Glossary - Pi Patent Exam Prep

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Define: Abandonment

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A patent application becomes abandoned for failure to file a complete and proper reply as the condition of the application may require within the time period provided under 37 CFR § 1.134 and § 1.136 unless an Office action indi- cates otherwise. 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 Office docket of pending applications.

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Define: Abstract of the Disclosure

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A concise statement of the technical disclosure including that which is new in the art to which the invention pertains.

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Define: ADS

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Application Data Sheet

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Define: Patent Agent

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May be referred to as a practitioner or representative. One who is not an attorney but is authorized to act for or in place of the applicant(s) before the Office, that is, an individual who is registered to practice before the Office.

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Define: Applicant

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One or joint inventors who are applying for a patent on their own invention, or the person mentioned in 37 CFR 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.

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Define: Patent Application Number

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The unique number assigned to a patent application when it is filed. The application number includes a two digit series code and a six digit serial number.

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Define: Assignment

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A transfer of ownership of a patent application or patent from one entity to another. Record all assignments with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.

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Define: Patent Attorney

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May be referred to as a practitioner or representative. An individual who is a member in good standing of the bar of any United States court or the highest court of any State and who is registered to practice before the Office.

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Define: Benefit Claim

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The claiming by an applicant in a non-provisional application of a benefit of an invention disclosed in a prior-filed co-pending (under examination at the same time) provisional or non-provisional application, or international application designating the U.S. for the purposes of securing an earlier-effective filing date for the non-provisional application.

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Define: Certificate of Mailing

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A certificate for each piece of correspondence mailed, prior to the expiration of the set period of time for response, stating the date of deposit with the U.S. Postal Service and including a signature.

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Define: CIP

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Continuation-In-Part- An application filed during the lifetime of an earlier non-provisional application, repeating some substantial portion or all of the earlier non-provisional application and adding matter not disclosed in the earlier non-provisional application.

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Define: Claims

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Define the invention and are what aspects are legally enforceable. The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable (clearly understood) by reference to the description.

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Define: Coinventor

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An inventor who is named with at least one other inventor in a patent application, wherein each inventor contributes to the conception (creation) of the invention set forth in at least one claim in a patent application.

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Define: Confirmation Number

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A four-digit number that is assigned to each newly filed patent application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error (misplaced digits) in the application number. The Office recommends that applicants include the application's confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.

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Define: Continuation

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A second application for the same invention claimed in a prior non-provisional application and filed before the first application becomes abandoned or patented.

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Define: CPA

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Continued Prosecution Application. A continuation or divisional application filed in a design application under 37 CFR 1.53(d).

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Define: Customer Number

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A number assigned by the Office that is used to simplify the submission of an address change, to appoint a practitioner, or to designate the fee address for a patent. Customer numbers are primarily used by attorneys and law firms, and must be requested using the "Request for Customer Number" form.

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Define: Deceased Inventor

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A named inventor who has died prior to the filing of a patent application or during the prosecution of a patent application.

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Define: Declaration

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A document in which an applicant for patent declares, under penalty of fine or imprisonment, or both (18 USC 1001), that (1) he or she is the original or sole inventor, (2) shall state of what country he or she is a citizen, (3) that he or she has reviewed and understands the contents of the specification and claims which the declaration refers to, and (4) acknowledges the duty to disclose information that is material to patentability as defined by 37 CFR § 1.56. An oath or declaration must be filed in each non-provisional patent application.

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Define: Dependent Claim

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A claim that refers back to (depends on) and further limits a preceding dependent or independent claim. A dependent claim shall include every limitation of the claim from which it depends.

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Define: Deposit Account

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An account that is established in the U.S. Patent and Trademark Office (USPTO), upon payment of a fee for establishing such an account, for the convenience in paying any fees due, in ordering services offered by the USPTO, copies of records, etc.

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Define: Design Patent Application

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An application for a patent to protect against the unauthorized use of new, original, and ornamental designs for articles of manufacture.

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Define: Disclaim

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A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer (give up all or part of the owner's rights to enforce claims) of any complete claim , stating therein the extent of their interest in such patent. Such disclaimers are required to be in writing and recorded in the USPTO, and are considered as part of the original patent to the extent of the interest actually possessed by the disclaimant and by those claiming under him. Any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term (from a certain point in time through the projected end of the entire term), of the patent granted or to be granted. There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer.

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Define: Disclosure

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In return for a patent, the inventor gives as consideration a complete revelation (describes it) or disclosure of the invention for which protection is sought.

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Define: Divisional Application

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A later application for an independent or distinct invention disclosing and claiming (only a portion of and) only subject matter disclosed in the earlier or parent application.

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Define: Drawing

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Patent drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete but are only required if drawings are necessary for the understanding of the subject matter sought to be patented.

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Define: Element

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A discretely claimed component of a patent claim.

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Define: Embodiment

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A manner in which an invention can be made, used, practiced or expressed.

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Define: Enforceability of a Patent

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The right of the patent owner to bring an infringement suit against a 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.

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Define: Express Abandonment

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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.

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Define: Express Mail Mailing Label

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Patent correspondence delivered to the USPTO via the "Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) which is considered filed in the Office on the date of deposit with the USPS, shown by the "date-in" on the "Express Mail" mailing label.

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Define: Fee

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An amount of money charged for a particular service or product supplied by the USPTO.

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Define: Filing Date

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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.

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Define: Filing Receipt

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When an application is submitted electronically, the Office immediately issues a confirmation of filing via email that includes the serial number and filing date, and a summary of all the data provided by applicant in the application. This serves as evidence of filing. Applicants who file paper applications receive printed filing receipts that list the application serial number and filing date, the mark, the applicant's name, the goods and/or services, the filing bases, if available; the international class(es), and the address to be used for correspondence.

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Define: Final Office Action

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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.

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Define: IDS

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Information Disclosure Statement. A list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office in a non-provisional patent application filed under 35 U.S.C. § 111(a) to comply with applicant's duty to submit to the Office information which is material to patentability of the invention claimed in the non-provisional application. For patent applications filed under 35 U.S.C. § 111(a), applicants and other individuals who are substantively involved in preparing or prosecuting a patent application must submit to the Office information which is material to patentability (could render a claim unpatentable) as defined in 37 CFR § 1.56. The provisions of 37 CFR § 1.97 and 37 CFR § 1.98 provide a mechanism for compliance with the duty of disclosure provided in 37 CFR § 1.56. The IDS must include a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office.

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Define: Independent Claim

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A claim that does not refer back to or depend on another claim.

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Define: Interference

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A proceeding, conducted before the Board of Patent Appeals and Interferences (Board), to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents.

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Define: International Application

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An application filed under the Patent Cooperation Treaty.

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Define: Invention

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Any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States.

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Define: Inventor

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One who contributes to the conception of an invention. The patent law of the United States of America requires that the applicant in a patent application must be the inventor.

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Define: Issue Date

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The date that a patent application becomes a US patent. The issue date is the date that patent rights can be exercised. U.S. patents are always issued on Tuesdays.

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Define: Joint Application

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An application in which the invention is presented as that of two or more persons.

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Define: Joint Inventor

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An inventor who is named with at least one other inventor in a patent application, wherein each inventor contributes to the conception of the invention set forth in at least one claim in a patent application.

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Define: Maintenance Fees

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Fees for maintaining in force a patent based on an application filed on or after December 12, 1980.

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Define: Markush Doctrine

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When materials recited in a claim are so related as to constitute claiming the members of the claimed group in the alternative, such as "selected from the group consisting of A, B and C."

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Define: Multiple Dependent Claim

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A dependent claim which 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." A multiple dependent claim may not depend on another multiple dependent claim, either directly or indirectly.

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Define: National Stage Application

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The processing and prosecution of the patent application in the individual member countries. This is usually done after 30 months of the national patent application filing.

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Define: Non-Final Office Action

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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 reexamination 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:
• Compliance of the application or patent under reexamination with the applicable statutes and rules
• The patentability of the invention as claimed
• Matters of form, unless otherwise indicated.

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Define: Non-provisional Patent Application

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An application for patent filed under 35 U.S.C. 111(a) that includes all patent applications (i.e., utility, design, plant, and reissue) except provisional applications. The non-provisional application establishes the filing date and initiates the examination process. A non-provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee.

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Define: Non-Responsive Amendment

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An amendment filed by the applicant that does not fully respond to the examiner's office action in accordance with 37 CFR 1.111.

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Define: Notice of Abandonment

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A written notification from the USPTO that an application has been declared abandoned or, in other words, is no longer pending. If the application was abandoned unintentionally or due to Office error, the applicant has a deadline of two months from the issue date of the notice of abandonment to file either (1) a petition to revive the application or (2) a request to reinstate the application.

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Define: Notice of Allowability

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A notification to the patent applicant that the application has been placed in condition for allowance.

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Define: Notice of Allowance and Fees Due

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A notification to the applicant that they are entitled to a patent under the law and requesting payment of a specified issue fee (and possibly a publication fee as well) within three months (non-extendable) from the mailing date of the notice of allowance.

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Define: Oath

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A solemn declaration before another, complying with the laws of the state or country where made, that the document in which an applicant for patent declares that
(1) he or she is the original or sole inventor,
(2) shall state of what country he or she is a citizen,
(3) that he or she has reviewed and understands the contents of the specification and claims which the declaration refers to, and
(4) acknowledges the duty to disclose information that is material to patentability as defined by 37 CFR § 1.56. An oath or declaration must be filed in each non-provisional patent application.

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Define: OED

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Office of Enrollment and Discipline

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Define: Office

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In the context of actions or activities involving the USPTO this refers to the
United States Patent and Trademark Office (USPTO) itself.

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Define: Office Action

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A letter from a patent examiner setting forth the legal status of a patent application. The Office action may include requirements, objections and/or rejection of the claims. The applicant must respond to every requirement, objection or rejection in the Office action to avoid abandonment of the application.

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Define: OIPE

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Office of Initial Patent Examination

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Define: Original Application

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"Original" is used in the patent statute and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.

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Define: Parent Application

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The term "parent" is applied to an earlier application of the inventor disclosing a given invention.

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Define: Patent

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A property right granted by the Government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the inven- tion when the patent is granted.

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Define: Patent Number

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Unique number assigned to a patent application when it issues as a patent.

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Define: Patent Pending

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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 U.S. Patent Number XXXXXXX." Applying the patent pending phrase to an item when no patent application has been made can result in a fine.

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Define: Patentable

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Suitable to be patented; entitled by law to be protected by the issuance of a patent.

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Define: PCT

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Patent Cooperation Treaty

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Define: Plant Application

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Applications to protect invented or discovered, asexually reproduced plant varieties.

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Define: Postcard Receipt

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A self-addressed, stamped postcard with itemized list of parts of patent application and number of pages per MPEP 503; used as a receipt for what was submitted in an application.

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Define: Practitioner

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One who stands for or acts on behalf of another. A patent attorney or patent agent may represent the inventors named in a patent application.

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Define: Primary Examiner

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A patent examiner who is fully authorized to sign office actions (signatory authority) regarding patentability.

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Define: Priority Claim

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Claims under 35 USC 119(a)-(e) and 35 USC 120 for the benefit of the filing date of earlier filed applications.

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Define: Pro Se Inventor

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Used to designate an independent inventor who has elected to file an application by themselves without the services of a licensed representative.

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Define: Provisional Patent Application

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A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. § 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclo- sure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C § 111(a) and automatically becomes abandoned after one year. It also allows the term "Patent Pending" to be applied.

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Define: RCE

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Request for Continued Examination. A request filed in an application in which prosecution is closed (e.g., the application is under final rejection or a notice of allowance) that is filed to reopen prosecution and continue examination of the application; requires the filing of a submission and payment of a fee; see 37 CFR 1.114.

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Define: Reexamination Proceeding

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At any time during the enforceability of a patent any person may file a request for the USPTO to conduct a second examination of any claim of the patent on the basis of prior art patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability (see 37 CFR 1.501). In order for the request for reexamination to be granted, a substantial new question of patentability must be present with regard to at least one patent claim. The request must be in writing and must be accompanied by payment of a reexamination request filing fee as set forth in 37 CFR 1.20(c).

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Define: Reissue Application

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An application for a patent to take the place of an unexpired patent that is defective in one or more particulars (items or details) -- see MPEP 201.05 and MPEP 1400.

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Define: Rejoinder

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The rejoining (returning to active consideration) of claims previously withdrawn from consideration to due to an election requirement (see restriction).

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Define: Representative

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One who stands for or acts on behalf of another. A patent attorney or patent agent may represent the inventors named in a patent application.

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Define: Restriction

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If two or more independent and distinct inventions are claimed in a single application, the examiner may require the applicant to elect (designate) a single invention to which the claims will be restricted (limited to). This requirement is
known as a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action (final rejection).

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Define: Small Entity

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For purposes of small entity determination per MPEP 509.02 - means an independent inventor, a small business concern, or a non-profit organization eligible for reduced patent fees.

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Define: Specification

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A written description of the invention and the manner and process of making and using the same.

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Define: Term of Art

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An expression or phrase that has a defined meaning when used in a particular context or knowledge environment (such as the patenting process, pharmaceuticals, computers, etc.).

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Define: Trade Secret

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Information that companies keep secret to give them an advantage over their competitors.

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Define: USPTO

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United States Patent and Trademark Office

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Define: Utility Patent Application

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Protect useful processes, machines, articles of manufacture, and compositions of matter.