Brown & Michaels
"What's it mean..." - Our Patent Glossary
A B C D E F GHI JK LMN O P QR S T U VWXYZ
This patent dictionary is meant to contain most of the most commonly used words and phrases which turn up in patent application prosecution. Is there a "patentese" term you don't understand and can't find here? E-mail us and we'll add it.
- A -
Abstract - a brief (150 word or less) summary of a patent, usually printed on the first page.
Actual Reduction to Practice - see Reduction to Practice
Aggregation - a patent claim which just recites a list of elements, without indicating how they are interrelated or assembled into an invention. For example, "A door lock comprising a knob, a latch bar and a plurality of tumblers." A claim should not be rejected on the ground of "aggregation". (MPEP 2173.05(k)).
All elements rule - an accused device only infringes a claim if it includes all elements of the claim, either literally or under the Doctrine of Equivalents. (see our page, "how to read a patent - claims")
Allowed, Allowance - When the Examiner decides that a claim in an application is patentable, it is "allowed". If all of the claims in the application are allowed, the Examiner will issue a "Notice of Allowance and Issue Fee Due", indicating that examination of the application is now over, and setting a deadline (three months, typically) for paying the issue fee. Often, this is accompanied by a document entitled "Reasons for Allowance", in which the Examiner explains why he/she thinks the claims are patentable. Once the issue fee is paid, the USPTO will issue the patent.
Antecedent basis - Any term you refer to in a patent claim as "the ..." must have been named previously in that claim, or one upon which it depends. That is, if a claim reads, "2. The widget of claim 1, in which the fringe is bidirectional," the word "fringe" must appear in claim 1 in a way which would permit the reader of the claim to determine what "the fringe" is. If there is no "fringe" in claim 1, then this claim would be rejected as "lacking antecedent basis." (See our page, "how to read an office action")
Annuity - Annual payment to keep patent or patent application alive in some countries. In the US, similar fees are due 3.5, 7.5 and 11.5 years after issue, and are called "Maintenance Fees" (see below)
Appeal - asking a higher authority to review a decision. Some decisions of Examiners (i.e. final rejections) may be reviewed by appeal to the Board of Patent Appeals and Interferences (BPAI). Some BPAI decisions may be appealed to the Court of Appeals for the Federal Circuit (CAFC). Some decisions which are not appealable may be overturned by petitioning the Commissioner of Patents.
Applicant - the person filing the patent application. In the US, patent applications are always filed in the name of the actual inventors, who may then assign their rights to, for example, their employer. In other countries, the "assignee" and the "applicant" are the same.
Application Family - defined in the 2007 continuation rules (rescinded in October 2009) as "the initial application and its continuation or continuation-in-part applications. A divisional application family includes the divisional application and its continuation applications".
Apparatus claim - a claim which describes a device or product: "A widget comprising a gronkheiser coupled to a portoflan armature." (see also "method claim")
Art Unit: The Examiners in the Patent Office are organized into "Technology Centers", which cover broad ranges of technologies, and the Technology Centers are further divided into "Art Units". Each Art Unit handles a specific type of invention, as defined by the USPTO's classification system. For example, Art Unit 3761 is a part of Technology Center 3760 ("Body Treatment, Kinestherapy and Exercising") .
Assignee - buyer
Assignment - (v) "selling" a patent or application, and (n) the document evidencing the sale. See also "license".
Assignor - seller
- B -
BPAI - Board of Patent Appeals and Interferences - a part of the USPTO, staffed by very senior Examiners, which hears appeals from decisions of Examiners, and interferences between competing inventors.
Beauregard Claim - named after the case (in re Beauregard 53 F.3d 1583 (Fed. Cir. 1995)) which declared them to be patentable, a Beauregard Claim is a really a claim to a computer-implemented method, but it is written to claim a physical product - a computer-readable storage medium containing code for causing a computer to perform the method.
Best Mode (see "Preferred Embodiment")
Bypass Continuation / Bypass Continuation-in-Part - for PCT applications - The normal way for an International Stage PCT Application to enter the US is through the "National Stage". On payment of the required fees and filing the forms, the International Stage Application becomes a national US application. In this approach, the US application is the PCT application, it has just entered a new stage in its life. The US National Stage application must have the same inventor(s) as the International Stage application, and, while a preliminary amendment can be filed when you enter the National Stage, no new matter may be added. The Bypass Continuation / CIP is an alternative way for a PCT application to enter the US. Instead of entering National Stage, a new US application is filed as a Continuation or Continuation-in-Part (CIP) of the PCT application. The bypass application may have different inventorship than the PCT application, so long as at least one inventor is the same, and new matter may be added in a bypass CIP.
- C -
CAFC - Court of Appeals for the Federal Circuit - The Federal Appellate Court which primarily hears appeals from District Courts or the USPTO in patent and trademark cases.
CCPA - Court of Customs and Patent Appeals - a Federal court which heard cases from the Patent Office, the Customs Court and the International Trade Commission. In 1982 the CCPA and the appellate division of the Court of Claims were merged to form the CAFC.
Certificate of Correction - a certificate issued by the USPTO, and attached to the patent image and printed copies of the patent, indicating that there were errors in the patent as issued. The patent owner may apply for a Certificate of Correction by filing the suggested correction and a fee - if the error was due to USPTO error, the fee is waived.
CIP (see Continuation-In-Part)
Claim - that part of the patent which defines the limits of the grant of rights. A claim may be "independent" or "dependent". Claims are written in a very odd legalistic form, in which every claim starts with a capital letter (the only capital letter permitted in the claim) and ends with a period (the only one permitted in the claim), and each element in the claim must be named before it is used (it must have "antecedent basis"). (See "how to read a patent application - claims")
Claim Differentiation - a doctrine which says that if there is a dependent claim, the claims should be interpreted such that there is a difference between a dependent claim and the claim upon which it depends. For example, suppose a parent claim calls out "a frammis", and the dependent claim says "where the frammis is made of plastic". The principle of claim differentiation says that the parent claim must be interpreted to include frammises which are not plastic, or there would be no difference between the two claims.
Class: The USPTO uses its own US Patent Classification System to provide an organization for searching patents - in fact, on the USPTO database, patents issued before 1976 can only be searched by this system. All inventions are first put in a class having a three-digit number, then in a numbered subclass under the class. The subclasses are arranged in a hierarchical form, but not necessarily in numerical order. The US classification system is more based on structure than function. For more information on how the classification systems work, see our web page "how to read a patent - front page". The USPTO website has a page for the patent classification system. (See also International Class)
Co-inventor - one of several people who contributed to the conception of an invention. Note that mere reduction to practice does not make one a co-inventor, it is contributing to the conception which is key.
Conception - "getting the idea" of an invention. Must be followed by "reduction to practice" to complete the act of invention.
Confirmation Number - a four-digit number which the USPTO assigns when an application is filed, and uses to make sure that any papers filed later on are assigned to the right file. The confirmation number was introduced because serial numbers are assigned sequentially, so all patent applications filed on the same day had similar serial numbers, which led to errors in routing paperwork - transpositions of a few digits might not be caught when only the serial number and filing date was given. The USPTO therefore added a new number which is completely different from one application to the next, so errors in citing applications become immediately obvious.
Constructive Reduction to Practice - building the invention is "actual reduction to practice" but one can complete the act of invention by filing a patent application. Since the invention has not been built, it is not "actually" reduced to practice, but only "constructively" (i.e. by a legal fiction).
Continuation - "a continuing application that discloses and claims only an invention or inventions that were disclosed in the prior-filed application." In other words, a continuation is a patent application filed to continue prosecution on an earlier-filed application, perhaps to present new arguments or evidence or to allow some claims to issue while continuing to argue with the Examiner about others. A continuation may not add new matter - see "Continuation In Part", below. The difference between a "continuation" and a "Request for Continued Examination" (RCE) (or its predecessors Continuing Prosecution Application (CPA) and "file wrapper continuation") is that a continuation is a new application and will receive a new application number, whereas under an RCE (or CPA or FWC), the old application continues on. A continuation may be filed at any time during the pendency of an application (i.e. before it is abandoned or issues as a patent).
Continuation-in-Part (CIP) - a patent application filed to add new material to an earlier filed application, or to claim a new embodiment of an invention disclosed in an earlier application. Anything which was in the original application is given the benefit of the filing date of the original application, any new matter added in the CIP receives the actual filing date of the CIP. A CIP may be filed at any time during the pendency of an application (i.e. before it is abandoned or issues as a patent).
Continuing Application - a nonprovisional application (or an international application designating the United States of America) that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed nonprovisional application (or international application designating the United States of America). A continuing application can be a divisional application, continuation application or continuation-in-part application. Note that the terms are exclusive. An application cannot be, for example, both a continuation and a divisional or a continuation and a continuation-in-part of the same application.
Continuing Prosecution Application - the CPA was a predecessor to the "Request for Continued Examination" (RCE). A CPA was filed to continue prosecution on the parent application without having to file a completely new application. Since July 14, 2003, CPA practice is only available for design patent applications, and may no longer be used for utility or plant applications.
Contributory Infringement - manufacture, use or sale of a part of a patented combination, or manufacture or sale of a device which is used by others in a way which infringes a method claim. Note that (1) there cannot be contributory infringement by a supplier, if there is no direct infringement by the customer; and (2) there is no contributory infringement by a part which has substantial noninfringing use.
CPA (see Continuing Prosecution Application)
Customer Number - law firms and inventors may apply for a Customer Number, which can be associated with a patent application. The Customer Number has a correspondence address and may list one or more patent attorneys by registration number. By associating applications with a customer number, address changes or adding or removing an attorney can easily be done to all of a firm's applications at once by simply changing the address or attorneys associated with the customer number. The customer number is also used in connection with EFS-Web and Private PAIR to allow filing and retrieval of patent applications and status information.
Cut-away view - similar to a section view, but only part of the invention is revealed - like cutting away part of the apple peel to show the seeds in one part of the core. (See our page "how to read a patent drawing")
- D -
Date of invention - the date the invention is completed - that is, both conceived and reduced to practice, whether the reduction to practice was actual or constructive.
Defensive Publication (obs) - a document published by the USPTO at the request of the author, for defensive purposes, to prevent others from getting patents. Defensive Publications did not give any rights to exclude others from making, using or selling, as would a patent. Replaced in 1985 by Statutory Invention Registration (SIR).
Design Patent - a special kind of patent which covers the ornamental appearance of a useful object. For more information see our Patents FAQ page.
Design Registration - term used in some countries for something similar to "Design Patents" in the US. Also called "industrial design" in some countries.
Detail view - a part of another figure, enlarged. The other figure should have the area of detail called out, usually by dotted or dashed lines. (See our page "how to read a patent drawing")
Delphion - patent search database, formerly IBM's patent server.
Dependent claim - a claim which is based upon, and narrows, another claim. For example, "3. The widget of claim 2, in which the moment arm is polarized." (See our page "how to read a patent - claims")
DEPATIS - patent search database, operated by the German patent office
Disclosure Document - a program which allowed inventors to record documents in the USPTO for a low fee. The documents would be destroyed in two years if they were not referenced in a filed patent application. In theory, the Disclosure Document was supposed to serve as proof of the date of conception - in practice, there is little or no evidence they were ever successfully used in that way. The Disclosure Document program was discontinued by the USPTO, effective February 1, 2007.
Divisional - "a continuing application that discloses and claims only an invention or inventions that were disclosed and claimed in a prior-filed application."
What does this mean? The rule is "one invention to a patent, and one patent to an invention" - that is, the various embodiments described in a patent application are supposed to all be variations on the same invention. If the Examiner feels that two (or more) embodiments disclosed and claimed in an application are, in fact, independently patentable inventions, he issues a restriction requirement which requires the applicant to select the claims directed to one of the inventions. The unelected claims will be withdrawn, and will be abandoned unless the applicant files "divisional" application(s) to continue on with those claims. Each divisional application would then be examined separately, and might be issued as another patent (the later patents are called "divisionals" of the first). Divisional applications may be filed at any time while the parent application is still pending.
Note: This definition applies to US practice - some other countries have applications called "divisionals" which are more like US Continuation or Continuation-In-Part (CIP) applications
Doctrine of Equivalents - the rule that an element in a claim also includes equivalent structures, if they do the same thing in the same way to accomplish the same result. The Doctrine of Equivalents is used if an accused device does not literally infringe a claim because an element of the claim is different from the device, but the patentee believes that the element used in the device is "equivalent" to the one called out in the claim. The Doctrine of Equivalents has been greatly limited in recent years, especially in the Festo cases. (see our page "How to read a patent - claims")
- E -
EFS-Web - the USPTO's electronic filing system for patent applications (including provisional, utility, design and PCT) in PDF format. Introduced in March, 2006, for patent applications and a few other documents, the EFS-Web system will now allow e-filing of most commonly filed patent documents (note that patent assignments are also e-filed, but through a different system, called "EPAS"). Like PAIR, EFS-Web has a public (unregistered) and private (registered) side. The registered side of EFS-Web requires the same cryptographic certificate as private PAIR, and a customer number. Documents filed through registered EFS-Web can be viewed through Private PAIR almost immediately, and in Public PAIR after a delay. EFS-Web replaced several earlier e-filing systems, such as EPAVE and PASAT, which required complex software and document coding and were not very successful.
Election of Species - similar to a restriction requirement, in that you will have to choose one claim or group of claims to be examined. The difference is that in an election of species, the Examiner believes that it is possible that the claims in the application would cover more than one variation ("species") of a single invention. If a "generic" claim (one which covers more than one species) is allowed as a result of the examination process, then other unelected species which would be covered by that generic claim would also be allowed. If there are no claims which are "generic", you'll need to file a "divisional" patent application covering the non-elected species, just as in the restriction requirement.
Embodiments are versions or variations on the invention.
EPAS - the USPTO's electronic filing system for patent assignments and related ownership documents. (ETAS is the equivalent for Trademark Assignments)
EPAVE - obsolete A former USPTO e-filing system. Superseded by EFS-Web.
EPO - European Patent Office - office which administers applications under the European Patent Convention (EPC).
esp@cenet - Patent search database, operated by European Patent Office
Examiner - employee of the US Patent and Trademark Office (USPTO) who reviews patent applications. Each examiner is assigned to an Art Unit, and handles applications in one particular area of technology.
Examination - the review of a patent application by an examiner. The Examiner will review the application for conformity with regulations ("formality"), and will do a search of the prior art to see if there are any earlier patents or publications which might make the invention unpatentable. The results of the examination are reported to the applicant in an Office Action, in which the Examiner objects to parts of the application, and/or rejects claims. The applicant is given a time within which to respond to the Office Action by arguing or amending the application, after which the Examiner may allow the application or reject it again. (See our page "how to read an office action")
Examination Support Document ("ESD") - New rules enacted in 2007 (37 CFR 1.265) required an ESD under certain circumstances. Thankfully, those rules were overturned by a court in April 2008, so, at least for the moment, ESD's are a dead issue.
"Ex Parte Quayle" - noted in an Office Action when an application is in condition for allowance, except for "formal matters" - usually, correction of minor and obvious mistakes. Your response to the Action will be limited to correcting these mistakes. (see our page "how to read an office action")
Exploded view - the parts of the invention are shown physically separated, with lines indicating where they go. (See our page "how to read a patent drawing")
- F -
Figure - an individual drawing in a patent or application. (see our page "How to read a patent - drawings")
File History (see "prosecution history")
File Wrapper (see "prosecution history")
File Wrapper Continuation - obsolete - a way of continuing prosecution in an application under final rejection. The old file was literally wrapped in a new paper wrapper, and continued onward. This procedure was replaced by the CPA, which, in turn, was replaced by the RCE. See also continuation
File Wrapper Estoppel - (or "prosecution history estoppel") - the legal principle that whatever you say in the patent's prosecution history, you can't contradict later on when you're trying to enforce a patent. For example, if you tell the Examiner that something is not part of your invention, you can't say it is part of the invention years later when you bring an infringement lawsuit. Technically, "File Wrapper Estoppel" only applies to the "Doctrine of Equivalents", but the phrase is also used to refer to any use of the prosecution history to interpret terms in claims.
Filing Date - the date on which the application is filed in the USPTO. If the application is filed by Express Mail with a proper Certificate of Mailing, the filing date is the date that the application was accepted by the Post Office, otherwise it's the date the application was actually received in the USPTO mail room. If the application is not complete when it is filed, the USPTO may refuse to assign a filing date until the missing parts are filed.
Filing Receipt - document returned by USPTO to acknowledge the filing of an application. See our page "How do I read a filing receipt?"
Final (Office Action) - Normally, the Examiner will declare the second rejection in a given case "final". The declaration of finality just restricts your options in how you can respond to the rejections. See our web page "How to read an office action."
Foreign Filing License For purposes of national security screening, US law requires that US applicants get a "Foreign Filing License" before filing applications in other countries. This is routinely granted when an application is filed (even a provisional application), unless the application deals with defense-related technologies (nuclear weapons, encryption, etc.). It is not a mere formality, however - if an application for an invention made in the US is filed in a foreign country before the license is granted, and this is not corrected by promptly applying for a retroactive license, the application will be abandoned and any patent issued on it will be invalid.
FWC - see File Wrapper Continuation
- G H I -
IDS - (see " Information Disclosure Statement")
Independent claim - a claim which does not depend on another claim. For example, "1. A widget comprising ..." See "How to read a patent - claims"
Industrial Applicability - In the US, an invention must be novel, useful and not obvious to be patentable. In PCT practice and in many foreign countries, the equivalent standards are novelty, industrial applicability and inventive step, respectively.
Industrial Design - term used in some countries for something similar to "Design Patents" in the US. Also called "design registration" in some countries.
Information Disclosure Statement - a form filed in the USPTO in order to satisfy the legal requirement to inform the Examiner of all prior art known to the inventor which is relevant to the patentability of the invention. The IDS is usually filed with, or soon after, the filing of the application. "Supplemental IDSs" are filed with references the inventor discovered after filing - usually in connection with the examination of related (or foreign) applications.
Infringe - an accused device or method infringes a patent if it is within the scope of at least one claim of the patent. A patentee has the right to stop an infringer from making, using or selling an infringing device or method.
INID - Internationally agreed-upon numeric code identifying the information printed on a patent.
Interference - Under US law, a patent goes to the first person to invent an invention (as opposed to "first to file" systems in most other countries, where the first person to file an application gets the patent). If two people file applications at nearly the same time claiming the same invention, the USPTO declares an "Interference" to decide who is the first to invent. An interference proceeding is basically a lawsuit before the BPAI, in which each side gets to present evidence and take testimony.
International Class - Most patent offices around the world, other than the USPTO, use the International Classification system for classifying patents for search. International class numbers are in the form letter-number-letter (i.e. F16H), and are subclassified into subclasses which have the form number/number (i.e. 7/08), so that a complete classification for a chain tensioner would be F16H 7/08. Unlike the US System, the International classification is arranged primarily by function, rather than structure. For more information on how the classification systems work, see our web page "how to read a patent - front page". For a list of the international classes, see the WIPO or EPO (espacenet) websites. See also Class.
Invention - (n) "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof", 35 USC 101.
Invention - (v) the act of making an invention, consists of two steps: conception and reduction to practice. Reduction to practice can be actual, or "constructive".
Invention Date (see "date of invention")
Inventive Step - In the US, an invention must be novel, useful and not obvious to be patentable. In PCT practice and in many foreign countries, the equivalent standards are novelty, industrial applicability and inventive step, respectively.
Issue Date- the date on which a patent becomes enforceable. All US patents are issued by the USPTO on Tuesdays.
- JK -
Jepson Claim - a special claim form which starts "An improved widget of the kind having...", followed by the prior art elements of the claim, and then says "in which the improvement comprises", followed by the novel part of the invention. Jeppson claims are similar to the "two part claim form" required in the EPO and some other foreign patent systems. See "how to read a patent - claims" for more detail.
JPO - Japanese Patent Office
- L M N -
Large Entity - a company with more than 500 employees, more or less. Determination of Large or Small Entity status is a bit more complicated than that - see our web page "How can I tell if I am a Small Entity?" for more information.
Literal infringement - a device (or method) contains every element of a claim, literally. (As opposed to infringement under the Doctrine of Equivalents or contributory infringement)
License - a document permitting a Licensee to make, use or sell products or services which would otherwise infringe the claims of a patent (or application). A license can be exclusive or non-exclusive. If an exclusive license is granted, the patentee may not issue any other other licenses conflicting with the exclusive license. Licenses may be limited by geographical area or field of use. Most licenses involve periodic payment of royalties, although some are paid-up in advance. See also "assignment"
Maintenance Fee - There are maintenance fees to be paid at 3.5 years, 7.5 years and 11.5 years from the date of issue of a US patent. The fees may be paid no earlier than six months before the due date, and may be paid during the "grace period" of another six months after that (with a surcharge). If the maintenance fees are not paid, the patent expires at the end of the grace period (4, 8 or 12 years after issue). No maintenance fees are due during the pendency of a patent application, unlike annuities in most foreign countries, which are paid throughout the life of a patent.
Markush group - a special claim form in which a list of alternatives are provided. Markush groups are most often used in chemical practice, but may be proper in other kinds of technologies. See "how to read a patent - claims" for more information.
"Means plus function" - a way of describing an element in a claim by describing what it does, rather than what it is. For example, instead of claiming "a bolt", one can claim "means for threadably fastening". While this kind of claim drafting was once thought to be broader than merely claiming "a bolt", court cases have limited the scope of "means plus function" language to mean the "means" shown and described in the description, and little else. see "How to read a patent - the claims"
Method claim - a claim which covers a way of doing something, usually expressed as a series of "steps": "The method of opening a soda bottle comprising the steps of gripping the cap and twisting counterclockwise." See also "apparatus claim"
Multiple-dependent claim: a claim which depends on more than one preceding claim ("The widget of any of claims 1-6..."). Not favored in US practice. See "How to read a patent - claims" for more information.
MPEP - Manual of Patent Examining Procedure - the Examiner's Bible. Sets out all of the instructions on virtually all phases in the examination of a patent application.
Novelty - in order to be patentable, an invention must be "novel". "Novelty" is defined in section 102 of the US Patent Law. Briefly, something is "novel" if it was not patented, described in a publication, in public use or on sale by others before you invented it, or by anyone (including you) more than a year before you applied for a patent. See "How to read an office action - step 3" for more information on "novelty" rejections.
- O -
Objection The Examiner may object to the specification, drawings or claims for various reasons. Typically, claim objections deal only with very obvious errors - misspellings, duplicated or missing words, or incorrect punctuation. See our "How to Read an Office Action" pages for more information.
Obvious - in order to be patentable, an invention must not be "obvious" to a "person having ordinary skill in the art to which the invention pertains" - sometimes referred to by the acronym "PHOSITA". Obviousness is defined in section 103 of the US Patent Law. Basically, "not obvious" is a way of saying "an invention must be more than just a simple development from what went before." The obviousness test is similar to the "Inventive Step" requirement in many foreign countries. See "How to read an office action - step 3" for more information on "obviousness" rejections.
OED - Office of Enrollment and Discipline - the part of the USPTO which licenses and disciplines patent attorneys and agents; Also Oxford English Dictionary, but you knew that, didn't you?
Office Action - Once a patent application is filed, it will be assigned to an Examiner, who will review it for format and wording, and do a search for prior art. Nearly always (85%+) the application will be rejected. The document which the Examiner provides to explain why the application is rejected is called an "Office Action" - see our page "How to read an office action" for more information.
OIPE - Office of Initial Patent Examination - branch of the USPTO which does initial screening of newly filed patent applications. The OIPE determines if the application meets minimal standards (all required elements are there), that the proper fee has been paid, and that the drawings are publishable. Then, the OIPE makes a preliminary decision as to what class the invention belongs in, and sends the application to the correct Technology Center for that class.
Omnibus Claim - a claim which merely claims the invention without any detail, as "the widget as shown in the drawings" or "the frammis as described in the specification". These claims are not permitted in a utility patent in the US, however they are effectively required in design and plant patents.
"On Sale" Bar - under section 102(b), an invention cannot be patented if the invention was on sale more than a year before the application was filed. Courts have held that the term "on sale" includes offers to sell, even if no actual sale was made at the time.
Opposition - some countries have procedures whereby a
someone may object to the issuance of a patent on an application, or
("post-grant opposition") may object to an issued patent. The US has
no such procedure (yet). See also "protest".
Note - in US trademark practice, all applications to register marks are
"published for opposition", and an "opposition" may filed
against the application by anyone who feels they may be hurt if the mark is
registered.
- P -
Paid-up License - a license in which all royalties are paid in advance, usually in a lump sum at signing, so that no further royalties are due during the term of the license.
PAIR - Patent Application Information Retrieval - USPTO database with status information about patent applications and issued patents, including payment of maintenance fees, as well as images of filed documents and references for recently filed applications. PAIR has two separate systems - "Public PAIR" allows anyone access to information on issued patents and published applications, "Private PAIR" allows access to unpublished applications, but only to the inventor or the attorney of record for the application. Access to Private PAIR requires a cryptographic signature file supplied by the USPTO. Although the system is not yet complete, the USPTO promises that in time images of all documents filed in the USPTO will be accessible through PAIR.
PAJ - Patent Abstracts of Japan - database run by Japanese Patent Office
Paris Convention - an international treaty which provides that if a national of a member country files a patent application in his own country, then follows up with an application in another member country within a year (six months for design patent applications), he can claim priority from the original application for the later-filed application.
PASAT - obsolete A former USPTO e-filing system. Superseded by EFS-Web.
Patent - the grant by the government of the right to stop others from making, using or selling an invention. For more information on patents, see our family of patent web pages.
Patent Agent - Someone licensed to prosecute patent applications in the USPTO who is not a lawyer. A Patent Agent must have a degree in Engineering or one of the "hard" sciences and pass an examination given by the USPTO. A Patent Agent may not prepare or prosecute trademark applications, even though these, too, are in the USPTO. Since they are not lawyers, Patent Agents may not prepare contracts or other legal documents or give legal advice other than as part of prosecuting patent applications in the USPTO.
Patent Attorney - a Patent Agent who has been admitted to the Bar of at least one state or the District of Columbia. In other words, a Patent Attorney is a Patent Agent who is also a lawyer. Patent Attorneys may prepare and prosecute trademark applications in the USPTO and are licensed by their state (or DC) to prepare agreements and otherwise practice law unrelated to the USPTO.
Patent Cooperation Treaty (PCT) - international treaty allowing a national or resident of a member country to file a single application in his own country, which can be filed in any member country later - see our page on the PCT
Patent Marking Statute - 35 U.S.C. § 287(a) - this part of the Patent Law says that if a patentee is selling a product covered by the patent and does not mark the patent number on the product (or packaging, if the nature of the product precludes marking the product itself), the patentee may not recover damages from infringement which occurred before the infringer was put on notice of the existence of the patent. In other words, if you do mark your product with your patent number, any infringer is assumed to know about the patent and needs to take steps not to infringe. If you don't mark the product, then you have to tell the infringer about the patent before you can get damages.
"Patent Pending" - a product may be marked "patent pending" if at least one patent application covering the product is on file, and is not abandoned. A provisional application will support a "patent pending" marking. Under section 292 of the Patent Law - 35 USC 292 - it is illegal to mark something "patented" or "patent pending", if it isn't.
PCT - Patent Cooperation Treaty
Perspective view - the view is simulated 3-D (See our page "how to read a patent drawing")
Petition - a document asking the USPTO to do something, usually accompanied by a fee. Some petitions are included in routine paperwork and routinely granted - for example, if a response to an office action is filed after the due date, the response is accepted if the applicant pays a fee with a "petition for extension of time". Other petitions are more substantive, and are reviewed by the Office of Petitions in the USPTO - for example, an applicant who gets a restriction requirement may file a petition to force the Examiner to retract the restriction, or an applicant might need to petition to get the USPTO to waive its rules for one reason or another.
Petty Patent - term used in some countries for patent-like protection for products. Details differ from country to country, but petty patents usually are not examined (or are examined only as to form, and not novelty), and have a shorter term than regular patents. In some systems, these must be examined before bringing suit against an infringer, in others they are examined in court during the suit. Petty Patents are called "utility models" in many countries, or "Gebrauchsmuster" in Germany - other countries use other names.
PHOSITA - "Person Having Ordinary Skill In The Art" - a very extraordinary person, indeed, who has all possible knowledge of the prior art, but only in a given field of technology. The PHOSITA is the hypothetical person against whom "obviousness" is judged. One British case defined this mythical Mr. PHOSITA as "a nerd, but not an android". The 2007 US Supreme Court case KSR v Teleflex said Mr. PHOSITA is a "person of ordinary creativity, not an automaton." Clear, now?
plan view - same as "top view" (See our page "how to read a patent drawing")
Plant Patent - a special kind of patent, which covers asexually reproduced plants, "including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state." (35 USC 161)
Preamble - the introductory part of a patent claim - "A widget for pre-polarizing frammistats in soda vending machines, comprising..." for an apparatus claim, or "A method for removing blemishes from gronkheiser armatures comprising the steps of ..." in a method claim. The preamble is meant to set forth the name and environment of the invention, and identify things which are not novel, but which need to be mentioned for "antecedent basis" purposes. Normally, the preamble should not be used to limit the claim, unless it is necessary to make sense of the claim. (see our page, "how to read claims" for more information)
Preferred Embodiment - "The specification shall ...set forth the best mode contemplated by the inventor of carrying out his invention." (35 USC 112, first paragraph) This requirement is intended to force the inventor to let the world know the best way of practicing the invention, and prevent him from getting a patent while concealing necessary information to make it work. If the applicant fails to disclose the preferred embodiment, the resulting patent may be declared invalid.
Primary Examiner - an Examiner who has the authority to sign office actions and make other determinations without prior review. (As opposed to an "Assistant Examiner", who must have office actions co-signed by a PE). A PE, in turn, works under a Supervisory Primary Examiner (SPE)
Prior Art - "what went before" - publications, earlier patents, public use or sale - anything which is relevant to the patentability of an invention because it shows that the invention was known before the applicant invented it (or more than a year before he filed his patent application, in the US).
Priority Date - sometimes, a patent application is given the effect of a filing date which is earlier than its actual filing date by effect of a law or international treaty such as the Paris Convention or PCT. The "priority date" is the filing date of some earlier application upon which the application is based - for example, if an applicant files an application in Japan on January 1, 1999, and follows up by filing a US application on December 15, 1999, he can claim a priority date of January 1, 1999, for the US application, even though it was not actually filed for nearly a year afterward.
Product by Process - a type of claim which defines a product by the method of making it. "A widget formed by a method comprising the steps of ..." Such claims are allowable if both the product and the process are novel - if only the method of manufacture is novel, it should be claimed as a method, not product-by-process.
Prosecution - the applicant's side of the Examination process, convincing the Examiner to issue a patent.
Prosecution History - the written record of the Examination Process. Also known as the "File Wrapper", because all of the papers involved in a patent application were once covered in a paper wrapper. Today, the "Image File Wrapper" contains much the same information in electronic form, accessible through the USPTO's PAIR website.
Protest - the USPTO has a procedure whereby someone may file a "protest" with an Examiner, bringing prior art references to the attention of the Examiner with respect to a pending patent application. This procedure is very seldom used, as it's a bit of a "Catch 22" - a protest may only be filed with reference to a specific application, identified by serial number, but it must be filed before the application is published. If the application is not published yet, how is anyone to know of its existence and its serial number? Once it's published, you know it's there and what the serial number is, but you're too late to file a protest.
Provisional Application (for Patent) - a sort of "patent application lite", which reserves a filing date for the material in the application, but will never be examined or become a patent. Provisional Applications are automatically abandoned one year after filing, and a utility application must be filed within that year claiming benefit of the Provisional Application to preserve the filing date - see our Provisional Application FAQ web page for details
Provisional Patent - there is no such thing. See "Provisional Application"
Provisional rights - while patents are only enforceable after they issue, a patentee may ask for a reasonable royalty for activities of an infringer which occur between the publication of the application on which the patent was based and the date of issue, if the invention claimed in the published application and the issued patent are "substantially identical". The ability to ask for pre-issue damages is called "provisional rights". Since no court has yet defined what "substantially identical" means, how broadly provisional rights will be enforced remains an open question.
- Q R -
RCE (see Request for Continued Examination)
Recapture - see Reissue
Reduce to Practice - complete the process of invention by actually building the device (or practicing the method), or filing a patent application ("constructive reduction to practice")
Re-examination - a patent may be subjected to the examination process again after it issues, if the PTO, or a patentee, or a third party thinks there was some prior art missed in the original examination. An Examiner examines the patent again, and may affirm the claims, or reject them wholly or in part based on the new art cited by the person requesting reexamination. The result of a re-examination is a "Re-examination Certificate", which is published with the issued patent. Re-examination certificates have a prefix "B", followed by the number of the patent. They may also have a suffix "Fx" (or, for pre-2001 patents, "Cx") where "x" is "1" for the first certificate, "2" for the second, and so on. .
Reference - a piece of prior art.
Rejection - in an Office Action, the Examiner may reject claims based on form (section 112), patentability of the subject matter (section 101), or as unpatentable in view of the prior art (sections 102 or 103). For more information, see "How to read an office action"
Reissue - if there was an error in the examination which might result in some claims being invalid, or if the patentee failed to claim the invention as broadly as he was entitled to, he may ask for the patent to be reissued with amended claims. If the reissue is granted, the result is a new patent called a "Reissue Patent" which replaces the original patent. Reissue patents are distinguished by patent numbers starting with "RE". Note that while you can ask for broader claims than those which were in the issued patent, you cannot use reissue to try to add anything back into the claims which you had to give up to get the patent in the first place - this is called "recapture".
Request for Continued Examination (RCE) - basically, "buying another bite at the apple" during examination. If the Examiner issues a final office action, the applicant's options are limited, and the Examiner does not have to enter any claim amendments offered after the final rejection. By filing an RCE, the applicant can amend the application and make any arguments he would have made after final, and the Examiner must enter and consider them. An RCE is an alternative to filing a Continuation, which is a new application - an RCE merely continues the same application in the examination process. (see our page "how to read an office action") Note that RCE's may not be used for design patent applications - for such applications, you must use a CPA (Continuing Practice Application), instead.
Restriction Requirement - the Examiner believes there are more than one invention in the application which are patentably distinct from each other. Since the rule is, "one invention to a patent", you will have to elect one invention to proceed with. The claims directed to that invention will be examined, and the claims directed to the other invention(s) will be withdrawn from consideration. You can file "Divisional" applications to pick up the withdrawn claims at any time until the parent application issues.
Royalty - a payment by a licensee to the owner of a patent under the terms of a license. Royalties are usually either a percentage of the sales price of a product, or a fixed dollar amount per unit. Royalties are usually paid on a periodic basis - monthly, quarterly or annually.
- S -
Sectional view - the figure is of a cut through the invention, like slicing an apple through the core. If the section is taken from another drawing, the other drawing should have a "section line" indicating where the cut is made, and which direction it is "looking". (See our page "how to read a patent drawing")
Serial number - a number assigned by the USPTO to identify a patent application. The number is usually a two digit series number, followed by a slash and a six digit application number - 11/123,456. The six-digit application numbers will repeat from series to series. Utility and plant patent applications are in series 02-11, design applications in series 29, and provisional applications in series 60-61. See our page "how to read a patent" (For what it's worth, trademark applications have serial numbers in the "seventy" series - the USPTO is currently issuing 78/ numbers)
SIR (see Statutory Invention Registration)
Small Entity - individuals, not-for-profits, or companies with less than 500 employees, more or less. Determination of Large or Small Entity status is a bit more complicated than that - see our web page "How can I tell if I am a Small Entity?" for more information. Some (but not all) USPTO fees are reduced for Small Entities.
SPE (see Supervisory Primary Examiner)
Specification - the patent or patent application document, excluding the abstract, drawing and claims.
Statutory Invention Registration (SIR) - a publication made for the defensive purpose of preventing others from getting patents. SIRs do not give any rights to exclude others from making, using or selling, as would a patent. SIRs were introduced in 1985, replacing the earlier Defensive Publication program. They are given numbers starting with "H". An applicant could request that a pending application be published as an SIR, instead of continuing with the application. SIRs are not widely used - as of February, 2009, there had been only 2,229 of them in 23 years since the program was introduced. Since patent applications became published in 2000, SIRs are of less use than formerly - it is less expensive for an applicant who wants their invention published for defensive purposes to just file a regular utility application, then abandon it after publication.
Subclass: see Class
Supervisory Primary Examiner (SPE) - a higher-level Examiner, who has the authority to decide certain matters (See MPEP section 1002.02(d))
Supplemental IDS - (see Information Disclosure Statement)
- T -
Terminal Disclaimer - the terms of some patents are limited to coincide with the terms of earlier-issued patents as a result of filing two applications which claimed essentially the same invention. Terminal disclaimers will be marked on the later-issued patent. See "how to figure out if a patent is still in force"
Two-part claim form - This claim format, similar to Jeppson Claims, is strongly encouraged, if not actually required, in the EPO and some other foreign patent offices. The claim starts "A widget of the kind having...", followed by the prior art elements of the claim, and then says "characterized in that...", followed by the novel part of the invention. Two-part claims are accepted in the USPTO, although they are seldom used here.
- U -
Useful/utility - in order to be patentable, an invention must be "useful". That is, it must have some definable use, no matter how trivial. Most rejections for lack of utility are for applications claiming perpetual motion or antigravity, or for chemical compounds, drugs or DNA sequences with no known (or stated) practical application. See "How to read an office action" for more information on utility - and see our Weird and Wonderful Patents page for examples of issued patents with, shall we say, questionable real-world utility.
Utility Model -see "petty patent"
Utility Patent - a "regular" patent, as opposed to Design Patents or Plant Patents.
USPTO - United States Patent and Trademark Office - branch of the Department of Commerce which is in charge of patent and trademark matters. Often called simply "the Patent Office". Since 2004, the USPTO has been located in Alexandria, Virginia. It was in Crystal City, Arlington, VA, from the 1960's, and in Washington, DC, before that. Interesting bit of trivia - the Patent Office was the only government building in Washington which was not burned by the British when they occupied the city during the War of 1812.
- VWXYZ -
Walker Process claim - an assertion by an infringement defendant that the patent it is being sued for infringing was procured by fraud so that the plaintiff can attempt to exert monopolistic power. The word "claim" in "Walker Process claim" does not mean "patent claim". Rather, the word "claim" means simply "assertion", and a "Walker Process" claim is a specific kind of defense to an infringement suit in which the defendant raises an antitrust issue related to fraud in procuring the patent in order to prevent the plaintiff from enforcing the patent.
Withdrawn -claims are "alive", but the Examiner is not reviewing them because of an election in an earlier Restriction Requirement or Election of Species
A B C D E F GHI JK LMN O P QR S T U VWXYZ
Off-site links
USPTO Glossary of Terms
"Understanding Patentese" - from the Journal of the Minerals, Metals & Materials Society
Don't forget our "Patent FAQ" page - it has lots of information about patents and the patent process.
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