Patent Glossary


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    Applicant
    The person or corporate body that applies for the patent and intends to 'work' the invention (to manufacture or license the technology). Under US law the applicants must be the inventor(s) except in exceptional circumstances.

    Assignee
    The person(s) or corporate body to whom all or limited rights under a patent are legally transferred. Assignment Transfer of all or limited rights under a patent.

    Assignor
    One who assigns a patent right.

    Basic Patent
    The first member of a Derwent patent family. This may or may not be the first published patent (which is usually the first to be documented by services such as Derwent World Patents Index).

    Citations
    Citations may be made by the examiner or author. They comprise a list of references that are believed to be relevant prior art and which may have contributed to the "narrowing" of the original application. The examiner can also cite references from technical journals, textbooks, handbooks and sources.

    Claim(s)
    The definition of the monopoly rights that the applicant is trying to obtain for the invention. The Claims are the effective part of a patent. They are numbered paragraphs that give a precise description of the invention and list all essential features.

    Continuation
    Applicable mainly in the US, continuations are second or subsequent applications which are subsequently filed while the original parent application is pending. Continuations must claim the same invention as the original application to gain the benefit of the parent filing date. (see also Continuing Applications).

    Continuation-in-part
    Generally referred to as a 'C.I.P' this is essentially the same as the continuation with the exception that some new material may be included. The disclosure of the parent is usually amplified and the C.I.P may claim the same or a different invention. A C.I.P application is accorded the benefit of the filing date of the parent application to the extent of the two applications' common subject matter. The C.I.P must be filed while the original parent application is pending for any disclosed material in common with the parent. (see also Continuing Applications).

    Continuing Applications
    There are three types of continuing applications: division, continuation and continuation-in-part.

    Copyright
    Copyright is protection for the expression of an idea. The important difference between copyright and patent is the concept of function: the thing being protected must be useful in order to be patented.

    Design Patent
    A type of patent covering the shape characteristics of an object.

    Disclosure
    The first public disclosure of details of an invention. This may be: (1)deliberately revealed outside the patent system to make the invention unpatentable, or (2)what is described in a patent application.

    Disposal
    In some countries, such as the USA, this refers to where an application has been resolved by being withdrawn, rejected or granted. It can also have the connotation of being rejected only.

    Division
    If the patent office decides that an application covers too large an area to be considered as a single patent, then the application is split into one or more divisional applications. A divisional application has the same specification as the "parent" but claims a different invention. (see also Continuing Applications).

    Drawing
    One or more specially-prepared figures filed as a part of a patent application to explain and describe the invention. Drawings (or illustrations, where appropriate) are more commonly found with inventions for mechanical or electrical devices. As a rule, chemical patents will include chemical formulae in the description of the invention and/or in the examples.

    Duty of Disclosure
    This is a requirement imposed on all persons involved with the patenting process to disclosure information (patents, articles, laboratory data etc.) to the patent examiner that may affect the granting of a patent.

    EPC
    EPC stands for European Patent Convention. This convention has given rise to what is called the European Patent Office (EPO). The European Patent Office offers a way to file a single patent application which can lead to patent coverage in all the European countries that belong to the EPC. While the European Patent Office has its historical origins in the European Union, it is interesting to note that the European Patent Office formalities can lead to patent coverage in countries that do not belong to the European Union. For example, Switzerland does not presently belong to the European Union, and yet it is possible to secure Swiss patent protection through the European Patent Convention and the European Patent Office.
    The countries that belong to the European Patent Office include Austria, Belgium, Switzerland, Germany, Denmark, Spain, France, United Kingdom, Greece, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Portugal, and Sweden.

    Equivalent
    A patent entering the Derwent system which relates to the same invention and shares the same priority application as a patent from a different issuing authority already held in Derwent World Patents Index (see also Non-convention equivalent).

    European Patent Convention (EPC)
    Nineteen European countries are parties to the European Patent Convention. A patent application filed under this convention will, when granted, usually automatically be effective in each of the countries designated by the applicant.

    Examiner
    A patent office official who is appointed to determine the patentability of applications.

    Expiry Date
    The date when a patent has run its full term in a country and is no longer protected there (see also Lapse & Withdrawn).

    Filing Date
    The date when the application reaches the patent office in complete form.

    First to File
    In the European patent system, the applicant who is the first to file an application for an invention will be awarded the patent over all others. This law is becoming increasingly the standard for countries adhering to Trade-Related aspects of Intellectual Property (TRIPs) guidelines. (See also First to Invent)

    First to Invent
    In some countries, such as in United States, the applicant who is the first to invent will be awarded the patent over all others. (See also First to File)

    Grant
    A temporary right given by a patent office for a specified period, to prevent anyone else from using the technology defined in the claims of a patent.

    H document
    An H document is a Statutory Invention Registration (SIR). An applicant for a US patent may, if desired, give up the ability to obtain a patent and instead pay the US Patent Office to publish it as an SIR. The main benefit of this is that it keeps others from getting a patent on the same invention. (see also RD document).

    Inventor
    Someone who has a new idea and pursues its development. Inventors apply for patents on their inventions as a part of their 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 businessman.

    IPC - International Patent Classification
    IPC is an internationally recognised classification system, which is controlled by the World Intellectual Property Organisation (WIPO) and assigned to patent documents by Patent Offices. The IPC is world-widely used - the industrial property offices of more than 90 States, four regional offices and the International Bureau of WIPO under the Patent Cooperation Treaty (PCT). There are 8 sections (A - H) and these sections are further subdivided into classes. Each Class consists of the Section letter, followed by two digits. For example H01 is the Class designation for Basic Electronic Circuitry and F17 is the Class for Storing or Distributing Gases or Liquids. The electronic version of IPC is available on the WIPO web site.

    Kinds
    The letter, often with a further number, indicating the level of publication of a patent. For example DE-A1 is the German Offenlegungsschrift (application laid open for public inspection) while a DE-C1 is the German Patentschrift (first publication of the granted patent).

    Kokai
    An unexamined Japanese patent application.

    Kokoku
    An examined and allowed Japanese patent application.

    Lapse
    The date when a patent is no longer valid in a country or system due to failure to pay renewal (maintenance) fees. Often the patent can be reinstated within a limited period.

    License
    A transfer of patent rights that does not amount to an assignment. A license, which can be exclusive or non-exclusive, does not give the licensee the legal title to the patent.

    Non-Convention Equivalents
    An application filed in a second, or subsequent country which does not claim a priority application in another country. Usually a result of filing the application after the 12 month Convention period, but may be within that period by choice of the applicant. (See also Equivalent)

    Novelty
    The concept that the claims must be totally new. The invention must never have been made public in any way, anywhere, before the date on which the application for a patent is filed.

    Obviousness
    The concept that the claims defining an invention in a patent application must involve an inventive step if, when compared with what is already known (i.e. prior art), it would not be obvious to someone skilled in the art.

    Opposition
    The time period allowed for an interested party to post oppositions to the grant of a patent. For example, this may be up to nine months from the date of grant of a European patent.

    Prior art
    In a broad sense, technology that is relevant to an invention and was publicly available (e.g. described in a publication or offered for sale) at the time an invention was made. In a narrow sense, any such technology which would invalidate a patent or limit its scope. The process of prosecuting a patent or interpreting its claims largely consists of identifying relevant prior art and distinguishing the claimed invention from that prior art.

    Paris Convention
    The Paris Convention was established March 20 1883, effective July 7 1884, and amended June 2 1934 and July 14 1967. Signatories to the Paris Convention are allowed one year from first filing their patent application (usually in their own country) in which to make further applications in member countries and claim the original priority date.

    Patent
    A document defining the rights conferred by the grant, but often used generally to mean any published specification. A patent, which is the mature form of a patent application, consists of drawings of the invention, a specification explaining it, and claims which define the scope of exclusivity.

    Patent application
    A document submitted by an inventor to request he be issued a patent. It consists of the elements of a patent but will likely be modified during patent prosecution.

    PCT - Patent Co-operation Treaty
    The PCT was signed in Washington D.C. on June 19th 1970 and entered into force January 24th 1978. It was amended with effective dates of May 3rd 1984 and January 1st 1985. There are currently 96 signatories to this treaty. Contracting states may file an international application designating member states. If an applicant wants to press for grant in any of their designated states the patent application is moved to the national phase(s) but may carry the PCT priority filing date.

    Patent Family
    All the equivalent patent applications corresponding to a single invention, covering different geographical regions.

    Patentability
    The ability of an invention to satisfy the legal requirements for obtaining a patent, including novelty. In some countries certain types of inventions, e.g. computer software and plants, may be unpatentable.

    Patentee
    The person who is named as the inventor of a patent.

    PCT
    PCT stands for the Patent Cooperation Treaty , which is adhered to by more than100 countries. PCT patent applications are administered by the World Intellectual Property Organization. The Patent Cooperation Treaty permits an inventor to file what is called a PCT patent application. The Treaty is the result of an effort by many countries to provide some streamlining of patent applications across several countries at once. The US Patent and Trademark Office has additional information about PCT.

    Pending
    The period in which the patent office has not yet decided whether to reject or to grant a patent application, and it has not yet been withdrawn.

    Preliminary Examination
    The initial study of an application by an official in the patent office to check that the specification is properly arranged and for preparing search reports.

    Priority Date
    The initial date of filing of a patent application, normally in the applicant's domestic patent office. This date is used to help determine the novelty of an invention.

    RD document
    An RD document is a Research Disclosure (RD). Anyone who wishes to do so may pay a British company, Kenneth Mason Publications Ltd., to publish an invention disclosure. Some disclosures are anonymous, while others are attributed. Like an SIR, an RD has the effect of keeping others from getting a patent on the same invention. (see also H document).

    Reinstatement
    Restoring a patent to protection after it has apparently lapsed by error or been revoked.

    Rejection
    When a patent application is refused by a patent office.

    Research Disclosure
    Defensive-type publications which are published, often anonymously, to give companies and inventors "freedom of use" rather than legal protection. Once research disclosures are published the invention described cannot be patented.

    Revocation
    Termination of the protection given to a patent on one or more grounds, e.g. lack of novelty.

    Search Report
    A list of published items (both patent and non-patent literature), issued by the patent examiners checking the novelty of the patent application, which are relevant to the subject of the invention.

    Specification
    The description, drawings and claims of an invention prepared to support a patent application. The term does not imply that the invention is necessarily new or was ever protected.

    Status
    The legal standing of a patent or patent application, i.e. whether it is pending, lapsed or still protected etc.

    Substantive Examination
    The full examination of a patent application substance or content by a patent office examiner to determine whether a patent should be granted.

    Term of patent
    The maximum number of years that the monopoly rights conferred by the grant of a patent may last.

    Trademark
    Trademark is protection on slogans, logos, or product names. The primary function of trademark is to indicate the origin of goods and to distinguish them from those sold or manufactured by others.

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File last updated: 14 September, 2012

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