IP Glossary

Understand the language of intellectual property.

Patent

A government-granted exclusive right to make, use, or sell an invention for a set period.

Trademark

A recognizable sign, design, or expression which identifies products or services of a particular source.

Copyright

A legal right granting the creator of an original work exclusive rights for its use and distribution.

Prior Art

Any evidence that your invention is already known, used to determine novelty during patent examination.

Office Action

An official letter from a patent or trademark examiner detailing issues or rejections with an application.

Provisional Patent Application (PPA)

A temporary legal document filed to establish an early filing date without the formalities of a full patent.

Non-Provisional Patent Application (NPA)

The formal application required by the USPTO to begin the examination process for a utility patent.

Claims

The specific legal definitions within a patent application that outline the exact boundaries of protection.

Utility Patent

A patent covering the creation of a new and useful process, machine, manufacture, or composition of matter.

Design Patent

A patent protecting the unique visual qualities and ornamental design of a manufactured item.

Infringement

The unauthorized use, production, or sale of intellectual property protected by a patent, trademark, or copyright.

Intellectual Property (IP)

Creations of the mind, such as inventions, literary works, designs, and symbols, protected by law.

Abstract

A brief summary of the invention included in a patent document.

Abandonment

The status of a patent application that has been voluntarily or involuntarily discontinued by the applicant.

Amendment

A change made to the claims or specification of a patent application.

Anticipation

A ground for rejecting a patent claim based on the existence of prior art disclosing the claimed invention.

Appeal Brief

A written argument submitted to a patent office challenging a rejection of patent claims.

Assignment

The transfer of rights to a patent from one party to another.

Claim Element

A component or limitation of a patent claim.

Claim Limitations

The specific elements or features that define the scope of a patent claim.

Continuation Application

A patent application filed by the same applicant as a previous application, claiming priority to the earlier application.

Counterclaim

A claim made by a defendant in response to a plaintiff’s claim in a patent infringement lawsuit.

Dependent Claim

A patent claim that depends on another claim in the same patent.

Disclosure

The act of making an invention available to the public.

Divisional Application

A patent application that is divided out of a previously filed application to pursue claims distinct from those in the original application.

Doctrine of Equivalents

A legal principle that extends patent protection to minor variations of a patented invention.

Enablement

A requirement for patentability where the patent application must enable one skilled in the art to make and use the invention without undue experimentation.

Examiner

A patent office official responsible for examining patent applications.

Examiner’s Amendment

An amendment to a patent application made by the examiner during prosecution.

Ex Parte Reexamination

A reexamination of a granted patent initiated by a third party.

Experimental Use Exception

A defense against patent infringement for activities performed solely for experimental purposes.

Final Rejection

A rejection of patent claims that is not subject to further amendment or argument without filing an appeal.

First Action Interview

An interview between an applicant and an examiner before the issuance of a first office action.

Freedom to Operate

The ability to commercialize a product or process without infringing on the intellectual property rights of others.

Grace Period

A period of time during which certain public disclosures of an invention do not preclude patentability.

Grounds of Rejection

The legal basis for rejecting patent claims, such as anticipation, obviousness, or lack of enablement.

Interference Proceeding

A proceeding to determine priority of invention when two or more patent applications claim the same invention.

International Patent Application

A patent application filed under the Patent Cooperation Treaty (PCT) that seeks patent protection in multiple countries.

Invalidity Defense

A defense against a claim of patent infringement asserting that the patent is invalid.

Jurisdiction

The authority of a court or administrative agency to hear and decide a case.

License Agreement

An agreement granting permission to use patented technology under specified conditions.

Maintenance Fee

A fee paid to keep a patent in force after it has been granted.

Non-Obviousness

A requirement for patentability where the invention must not be obvious to a person having ordinary skill in the art to which the invention pertains.

A formal patent application that is examined by a patent office and, if approved, may lead to the grant of a patent. Unlike a provisional application, a non-provisional application requires a detailed description of the invention, formal claims, and other necessary documentation for examination.

Notice of Allowance

A written notification that patent claims have been approved by a patent office.

Obviousness

A ground for rejecting a patent claim based on the invention’s obviousness to a person having ordinary skill in the art.

Patentability

The criteria that an invention must meet to be eligible for patent protection.

Patent Claim

A statement that defines the scope of protection provided by a patent.

Patent Cooperation Treaty (PCT)

An international treaty that facilitates the filing of patent applications in multiple countries through a single application.

Patent Family

A group of patents and patent applications that share the same priority date and common subject matter.

Patent Infringement

The unauthorized use, manufacture, or sale of a patented invention.

Patent Litigation

A legal action to enforce or challenge patent rights.

Patent Owner

The person or entity that owns the rights to a patent.

Patent Portfolio

A collection of patents owned by a single entity.

Patent Prosecution

The process of interacting with a patent office to obtain a patent.

Patent Term

The period of time during which a patent remains in force.

Priority Date

The earliest date on which an application for a patent was filed, used to determine the novelty and non-obviousness of an invention.

Reexamination Request

A request for reexamination of a granted patent by a third party.

Request for Continued Examination (RCE)

A request to reopen prosecution of a patent application after a final rejection.

Restriction Requirement

A requirement by a patent examiner to restrict a patent application to one invention when it claims multiple inventions.

Specification

The written description of the invention and how to make and use it, included in a patent application.

Sufficiency of Disclosure

The extent to which a patent application provides enough information to enable one skilled in the art to make and use the invention.

Terminal Disclaimer

A statement filed with a patent office to limit the term of a patent that extends beyond the term of another patent.

Terminal Rejection

A rejection of patent claims that is not subject to further amendment or argument without filing an appeal.

Trade Secret

Information that is kept confidential and provides a competitive advantage to its owner.

Transfer of Ownership

The transfer of patent rights from one party to another.

Validity

The legal status of a patent indicating that it meets all the requirements for patentability.

Written Description Requirement

A requirement for patentability where the patent application must contain a written description of the invention sufficient to enable one skilled in the art to make and use it.

Assignee

The entity to which the rights to a patent have been assigned.

Cease and Desist Letter

A letter demanding that an alleged infringer stop using the patented invention.

Claim Construction

The interpretation of the language used in the patent claims to determine their scope.

Claim Drafting

The process of crafting the language of patent claims to define the scope of protection sought.

Claim Interpretation

The process of determining the meaning and scope of patent claims.

Commercialization

The process of bringing a product or service to market.

Conflict of Interest

A situation in which a person or entity has competing interests that could bias their decision-making.

Contribution

The inventive concept or improvement contributed by an inventor to the overall invention.

Cross-Licensing Agreement

An agreement between two or more parties to license each other’s patents.

Damages

Monetary compensation awarded to a patent holder for infringement of their patent rights.

Direct Infringement

Infringement that occurs when someone makes, uses, sells, offers to sell, or imports a patented invention without permission.

Doctrine of Laches

A legal doctrine that bars a party from bringing a claim if they unreasonably delay in asserting their rights, resulting in prejudice to the opposing party.

Enforceability

The ability to enforce patent rights against infringing parties.

Equitable Estoppel

A defense against patent infringement based on a patent holder’s conduct that leads another party to believe they will not enforce their patent rights.

Estoppel

A legal principle that prevents a party from asserting a claim or defense that is inconsistent with a previous position they have taken.

Exhaustion Doctrine

A legal principle that limits a patent holder’s ability to control the use or sale of a patented product after it has been lawfully sold.

Extrinsic Evidence

Evidence outside the patent document used to interpret the meaning of patent claims.

Fair Use

A defense against copyright or trademark infringement that allows limited use of a copyrighted work or trademark without permission.

Functional Claiming

Drafting patent claims to cover the function or result achieved by an invention rather than specific structures or elements.

Holding

The legal conclusion reached by a court in a case.

Indirect Infringement

Infringement that occurs when someone contributes to or induces another party to infringe a patent.

Injunction

A court order requiring a party to stop engaging in a particular activity, such as infringing a patent.

Inter Partes Review (IPR)

A proceeding before the Patent Trial and Appeal Board (PTAB) to challenge the validity of a patent claim based on prior art

Inventive Step

The level of innovation or non-obviousness required for an invention to be patentable.

Joint Infringement

Infringement that occurs when multiple parties collectively perform all the steps of a patented method.

Joint Ownership

Ownership of a patent by two or more parties who have contributed to the invention.

Licensing

Granting permission to another party to use a patented invention in exchange for royalties or other compensation.

Markman Hearing

A hearing held by a court to determine the meaning and scope of patent claims.

Means-Plus-Function Claim

A patent claim that recites a function to be performed rather than the structure or elements that perform the function.

Non-Disclosure Agreement (NDA)

An agreement that protects confidential information shared between parties by restricting its disclosure to third parties.

Novelty

The requirement for patentability that an invention must be new or original.

On-Sale Bar

A statutory bar to patentability that prohibits the granting of a patent if the invention has been offered for sale or sold more than one year before the patent application was filed.

Patent Agent

A professional authorized to represent inventors before the patent office in patent prosecution matters.

Patent Bar

The group of individuals authorized to represent inventors before the patent office in patent prosecution matters.

Patent Cooperation Treaty (PCT) Application

An international patent application filed under the Patent Cooperation Treaty (PCT) that seeks patent protection in multiple countries.

Patent Drafting

The process of preparing a patent application, including describing the invention and drafting the patent claims.

Patent Examiner Interview

An interview between a patent applicant and a patent examiner to discuss the examination of a patent application.

Patent Infringement Analysis

An analysis of whether a product or process infringes on a patent.

Patent Office Action

A written communication from a patent office regarding the status of a patent application.

Patent Pending

The status of a product or process for which a patent application has been filed but not yet granted.

Patent Prosecution History

The record of communications between a patent applicant and a patent office during the examination of a patent application.

Patent Search

A search of prior art to determine the novelty and non-obviousness of an invention before filing a patent application.

Patentability Opinion

An opinion assessing the likelihood of obtaining a patent for an invention.

Post-Grant Review (PGR)

A proceeding before the Patent Trial and Appeal Board (PTAB) to challenge the validity of a patent claim based on any ground of invalidity.

Precedent

A legal decision that serves as authority for future similar cases.

Priority Claim

A claim to the priority date of an earlier-filed patent application for the same invention.

Pro Se

Representing oneself in a legal proceeding without the assistance of a lawyer.

Public Use

The use of an invention in public before a patent application is filed, which may bar the invention from being patented.

Reissue Application

A patent application filed to correct errors in a granted patent.

Secondary Considerations

Factors considered by a court or examiner when assessing the patentability or validity of an invention, such as commercial success, long-felt but unsolved need, and copying by others.