanciful marks.
The major reasons for not protecting descriptive marks are:
(1) to prevent the owner of a mark from inhibiting competition in the sale of particular
goods or services; and
(2) to maintain freedom of the public to use the language involved, thus avoiding the
possibility of harassing infringement suits by the registrant against others who use the mark
when advertising or describing their own products.
Mere paper anticipation:
Misnomer. Part of Obviousness. An untried paper provisional is of little value.
The combining of two or more entities into one, through a purchase acquisition or a pooling
of financial interests.
One of the classes of patentable inventions (a process) under U.S. law.
Minimum Documentation (PCT):
The minimum requirement for a patent office collection that is used to find prior art
documents (patents and periodicals) in order to assess novelty and inventiveness. See
Using a patent right inappropriately, for example, for forcing a license to purchase a product
that is not covered by the claims of the patent.
See Best Mode.
Moral Rights (USA/EP):
Specific rights retained by the author of a copyrighted work to maintain the integrity of a
work. Also gives the author the right to be named as the originator or creator of the work
even after the copyright to it has been sold.
The combination of different pieces of prior art to put together all the features of claimed
invention. Goes to obviousness.
Multiple Claim Dependency (ALL):
A dependent claim that further limits and refers back in the alternative to more than one
preceding independent or dependent claim. Acceptable multiple dependent claims shall
refer to preceding claims using the terms "or, any one of, one of, any of, either." In the US, a
multiple dependent claim may not depend on another multiple dependent claims, either
directly or indirectly.
Multiple Dependent Claims
A dependent claim that refers back in the alternative to more than one preceding
independent or dependent claim.
Multiple Inventions (US):
This term refers to an application that endeavours to Claim more than one invention in a
single application. In most instances an Objection will be the result. Separate inventions may
be divided out as Divisional Applications and maintain their original Filing Date.
National phase (PCT):
Leave PCT International Phase and file in one or more individual countries or regions.
National route (EP/PCT):
Obtaining patents in EPC countries by separate applications at national patent offices or
filing elsewhere outside of the PCT.
New Drug Application is the process of obtaining approval from FDA to market a new drug.
Negative Claim Limitation
See Negative Limitation.
A claim limitation that is excusive, e.g., "other than X" "incapable of X", etcetera.
A patentability issue or question that had not arisen previously in the examination of an
Matter (information) that is not present in the original specification, claims or drawings that
an applicant attempts to add to a patent application.
One of the classes of patentable subject matter under U.S. law.
Nice Classification (ALL):
A Trademark term where good and services are divided into separate Classes according to a
Nice Convention on International Classification. There are presently 45 Classes, 34 relating
to goods and 11 relating to services. See
No-contest clause (UK):
A clause in a patent licence agreement in which the licensee agrees not to attack the validity
of the licensed patent.
Non Final Office Action (US):
An Office action made by the examiner where the applicant is entitled to reply and request
reconsideration or further examination, with or without making an amendment.
On taking up an application for examination or a patent in a re-examination proceeding, the
examiner is required to make a thorough study of the application and of the available prior
art relating to the subject matter of the claimed invention. This examination must be
complete with respect to:
(1) compliance of the application or patent under re-examination with the applicable
statutes and rules,
(2) the patentability of the invention as claimed, and
(3) matters of form, unless otherwise indicated.
Non-Analysis Agreement (UK,NZ):
An agreement to prevent the analysis of samples or reverse engineering. Such agreements
are important as should any analysis be allowed and the constituents be found to be in the
public domain they can be copied.
A patent application filed in a second, or subsequent country, which does not claim the
priority of another, earlier application in another country.
Non-convention application/filing (ALL):
An application that does not claim priority from an earlier application, although one exists.
Non-disclosure agreements, known also as confidentiality agreements, are contracts in
which the parties agree not to disclose the secret information they share and not to make
unauthorized use of such information (e.g. a secret innovation or creation).
Non-exclusive licence (ALL):
A licence that does not exclude the possibility of further licences being granted.
The opposite of obviousness. See Obviousness.
Nonprovisional Patent Application
A type of U.S. utility patent application that must contain at least one claim and can issue as
An article of commerce whose only significant use is in a patented process.
The condition of an application claiming more that one invention. Also referred to as
Normal working (UK):
Offering a licence to avoid the working requirement.
Notice of Allowance (US):
A written notification from the USPTO that a specific application has been allowed. In the
Case of a Trademark it indicates 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
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.
Notice of Allowance and Issue Fee Due
A notice by the USPTO that the application has been placed in a condition for allowance and
that the issue fee must be paid within three months of the mailing date of the notice.
Notice of Appeal (US/CA):
A document filed by the applicant in the USPTO to initiate an appeal of an Examiner’s
rejection to the Board of Patent Appeals and Interferences.
Notice of Appeal
See Appeal, Notice of.
One of the essential conditions for patentability. It is a requirement that what is claimed is
new. Novelty is present if no single document discloses every element of the Claimed
In order to receive a grant for your invention you must be the original inventor (or the
assignee of the invention),and it must be the first such invention in the world.
New; not anticipated by (taught by) the prior art.
See Official Gazette.
A sworn statement. In the U.S., declaration may be used instead of an oath to verify that
information being submitted to the USPTO is true.
Object clause (ALL):
Part of the patent specification stating the object to be achieved by the invention.
Object of the Invention
A desired characteristic of an invention.
Theft of the invention.
Obvious to Try (ALL):
Goes to obviousness. The validity of a patent can be challenged by attempting to show that
what the inventor given a particular problem did would have been obvious for an ordinarily
skilled practitioner to try, based on the prior art. As such the invention would have been
Apparent to the averagely skilled man in possession of all the relevant prior art. Prior art
may be combined to show that an invention would have been obvious. In ascertaining
whether an application is obvious, prior art teachings may be combined or mosaiced. If an
invention would have been obvious to a person of only ordinary skill in the art at the time
the invention was made, then it is not patentable.
A characteristic that makes an invention predicable to a person having ordinary skill in the
art who has knowledge of all of the prior art. No "inventive step" was involved in conceiving
the invention. One of the most difficult terms in patent law to define and understand.
An activity that can bar obtaining a patent in some jurisdictions if the activity occurs a
sufficient period of time before a patent application on the invention is filed.
Official action (US):
Communications from the Patent Office examiner raising objections to a patent application.
After receiving an adverse office action, the applicant must respond within the set time
limits. Six months in the US. A Universal Term.
A publication of the USPTO in which new patents and trademarks are announced. Published
weekly in two editions, one for patents and one for trademarks.
A Trademark term relating to "The Office For The Harmonisation In The Internal Market". An
administrative arm of the EC whose role is to register Community Trademarks and
Community Designs. A single application can be protected and enforced in all 25 European
States. See http://oami.eu.int.
An application that, having been acted on by an Examiner, has, in turn, been acted on by the
Omnibus claim (UK):
A claim claiming the invention as described with reference to the drawings or examples.
On Sale (US):
If an inventor places his or her invention on sale more than one year before a US patent
application is filed, then a valid patent cannot be obtained. This is sometimes referred to as
the on-sale bar to a patent. An invention is on sale where it has actually been sold or an
offer of sale has been made.
See Offer to Sell.
One-Year Grace Period
The one-year period that starts on the date that an invention is used publicly, offered for
sale, patented or published anywhere in the world during which period a U.S. patent
application must be filed to avoid a bar.
On-line intellectual property databases (On-line IP databases)
On-line databases containing different collections of intellectual property documents (e.g.
patent, trade-mark or copyright documents).
Open for Public Inspection (patents)
The date that a patent application is first made available to the public.
Open for Public Inspection
The date upon which a patent application is first made available to the public.
An opinion offered by a patent agent or a patent attorney as to whether a claimed
invention is likely to be deemed patentable by a patent office in view of the prior art made
available to him/her.
An opinion offered by a patent agent or a patent attorney as to whether the claims of an
issued patent would likely be upheld by a court in view of the facts made available to
Proceedings before a Patent Office in which a third party raises objections to the grant of a
The process whereby members of the public may object to the registration of a trade-mark
if they have grounds for doing so.
A proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to
prevent the issuance of a registration of a mark. An opposition is similar to a proceeding in a
federal court, but is held before the Trademark Trial and Appeal Board, a USPTO
administrative tribunal. Any person who believes that he or she will be damaged by the
registration of a mark may file an opposition. See Aggrieved Person, but the opposition may
only be filed in response to the publication of the mark in the Official Gazette.
A procedure available in most countries (but not the U.S.) whereby a third party may
request that a patent not issue or that an issued patent be invalidated.
is the common name of "Approved Drug Products with Therapeutic Equivalence
Evaluations," the FDA publication that lists, among others, patents protecting the active
ingredient, formulation, and method of use of a drug product.
Ordinary Skill in the Art (ALL):
A hypothetical state. The level of technical knowledge, experience, and expertise possessed
by the run-of-the-mill or ordinary engineer, scientist, or designer in the technology (or
technical team) that is relevant to the invention. Fundamental to an Obviousness defence.
Obviousness is measured with reference to a hypothetical person having ordinary skill in the
art to which the invention pertains. The Ordinary skilled practitioner is considered to have
no inventive capacity.
A patent application that is not a reissue application.
Patent Application Information Retrieval. An excellent USPTO product that provides secure
access for customers who want to view current patent application status electronically via
the Internet. See http://portal.uspto.gov/external/portal/pair.
Paragraph IV certification
is a declaration that a patent listed in the Orange Book is invalid or will not be infringed by
the generic drug in an ANDA.
Parallel importation (ALL):
The unauthorised importation of patented goods from a country in which the goods are
legally on the market. In New Zealand please refer also the NZ Copyright (Removal of
Prohibition on Parallel Importing) Amendment 1998.
An earlier regular (nonprovisional) patent application of an inventor disclosing a given
Paris Convention (ALL):
Refers to the Paris Convention for the Protection of Intellectual Property first signed in 1883
and updated again several times, the last being September 1979. See
Partial validity (UK):
The principle that a patent may be valid and enforceable in part, even if part of its scope is
More than one individual or entity that conduct business together.
A document issued by the patent office that purports to give an inventor the exclusive right
to make, use and sell an invention as specified in the claims of that patent. A patent, which
is the mature form of a patent application, consists of drawings of the invention, a
specification explaining it, and claims that define the scope of exclusivity. A patent is an
exclusive right granted for an invention, which is a product or a process that provides a new
way of doing something, or offers a new technical solution to a problem.
A grant by a patent office giving the grantee the right to exclude others from practicing a
claimed invention in the jurisdiction of the patent office.
A person who is not an attorney who can legally represent an inventor or applicant in
dealing with a patent office.
Patent Application (ALL):
A document submitted by an inventor requesting to be issued a patent in respect of an
invention described in the specification which accompanies the application.
A document filed by an inventor or applicant with a patent office that discloses and claims
an invention and that requests that the patent office grant the inventor or applicant the
right to exclude others from practicing the invention.
A patent application consists of an abstract, a specification and often drawings. The abstract
is a brief summary of the contents of the specification. The specification comprises a clear
and complete description of the invention and its usefulness and claims, which define the
boundaries of patent protection. To receive an official filing date in Canada, you must
submit no less than the following: statement that a patent is sought, document describing
an invention, name of the applicant, address of the applicant or the applicant's patent
agent, prescribed filing fee. A complete patent application further includes the following:
formal petition, abstract of the invention, claim or claims to the invention, any drawings
mentioned in the description, paper and computer-readable copies of nucleotide sequence
listings, if applicable, and appointment of a registered patent agent or representative when
A person who is an attorney who can legally represent an inventor or applicant in dealing
with a patent office.
Patent Cooperation Treaty (PCT)
A treaty that set up a system for searching and, optionally, examination of patent
Patent Cooperation Treaty (PCT)
An international treaty providing for standardized filing procedures for foreign patents in
the countries that have signed the treaty.
A document containing a specification (i.e. a clear and complete description of an invention
and its usefulness, and claims which define the boundaries of patent protection), an
abstract (i.e. a brief summary of the contents of the specification), drawings (if necessary to
complete the description of the invention) along with other information from the patent file
with the Patent Office. The patent document provides a wealth of information: a capsule
description of a particular technology; back-ground history of a problem; how the new
invention overcomes these problems; a complete description for making the invention; and
any conditions under which the invention will not work.
The process through which the Patent Office determines whether a patent application
fulfils the requirements for a grant of patent.
Patent Family (ALL):
All the Patents filed worldwide relating to a particular application, with a common priority
All the patent application and patent documents that relate to the same invention
regardless of the patent office involved. The patent family concept is used in patent
searching, e.g., to find a published patent application (PCT, EPO, etc.) that corresponds to a
(secret) U.S. patent application.
Law relating to patent rights.
The marking of a patent-pending item "Patent Pending" or marking a patented item with
one or more of the patent numbers. Marking gives a potential infringer notice of the fact
that a patent is pending or has issued. Marking an invention "Patent Pending" is not allowed
in some countries. The marking can be either on the item or on its packaging.
Patent misuse (US):
Any attempt to extend the scope or effect of a patent beyond that granted by law.
The number assigned to an issued patent by a patent office.
Patent of addition or Modification (EP/NZ):
A patent for a non-inventive improvement in, or modification of, the subject of an earlier
patent, which expires with the earlier patent. No renewal fees are incurred.
Patent of importation/revalidation (UK):
Patents granted by certain countries on the basis of patents already granted elsewhere, and
protecting local manufacture only.
The office that receives, processes, classifies and examines applications for patents. The
Patent Office is also known as CIPO's Patent Branch. It also registers assignments or changes
of ownership, processes allowances, collects fees and publishes information on patents. In
brief, the Patent Branch is Canada's patent granting authority and disseminator of patent
The owner of patent property rights.
Patent Pending (US):
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 US
Patent Number xxxxxxx." Applying the patent pending phrase to an item when no patent
application has been made can result in a fine. See Marking above.
The condition that occurs between the time that a patent application has been filed on an
invention and the deposition of that application either by abandonment of the application
or issue of the patent.
The protection involving the possibility of patent right enforcement by the patent owner
with the help of the legal system.
The right to exclude others from making, using and or selling an invention.
A study of the patent literature to determine the state of the art in a particular field; a study
of the patent literature in a particular field to determine whether the prior art in the field
renders a particular invention anticipated or obvious, and, hence, unpatentable.
Is a review of existing patents. Patent searches are conducted to determine whether an
applicant can claim rights to an invention, or whether a patent has already been issued to
someone else on the same or a similar invention. Patent infringement searches are made to
ascertain whether a product or process can be produced without having to get permission
or pay a royalty. Patent searches are also used as a form of research to gain information on
The period during which a patent is valid.
The process of continuously monitoring newly published patent applications and issued
patents in a particular field.
A government grant giving the right to exclude others from making, using or selling an
invention. A Canadian patent applies within Canada for 20 years from the date of filing of a
patent application. The patent application is open for public inspection 18 months after
The basic requirements needed to gain monopoly rights. An invention has to be novel,
inventive (non-obvious) and capable of being industrially applied (useful).
The issue of whether an invention is capable of being patented in a particular jurisdiction. A
type of evaluation that addresses whether a particular invention is patentable in a particular
Capable of being patented in a particular jurisdiction. The ability of an invention to satisfy
the legal requirements for patentability in a particular jurisdiction.
Patentable Subject Matter
An invention that is capable of being patented.
The person is whose name a patent issues; in the U.S., the inventor(s) in whose name(s) a
patent issues, even though the patent may have been assigned to another.
A granted German patent application.
An Intellectual Property Search agency, specialising in Freedom-to-operate (infringement),
Novelty, and due diligence searches. PatMark boasts an expert staff, most of whom have
been ex-examiners or searchers for Large Patent Filing Corporations.
An International Patent Cooperation Treaty administered by WIPO (The World Intellectual
Property Organization). The Patent Cooperation Treaty is charged with simplifying and
reducing costs of obtaining international patent protection and facilitates public access to a
wealth of technical information relating to inventions. See http://www.wipo.int/pct/en/.
PCTFILER Holdings Pty Ltd is a patent administration company with offices in Sydney and
New York. This company offers a low-cost option for "Nationalising" PCT applications
through it agents in 19 industrialised countries www.pctfiler.com.
PCTreminder is a free automated web-based reminder service for patent attorneys and IP
Management Departments. It is designed so that those important milestones in a PCT
application (or a Paris Convention application for that matter) can be tracked easily and
simply and acted upon as appropriate.
Pending Patent Application
A patent application that is pending. See Pending.
The status of a patent application that occurs before either an application is abandoned
(withdrawn) or a patent issues.