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Patent Terms

Patent Terms

 
Abandonment

An abandoned patent application is one which is removed from the Patent Office's docket of pending applications. An application is considered abandoned when the applicant/attorney/agent does not pay a required fee or does not take appropriate action sometime during the prosecution of a nonprovisional application. 37 CFR 1.135 & 1.138

 
Abstract

Enables the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure. The abstract must be as concise as the disclosure permits, not exceeding 150 words in length. 37 CFR 1.72(b)

 
Allowance

The successful result of patent prosecution in which an applicant is found to be entitled to a patent, communicated by a Notice of Allowance (NOA). Generally, an NOA is issued to the applicant specifying a sum constituting the issue fee and required publication fee to be paid within 3 months. 35 U.S.C. §151

 
Appeal

An applicant for a patent application, reissue application, or reexamination proceeding dissatisfied with the Patent Examiner's second adverse decision or final rejection may appeal to the Patent Trial and Appeal Board (PTAB) for review of the Patent Examiner's rejection. 35 U.S.C. §134

 
Applicant

Any of the inventor, all of the joint inventors, the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the subject matter of the patent application. 37 CFR 1.42

 
Assignee

A party that is the recipient of an assignment (a transfer of a patent application, patent, trademark application, or trademark registration from its owner of record) is called the assignee. 37 CFR 3.1

 
Assignment

A transfer by a party of all or part of its right, title and interest in a patent, patent application, trademark registration, or trademark application. Such transfers of ownership by assignment must be in writing. 35 U.S.C. §261

 
Assignor

The owner of record of an assignment (patent application, patent, trademark application, or trademark registration), who is transferring ownership to another entity is called the assignor. 37 CFR 3.1

 
Claims

Define the invention for which patent protection is sought by setting forth a plurality of elements in a device or system, or steps in a method. In other words, it is a statement that "claims" the subject matter which the applicant regards as their invention or discovery. A claim may be "independent," meaning that it stands on its own, or "dependent," meaning that it further defines the independent claim and any intervening claims. 37 CFR 1.75

 
Continuation Application

An application for an invention disclosed in an earlier application. A continuation application claims priority to the filing date of an earlier filed application but does not add new matter to the specification of the earlier filed application. A continuation application permits an applicant to file different claims than those found in the earlier filed application, and as long as the continuation is filed prior to issuance or abandonment of the earlier application - a condition called "copendency." 37 CFR 1.53(b)

 
Continuation-in-Part (CIP) Application

An application for an invention that is partially disclosed in an earlier application. A CIP application claims priority to the filing date of an earlier filed application, but only for the portions of the claims supported by the earlier filed application, and may add new matter to the disclosure of the earlier filed application; however, any claims that pertain to the new matter are not privy to the filing date of the earlier filed application. This type of application permits an applicant to file different claims than those found in the earlier filed application, as long as the continuation is filed prior to issuance or abandonment of the earlier application - a condition called "copendency," and as long as the CIP is filed within twelve (12) months of publication of the earlier filed application. 37 CFR 1.78

 
Copendency

When two related applications are pending in the Patent Office at the same time. A later-filed application must be filed before the patenting of the prior application, the abandonment of the prior application, or the termination of proceedings in the prior application. If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application. 35 U.S.C. §120

 
Description

Describes the technology sought to be patented and serves to satisfy the inventor's obligation to disclose the knowledge upon which the patent is based. This is also commonly referred to as a written description or detailed description. 35 U.S.C. §112(a)

 
Design Patent

Protects the appearance of an article, not its functional features. Proceedings relating to the granting of design patents are similar to utility patents, but markedly different in respect to term length, claim scope, and determination of infringement. MPEP §1502 & U.S.C. §171

 
Divisional Application

May only result from a restriction requirement for an invention. If there are multiple inventive features in a patent application, the Patent Office may require that the applicant restrict the claimed subject matter (i.e., elect one invention for examination). A divisional application is a subsequently filed application in which the nonelected inventive features of the earlier filed application may be pursued. MPEP §201.06

 
Drawings

May include illustrations which facilitate understanding of the invention, such as flow charts and diagrams. Drawings must be presented where necessary for the understanding of the subject matter being sought for patenting. 37 CFR 1.81

 
Duty of Disclosure

Applicants have a duty of disclosure to report to the Patent Office all prior art they are aware of that is potentially relevant to the claimed invention. This duty is fulfilled by filing an Information Disclosure Statement. 37 CFR 1.56

 
Election

Made in response to a restriction requirement and consists of an applicant choosing (electing) a subset of the original claims of a patent application to move forward with prosecution. MPEP §818

 
Ex Parte Quayle

A notice given to a patent applicant stating that the application is in condition for allowance, except for outstanding formalities. MPEP §714.14

 
Ex Parte Reexamination

At any time during the term of an issued patent, a petitioner may request that the USPTO reexamine that patent on the basis of patentability due to prior art. 37 CFR 1.501

 
Examination

The process in which patentability is judged with respect to invention(s) claimed in a patent application. Examination is conducted by a Patent Examiner employed by the USPTO. 35 U.S.C. §131

 
Filing Date

The date of receipt in the United States Patent and Trademark Office (or foreign equivalent) of an application. 35 U.S.C. §111

 
Final Rejection

An Office Action that is intended to close the prosecution of a non-provisional patent application. An applicant's reply is limited either to an appeal to the Patent Trial and Appeal Board (PTAB) or to an amendment complying with the requirements set forth in the Office Action. 37 CFR 1.113

 
Grant

The successful result of patent prosecution in which the patent grant confers the right to exclude others from making, using, offering for sale, or selling the invention disclosed. MPEP §1309

 
Intellectual Property (IP)

Creations of the mind, such as inventions, literary and artistic works, designs, symbols, names, and images used in commerce. IP is protected by patents, copyrights, trademarks, trade dress, and trade secrets. WIPO About IP

 
Inter Partes Review

A trial proceeding conducted at the Patent Trial and Appeal Board (PTAB) to review the patentability of one or more claims in a patent only on the grounds that claims are anticipated or obvious, and only on the basis of prior art consisting of patents or printed publications. 37 CFR 1.41

 
Inventor

The individual or, in the case of joint invention, individuals, who invented or discovered the subject matter of the invention. Joint inventor or co-inventor means any one of the individuals who invented or discovered the subject matter. MPEP §2109

 
Issue Fee

After receiving the Notice of Allowance (NOA) communicating that a patent application has reached allowance, an issue fee must be paid to the Patent Office. Upon processing of the payment, a patent number and issue date will be assigned to an application. MPEP §1309
Fun Fact: U.S. patents are always issued on Tuesdays

 
License

A license is a document in which the owner of IP grants permission to a licensing party to take actions that would otherwise be unlawful or infringing. 37 CFR 3.1

 
Maintenance Fees

Fees must be paid to maintain the enforceability of an issued utility patent. These fees incrementally increase and are due 3.5, 7.5, and 11.5 years after the patent's issue date. Failure to pay a maintenance fee results in expiration of the patent, meaning it is no longer enforceable against infringement. MPEP §2500 & 35 U.S.C. §41

 
Non-Final Rejection

An Office Action made by the Patent Examiner where the applicant is entitled to reply and request reconsideration and further examination, with or without making an amendment. 37 CFR 1.104 & 1.112

 
Non-Obviousness

Claims of a patent are rendered obvious if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the claimed invention. Overcoming this bar is considered being "non-obvious." This may also be known as an "inventive step." 35 U.S.C. §103

 
Non-Provisional

A patent application which will be examined by the USPTO and may turn into a granted patent. There are three types of non-provisional applications: utility, design, and plant. A non-provisional application may be a subsequent counterpart to a provisional application; the benefit being that the non-provisional application may claim priority to the provisional application's filing date if the non-provisional is filed within one year of the provisional application's filing date. 35 U.S.C. §111

 
Novelty

A person shall be entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Overcoming this bar is considered being "novel." 35 U.S.C. §102

 
Office Action

A written correspondence from the Patent Examiner that requires a written response from the applicant (or a representative) in order for prosecution of the application to continue. An Office Action from the Examiner details their findings on the review of the application and search for prior art, as well as their assessment of whether a patent can be granted. Examples of Office Actions include restriction requirements, non-final rejections, and final rejections, to name a few. 37 CFR 1.104

 
Owner

The person in possession of ownership of a patent with the right to exclude others from making, using, offering for sale, selling or importing the invention claimed in the patent. In various contexts, the owner may be referred to as the licensor or assignor. 35 U.S.C. §261

 
Paris Convention

The Paris Convention for the Protection of Industrial Property is an international treaty establishing minimum protections for industrial property in member countries. It was the first major step taken to help creators ensure that their intellectual works were protected in other countries. Adopted in 1883, it applies to patents, trademarks, industrial designs, utility models, service marks, trade names, and geographical indications, and the repression of unfair competition. MPEP Appendix P

 
Patent Agent

A non-attorney IP professional meeting legal, scientific, and technical qualifications as well as having good moral character and reputation. To be a registered patent agent, an individual must have passed the USPTO's Registration Examination, commonly referred to as the "Patent Bar." Patent agents are qualified to practice law before the USPTO within the confines of patent prosecution. 37 CFR 11.7

 
Patent Attorney

An attorney meeting legal, scientific, and technical qualifications as well as having good moral character and reputation. Patent attorneys are members of a state Bar Association and have also passed the USPTO's Registration Examination, commonly referred to as the "Patent Bar." 37 CFR 11.7

 
Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty is an international patent law treaty with more than 150 member countries, called “Contracting States.” It provides a mechanism for an applicant to pursue patent protection in the Contracting States by filing a single international patent application that has the legal effect of a national or regional patent application in the Contracting States. International patent applications are filed with the World Intellectual Property Organization (WIPO) and passed to individual countries or regional patent offices for examination, resulting in separate patents granted by each national or regional Patent Office. MPEP Chapter 1800 & Appendix T

 
Patent Examiner

Engineers and scientists who work for the respective government's Intellectual Property Office to examine patent applications and determine whether a patent can be granted. USPTO Become A Patent Examiner

 
Patent Term

The length for which a patent is "alive," "active," or "enforceable." Utility and plant patents have a term for up to 20 years from the filing date of the non-provisional application or earliest date for which priority is claimed. A design patent is granted for a term of 15 years from the date of grant. 35 U.S.C. §154

 
Patent Term Adjustment

If the issue of a patent is delayed due to the failure of the USPTO to provide notice of allowance (NOA), respond to an Office Action response, etc., the term of the patent shall be adjusted to add one day for each day of the failure period once the action is rectified.  35 U.S.C. §154

 
Patent Term Extension

An extension of the lifetime of a patent. Applications may be eligible for an extension of the patent term if they pertain to certain human drugs, food or color additives, medical devices, animal drugs, and veterinary biological products to restore to the terms of those patent some of the time lost while awaiting premarket government approval from a regulatory agency. 35 U.S.C. §156

 
Patent Trial and Appeal Board (PTAB)

A government body which conducts trials, including inter partes, post-grant, and covered business method patent reviews and derivation proceedings, hears appeals from adverse Patent Examiner decisions in patent applications and reexamination proceedings, and renders decisions in interferences. 35 U.S.C. §6

 
Patentability

In order for a disclosed discovery or invention to be considered eligible to be patented, it must contain patentable subject matter, have utility, be novel, be non-obviousness, and be enabled through the written description and figures. In addition, the inventor(s) must have come up with the idea - you cannot patent something that someone else invented and you took the idea from. 35 U.S.C. §101

 
Plant Patent

Granted for inventing or discovering and asexually reproducing any distinct and new variety of plant. A plant patent gives the owner the right to exclude others from making, using, offering for sale, selling, or importing the plant variety into the United States. A plant patent gives additional rights on the “parts” of plants (e.g., a plant patent on an apple variety would include rights on the apples from the plant variety.) 35 U.S.C. §161

 
Prior Art

Publications that existed prior to the filing date of a patent application. Prior art may be used to determine conditions of patentability (i.e., novelty, non-obviousness, etc.) for the claimed subject matter in a patent application. Prior art may include domestic and foreign patents and published patent applications, or non-patent literature including printed or electronic publications. MPEP §2126-2168

 
Priority Claim

A helpful way to link a later filed patent application to an earlier filed patent application to render irrelevant any intervening prior art. The earlier filed application must generally have common subject matter and inventorship in order for a priority claim to be made. The common subject matter in the later application will be backdated to the filing date of the earlier application. 35 U.S.C. §119

 
Priority Date

The filing date of the earliest application for which the patent or application is entitled to a right of priority or to the benefit of an earlier filing date. 35 U.S.C. §100(1)(b)

 
Prosecution

The process by which the applicant (or a representative) interacts with the government's IP office regarding a patent or trademark application. MPEP §2163

 
Provisional Patent Application

Functions to secure a filing date. Provisional applications provide a one-year period in which a non-provisional patent application can be filed and claim priority to the provisional filing date. Provisional applications are not examined by a Patent Examiner and will never issue as a patent. 35 U.S.C. §111

 
Publication

A patent application will usually publish 18 months after the filing date. Early publication, redacted publication, or non-publication may also be requested. A trademark will publish prior to registration, allowing third parties to oppose its registration. 37 CFR 1.215

 
Reissue Application

An application filed by the applicant (or a representative) to correct defects in their unexpired patent. MPEP §201.05

 
Restriction Requirement

If two or more independent and distinct inventions are claimed in one application, the Director of the USPTO may require the application to be restricted to one of the inventions. This is often provided by a Patent Examiner, and an applicant can choose to file claims directed toward non-elected claims in a divisional application. 35 U.S.C. §121

 
Specification

A written description of an invention disclosed in a patent application, including the manner and process of making and using the invention. The specification is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art to which the invention or discovery pertains to make and use the claimed invention. 35 U.S.C. §112

 
United States Patent and Trademark Office (USPTO)

The United States Patent and Trademark Office (USPTO) is an agency within the Department of Commerce responsible for granting patents and registering trademarks enforceable within the United States. USPTO About Us

 
Unity of Invention

The claims of a single patent application must be directed toward a single invention. In the U.S., if the claims are directed to more than one invention, a restriction requirement may be imposed. 37 CFR 1.499

 
Utility Patent

A patent granted for inventing a new or improved and useful process, machine, article of manufacture, or composition of matter. Utility patents grant the inventor/owner the right to exclude others from making, using, offering for sale, or selling an invention or importing it into the country of issuance. 35 U.S.C. §101

 
World Intellectual Property Organization (WIPO)

An agency of the United Nations which serves as an international IP system. WIPO assists with the process of filing applications outside an applicant's native country. WIPO About Us

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