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89 Cards in this Set
- Front
- Back
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Objection |
If the form of the claim, specification, or drawing is improper, it is objected to. An applicant may contest an objection by asking the examiner to reconsider the objection or by filing a petition to the Commissioner.
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Obviousness |
If an individual skilled in the prior art finds the subject matter to be obvious based on the prior art itself, the claim or claims of the application may be rejected based on the fact that it is obvious. |
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Offer to Sell |
An offer to sell is made when the inventor makes it clear that he or she is willing to give or allow another individual access to the invented subject matter in exchange for money.
* an offer to sell the rights is a license, not a sale of the product * a mere offer to sell is enough to bar a patent * delivery of the invention is not required, all that is needed is a signed purchase agreement * the date of the offer for sale is the effective date of the on sale activity |
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Official Gazette |
A weekly newsletter published every Tuesday by the PTO which discusses new PTO policies, patent rules and information on all the patents issued that week. The Official Gazette lists all the reexamination certificates, reissues, plant patents, utility patents, design patents and statutory invention registrations also published that week.
* all inventors' names and addresses * assignee (company the inventor has transferred ownership to) * the filing date * application's serial number * international classification number * U.S. classification number * main drawing * number of claims * sample claim or abstract |
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Omnibus Claims |
An omnibus claim is one that is vague and does not provide enough information to be considered a valid claim. An example of an omnibus claim is one that states, “a device substantially as shown and described”. A claim of this sort only makes reference to a figure and does not describe the object being claimed in words. Omnibus claims will be rejected under 35 U.S.C. 112 second paragraph due to their inherent indefiniteness.
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On Sale |
The subject matter of an invention was on sale if there was a definite sale or even an offer to sell it to an individual or corporation. If the subject matter was on sale more than 1 year before the effective filing date of the U.S. application, the application may be rejected based on the on sale bar.
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One Year Rule |
A patent application for a particular invention must be filed within one year of a specific set of circumstances. If any of the circumstances has occurred more than one year before the patent was filed, the invention has passed into the public domain and it is not eligible for a patent.
* any sale of the invention * any offer to sell the invention * a description of the invention in a published document |
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Operability |
An invention must perform a useful function in order for it to be patentable. However, even an invention that performs crudely, or is not commercially successful, does not accomplish all of its intended functions or only has partial success may still be useful. In contrast, an inoperative invention is one that is completely incapable of producing the results claimed by the patent applicant. |
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Oral Hearing |
An oral hearing may be requested within two months from the date the examiner's answer was sent out in appeals. This hearing may be requested if the applicant believes it may help clear any remaining issues/concerns with the application. The request must be filed in writing and must include the appropriate fee. |
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Ownership |
The person who has the controlling interest in a patent or a patent application. Ownership may be given to a person, a group of persons and even a corporation. Since patents may be bought and sold like property, the ownership of a patent may change throughout its term.
Ownership will need to be established when: * an assignee signs a request for prosecuting the application if ownership has been changed* an assignee signs a request for the status of application or wants to allow someone to inspect the application * the application becomes abandoned * a legal representative is appointed * a terminal disclaimer is signed * a reissue application is filed * correction of inventorship occurs * an Issue Fee Transmittal form is signed * a reply to an Office Action is signed |
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Patent Term |
Patents are not in effect forever. The terms begin on the date the patent was filed and end 20 years from the issue date for utility and plant patents. They expire 14 years from the issue date for design patents. |
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Patent Term Extension |
The term of the patent may be lengthened under specific conditions. One such condition is if a regulatory process holds up the release of the invention after it is patented (i.e., a requirement of the Food and Drug Administration). |
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Patent Trial and Appeal Board |
Post issuance matters include proceedings conducted by the Patent Trial and Appeal Board. These include include appeals, inter partes review, post-grant review, the transitional post-grant review for covered business method patents, and derivation proceedings. |
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Patentable Subject Matter |
Determining what qualifies as a patentable invention is a highly difficult and complicated task. The MPEP simply states that “Anything under the sun, that was invented by man qualifies as patentable”, but following this statement is hundreds of pages full of exceptions and details on the idea of patentability.
* design patents * plant patents |
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Period for Reply |
In some cases, if an applicant needs more time to file an Office action, he or she may be granted an extension of time for the reply. A petition for an extension of time will have to be properly filed. There are some circumstances where a petition for an extension of time will be denied by the Office, such as if the application is involved in a reexamination or an interference proceeding. If the applicant fails to file a reply by midnight of the date the period for reply was due, the application will be regarded as abandoned and may lose all rights to his or her invention.
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Person of Ordinary Skill in the Art |
The PTO uses this definition to determine whether an invention is obvious.
* type of problems encountered in the art * prior art solutions to those problems * rapidity with which innovations are made * sophistication of the technology * educational level of the active workers in the field |
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Petition |
A petition is a means of attempting to overcome a decision made by the Patent and Trademark Office. |
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Petition to Make Special |
A “special” application is considered by the patent office as a priority, therefore the examination process will be considerably sped up. The “special” applications will be examined as quickly as possible. There are many types of applications that are eligible for a “special” petition; these include those filed by applicants' who are in poor health or over a certain age. In addition, applications pertaining to special topics; such as anti-terrorism, DNA research, cancer research and inventions that may improve the quality of the environment may also qualify for “special status”.
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Photographs |
The patent office will accept photographs to fulfill the drawing requirement of a patent application. -Black and white photographs: Black and white photographs or photomicrographs are acceptable in place a final drawings in order to illustrate inventions that are incapable of being accurately or adequately depicted by India ink drawings. -Color drawings and photographs: Color drawings or photographs are not usually allowed in an application. The Office will accept color drawings or photographs in utility or design applications only after granting a petition. The petition must meet the requirements of the PTO and will require a fee. An applicant will need to submit the petition again if an additional color photograph or drawing is added at any time during the prosecution. |
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Plant Patent |
There are three different types of patents; utility, design and plant patents. A plant patent may be granted for a new and distinct variety of plant that is asexually reproduced.
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Post Grant Review |
Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3).
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Preamble |
The part of the claims that describe and set forth the elements or steps and limitations of the claims (serves as an introduction). |
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Precautionary designation |
An indication made by an applicant for a filing under the PCT that designates the countries protection for the invention is sought. An applicant will have 15 months from the priority date to convert a precautionary designation to an active one. |
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Preissuance Submissions |
A mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application with a concise explanation of the asserted relevance of each document submitted.
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Preliminary Amendment |
An amendment made after or at the time of filing, but before an Office action is issued. Preliminary amendments are typically filed along with an application, and they are limited to a cancellation of claims. These are usually filed to eliminate informal claims and to reduce the filing fees of the application. |
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Prima Facie Obvious |
Prima facie evidence is that which is sufficient to raise a presumption of fact or to establish the fact in question unless rebutted. It stems from Latin, meaning ‘at first view' or ‘on the face of it'. There are three basic criteria that an examiner must meet to establish a prima facie case of obviousness; these include: 1. a suggestion or motivation either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the references or to combine the teachings2. a reasonable expectation of success 3. the prior art reference or combined references must teach or suggest all of the claim limitations |
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Prioritized Examination |
Prioritized examination has been implemented for utility and plant patent applications. When an applicant opts in to prioritized examination, the application will be accorded special status during prosecution before the patent examiner. The goal is to provide a final disposition within twelve months, on average, of prioritized status being granted.
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Priority |
Under certain conditions, an application or patent filed in the U.S. may be entitled to the benefit of the filing date of a prior application filed in a foreign country. This may be done to overcome an intervening reference or for similar purposes. Claiming foreign priority is covered in 35 U.S.C. 119. Sometimes, a U.S. application may also claim priority of an earlier U.S. application and this is covered in 35 U.S.C. 120. |
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Processes |
When the article itself is preexisting, one may still secure protection for the method of using the article. Remember that processes are patentable. |
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Product by Process |
A product claim that defines the product, device, apparatus, manufacture or composition of matter in terms of the process by which it is made. The patentability of a product claimed by a product-by-process claim must be based on the product itself and not the process. |
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Prosecution |
The prosecution includes the procedures that follow after a regular patent application is filed. The prosecution of a patent application includes the first, second and final Office actions and consists of the period between the filing of the application and its issuance or abandonment.
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Protest |
The PTO will consider information supplied in writing with reasons as to why a specific patent application should not issue. Any member of the public may submit a protest, and an attorney may file a protest without naming his or her client. A protest must be submitted prior to the mailing of a Notice of Allowance and the application must be pending when the examiner receives the information.
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Public Domain |
A patent, copyright or trademark that is known about, used or sold by members of the public is considered to be in the public domain. |
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Public Use |
An invention will not be patentable if it has been in public use for more than one year. One use by one person constitutes public use. If the invention is merely displayed or sold even though the invention itself was completely hidden from view, it will have been considered in public use. |
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Publicly Accessible |
A printed publication has been made available when persons interested and ordinarily skilled in the subject matter or art, can locate it by exercising reasonable diligence. The date the publication is received by a member of the public is the date of publication, not the printing date or mailing date. Even an orally presented paper will count as a printed publication if it is presented in a forum where all interested persons can come and written copies are given out and between 50 and 500 people attend and at least 6 copies are given out.
In addition, one need not prove someone actually looked at a publication when that publication is publicly accessible. However, documents and items only distributed internally within an organization which are intended to remain confidential are not printed publications no matter how many copies are distributed. |
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Recording Assignment |
Recording assignments to the PTO is voluntary, but it will serve as proof in case of problems in the future. In order for it to be recordable, a document must: * include a cover sheet with the necessary information* include the name of each inventor * include the required fee * be in English * be identified by an application number or patent number and filing date * be on one-sided paper |
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Reduction to Practice |
The process of inventing the subject matter is ended when it is finally reduced to practice. At this point, the invention has been physically created it, is fully operational and complete, and its full utility is known. The invention must be recognized and appreciated for reduction to practice to occur. In addition, no other experimentation should be necessary in order to make the invention work. Reduction to practice may be done by another on behalf of the inventor.
* machine - when it is assembled, adjusted and used * manufacture - when it is completely manufactured * composition of matter - when it is completely composed There must be sufficient testing to demonstrate that the invention will work for its intended purpose, however, it does not have to be in a commercially satisfactory stage. |
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Reference |
A document cited by an examiner used to evaluate the novelty of the claims in the disclosed invention. A reference may include a patent, a patent application, a thesis, or any other printed publication. |
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Refunds |
Refunds are rarely ever granted by the Patent and Trademark Office. It is possible for an applicant to receive a refund if he or she has a valid reason to do so, however, an applicant desiring to withdraw an application will never receive a refund for the fees he or she already paid. |
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Reissue |
Reissues replace an unexpired patent that is defective in one or more areas, (i.e., the reissue will attempt to correct the original patent). Only the patent owner may file a reissue application, and any prior art will be re-considered. |
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Rejection |
f the subject matter is said to be unpatentable, it is rejected by the examiner. An application that is “rejected” will continue to have that status until the applicant replies satisfactorily to the examiner's action (within a stated period of time) or until the application becomes abandoned.
Rejections are usually made due to issues with one of the following: * lack of utility (35 U.S.C. 101)* anticipation (35 U.S.C. 102) * obviousness (35 U.S.C. 103) * written description, enablement and best mode (35 U.S.C. 112) The examiner will usually reject at least some of the claims in any given application. There are three major laws governing the rejections of the claims. These laws consist of 35 U.S.C. 101, 102 and 103. Law 35 U.S.C. 101 summarizes what qualifies as patentable material. If the disclosed subject matter is not a process, manufacture, machine or composition of matter, it will be rejected under 101.
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Reply Brief |
In the case of appeals, the appellant may file a reply brief after receiving the examiner's answer. A reply brief after the examiner's answer is a matter of right, but the examiner may choose whether or not to act on it. Filing a reply brief does not require a fee. |
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Request for Reconsideration |
Any request for reconsideration may be filed in an attempt to revive an abandoned application, a terminated reexamination proceeding, or a lapsed patent. Requests for a reconsideration must be filed within 2 months of the decision which refuses the application. |
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Requirement for Information |
In some instances, an examiner will require more information from the applicant in order to continue with the prosecution of the application. The examiner will then issue a requirement for information and the applicant will have to send in the missing information within the time period specified. |
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Res Judicata |
Res judicata is taken to mean a matter already decided, a case already settled. It may constitute a proper ground for rejection. Res judicata should be applied only when the earlier decision was a decision of the Board or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decisions. Res judicata applies when: * the parties are identical in both cases* the same cause of action is involved * the prior judgment was rendered by a court of competent jurisdiction * there was a final judgment on the merits |
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Right of priority of an application |
Under certain conditions, an application or patent filed in the U.S. may be entitled to the benefit of the filing date of a prior application filed in a foreign country. Sometimes, a U.S. application may also claim priority of an earlier U.S. application. Claiming priority is commonly used to overcome an intervening reference. Both the prior art and the patent application must be by the same inventive entity |
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Sale |
A sale is a contract between parties where the seller agrees to give and to pass the rights of the property in return for the buyer's payment or promise to pay the seller for things bought or sold. |
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Search |
Before filing an application, the application, agent or attorney should study all relevant materials including issued patents and publications such as printed articles and scientific journals. The search should reveal whether or not the new invention is actually novel and nonobvious and will help to determine if it qualifies for a patent. |
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Secondary Considerations |
Those circumstances that the US Supreme Court identified in Graham v. John Deere that can be used to rebut a prima facie showing of obviousness. |
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Secrecy Order |
If a patent application contains issues that are sensitive to national security (i.e.; biological weapons, etc.) it will be placed under a secrecy order for one year after the date of its issuance. No member of the public will have access to it during this time period. A secrecy order may be renewed for periods of one year as many times as national interest deems it necessary. |
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Security Review |
If an application is found to contain issues that could threaten national security, the PTO will place a secrecy order on it and it will be kept secret. Therefore, a security review will be completed for all applications before a Notice of Allowance is mailed to the applicant. |
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Sequence Rules |
Sequence rules pertain to inventions involving complex DNA or amino acid sequences. |
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Serial Number |
The PTO assigns an application a serial number on the date a complete application is received. |
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Servicing the Applicant |
The purpose of servicing the applicant is to give the applicant or patent owner a chance to decide if a petitioner seeking access to the owner's application should only be granted access to a portion of the file instead of gaining access to the entire file. Servicing is not required when: * the application is incorporated in whole or part into an issued U.S. patent* the application is preserved in secrecy (however, the file itself will not be obtained unless the individual has security clearance) |
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Signatures |
The proper signature must be on any given form sent into the PTO. For some documents, the agent or attorney of record will suffice; for others, the inventor(s) must sign and for others still, both are required. In most instances, all inventors must sign the document. In order for this requirement to be waived, a petition must be sent in providing an adequate explanation for the missing inventor. |
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Simultaneous Inventions |
Inventions that are similar or exact in disclosure and were applied for at simultaneous or nearly simultaneous dates. Nearly simultaneous inventions: * may be a factor in making obviousness determination, but may not in itself preclude patentability* may be evidence of the level of skill in the art at the time of the invention * bears on neither long-felt need nor commercial success |
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Single Means Claim |
A claim that recites only a single means and nothing more is subject to an undue breadth rejection under 35 USC 112, first paragraph. |
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Specification |
The specification describes the invention itself. A specification must include a brief summary of the invention, its background, a description of the related art, the advantages of the invention and the claims. The point of the specification is to describe the invention in sufficient detail that another person may reduce it to practice without performing any further experimentation. This section includes: * the type of invention* relevant prior art * the purpose of the invention * the actual invention * how the invention works * an abstract or summary * drawings * claims * a written description of the invention * the manner and process of making and using the invention (the enablement requirement) * the best mode contemplated by the inventor for carrying out his or her invention |
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Specimens |
When the invention relates to a composition of matter such as a biotechnological development, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for the purpose of inspection or experiment. |
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Status |
Status involves whether the application is pending, abandoned or issued, as well as whether or not it has been published. |
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Statutory Process |
Statutory processes are those that are patentable. A computer process is statutory if the measurements of physical objects or activities are to be transformed outside of the computer into computer data.
* CAT scan images of a patient * computer processor to conduct seismic exploration |
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Statutory Invention Registration (SIR) |
The America Invents Act (AIA) repeals Statutory Invention Registrations (SIR) as of March 16, 2013.
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Statutory Subject Matter |
These are the types of inventions the PTO considers patentable for utility patents. The four general classes of patentable (statutory) subject matter are compositions of matter, manufactures, machines, and processes. Any new and useful improvements of any of the four listed categories are also considered statutory. |
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Substantial New Question of Patentability |
A substantial new question of patentability must be raised in order for a request for a reexamination to be considered valid. A reexamination request must include a statement that points out each new question of patentability based on prior patents and printed publications. If such a new question is found, an order for reexamination of the patent will be issued and the patent owner will need to file a statement within two months.
The AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request.
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Substitute Application |
A substitute application is an entirely new application filed after the original application was abandoned, it is never considered a copending application. It will not receive the original filing date, therefore, the invention will not have been protected during the time between the filing of the original and the substitute application. In most cases, it will have the same disclosure as an earlier application. |
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Substitute Specification |
These may be filed as long as no new matter is presented. A substitute specification may be submitted up until the time the issue fee is paid. |
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Summary of Interview |
After an interview has taken place, the applicant must summarize what was discussed and what was decided.
* the name of the applicant * the name of the examiner * the date of the interview * the type of interview * the name of all participants * an indication of whether the exhibit or demonstration was shown * an identification of the claims that were discussed * an identification of the specific prior art that was discussed * whether an agreement was reached * the signature of the examiner |
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Summary of Invention |
A component of the specification. The summary of the invention must include the subject matter of the invention and it should be summarized in one or more clear, concise sentences or paragraphs. |
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Supplemental Examination |
35 U.S.C. 257 provides for supplemental examination of an issued patent.
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Supplemental Oath or Declaration |
The oath or declaration presented in a patent application must always match the specification within that same application. If any of the claims have been altered during the prosecution, the inventor(s) will have to send in a supplemental declaration that pertains to the finally allowed claims. The inventor(s) must once again swear under oath and indicate which claims were changed and that they were the original inventor of the invention claimed. |
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Suppression |
Where an invention is hidden or concealed without the intent to patent the subject matter. For example; Einstein invents a way to power cars, but decides not to apply for a patent, instead, he hides all the papers pertaining to the invention in a safe. Twenty years pass and a corporation comes out with the same invention. Einstein may not now apply for a patent on the subject matter, even if he can prove he was the first to invent it because he suppressed the invention. |
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Swearing Back |
Swearing back, (also called an affidavit or declaration under 37 C.F.R. 1.131) may be used to overcome rejections where the prior art used to establish the rejection was not by “another”, but filed by the same inventor. In these cases, even though the publication was printed before the filing date of the application, it must have been printed after his or her actual date of invention. Swearing back is commonly used to overcome rejections based on 35 U.S.C. 102(a) or (e) or sometimes 35 U.S.C. 103. Swearing back cannot be used to overcome: * a rejection under 35 U.S.C. 102(b)* a statutory double patenting rejection * situations where the reference publication date is more than 1 year back of the applicant's effective filing date * attached sketches * attached blueprints * photographs * models * supporting statements by witnesses * testimony used in interferences * disclosure documents * unexpected results * commercial success * long-felt, but unsolved needs * failure of others * skepticism of experts |
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Terminal Disclaimer |
Terminal disclaimers may be used to overcome double patenting rejections. They are statements filed by an owner of a patent or application that will shorten a portion of the patent term for all the claims of a patent. The applicant gives up the portion of the patent grant that extends beyond the expiration date of the other patent. |
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Therapeutic Utilities |
A therapeutic utility may include a drug, the result it generally has in the patient and how it works, if known. Any evidence of a pharmacological or other biological activity of a compound will be relevant to an asserted therapeutic use if there is a reasonable correlation between the activity in question and the asserted utility. |
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Trademark |
An identifying symbol used to distinguish one seller's product from the product offered by another. The symbols may consist of a word, design, shape or pattern or a combination of these images. |
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Translational Phrases |
Transitional phrases are frequently used in claims.
* “including” and “characterized by” are synonymous with comprising * limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention * cannot add an element or step, equal to comprising * the phrase “consisting of” excludes any step not specified in the claim * claim that depends from a claim which “consisting of” the recited steps cannot add a step |
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Tuber Propogated Plants |
Tuber propagated plants are not patentable. The tuber is the short, thickened portion of an underground branch. Examples of plants that fall into the tuber propagated category include the Irish potato and the Jerusalem artichoke |
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Undue Experimentation |
The information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant art how to both make and use the claimed invention without any undue experimentation.
* the nature of the invention * the state of the prior art * the level of one of ordinary skill * the level of predictability in the art * the amount of direction provided by the inventor * the existence of working examples * the quantity of experimentation needed to make or use the invention based on the content of the disclosure |
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Unavoidable Delay |
An “excuse” used by an applicant to serve as a reason why the application should not be abandoned.
* a showing of the training and experience of the people responsible for the error * copies of applicable docketing records to show that the error was the cause of the delay |
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Unintentional Delay |
An “excuse” used by an applicant to serve as a reason why the application should not be abandoned. The applicant must attempt to prove that his or her delay was unintentional.
* if an applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent * if an applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent * if an applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses * evidence showing that the delay was unintentional * the required reply * the required fee * any terminal disclaimer that is deemed necessary |
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United States Code (USC) |
The U.S. Code is a set of laws developed by the House of Representatives. Code 35 establishes the laws dealing with patents. |
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Unity of Invention |
The concept that an international application must only include one invention or a group of inventions so linked as to form a single general inventive concept. A unity of invention exists when there is a technical relationship among the claimed inventions involving one or more special technical features.
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Utility |
A claimed invention must have a specific and substantial utility in order to be patentable. Patents are never granted on subject matter that is without a valid, useful function. For example, the invention must have more value to it than to be merely used as landfill.
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Utility Patent |
The three basic types of patents include utility, design and plant patents. Utility patents are those relating to mechanical inventions with function. |
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Venue |
The venue is where the oath was signed. |
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Withdrawal or Dismissal of Appeal |
An appellant who sent in an appeal may chose to withdraw that appeal at any time. However, unless the application contains at least one allowed claim, the withdrawal will result in the abandonment of the application. Alternatively, an applicant wishing to withdraw an application from appeal and reopen the prosecution of the application may file a Request for Continuing Examination under 37 C.F.R. 1.114. |
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Written Description |
The written description is one of three basic requirements that must be met for a specification to be accepted. The other requirements that must be fulfilled are the best mode and the enablement requirements. The written description must convey that as of the filing date sought, the inventor was in possession of the invention and was not still trying to figure it out. The written description: * requires an essential feature in the original claims, the feature must also be described in the specification or claims, and must not be conventional in the art or known to one of ordinary skill in art* it must not show any missing pieces * describing an actual reduction to practice of the claimed invention is a means of showing possession of the invention |
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Written Opinion |
During international patent prosecution proceedings, a written opinion by the examiner may be sent to the applicant. A written opinion will be prepared by the examiner in instances where the subject matter is unclear or inadequately supported or the subject matter lacks novelty or industrial applicability. In addition, a written opinion will be written if there are defects in the form or contents, if any amendment goes beyond the disclosure or if it is necessary to have a clarification of the claims, description or drawings. |
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World Intellectual Property Organization |
The WIPO is the organization responsible for regulating the protection of intellectual property around the world. The WIPO is located in Geneva, Switzerland. |
