Glossary of patent law terms
This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.
A
Abandonment
Abandonment refers to the cessation of a patent application’s progress due to the applicant’s failure to make a bona fide attempt to advance the patent application to a final conclusion.Abandonment in patent prosecution can occur either voluntarily or involuntarily:
- Voluntary abandonment occurs when the applicant explicitly communicates their intent to withdraw the application from consideration.
- Involuntary abandonment happens when the applicant fails to meet specific requirements, such as failing to respond to an office action or failing to paying required fees within the prescribed time frame. If no reply is received within the allotted period, the application may be considered abandoned or deemed withdrawn, depending on the jurisdiction, and is therefore no longer pending.
Allowance
Annuity fee
A fee to be paid to maintain a patent or a patent application in force. Also called "maintenance fee" or "renewal fee".Application
An application for a patent, or patent application, is a formal request submitted to a competent authority by an applicant to grant a patent for an invention. The term "application" in this context also refers to the content of the document or documents filed to initiate the patent examination process. An application typically includes a detailed description of the invention and at least one claim defining the scope of protection sought. The application document serves as the foundation for evaluating whether the invention described therein meets the legal requirements for patentability.Application abroad
An application filed by a resident of a given country/jurisdiction with a patent office of another country/jurisdiction. For example, a patent application filed by an applicant residing in France with the USPTO is considered an “ application abroad” from the perspective of France. “Application abroad” is a concept similar to “non-resident application”, which describes a patent application received by an IP office from an applicant residing in a country represented by another IP office.Arrow declaration
A declaration sought from a court that a product to be launched was old or obvious at a particular date, so that the product cannot be affected by a later granted patent, which would also either lack novelty or inventive step.Assignor estoppel
In United States patent law, an equitable estoppel barring a patent's seller from attacking the patent's validity if they are found to have infringed that patent later.Auslegeschrift
In outdated German patent law, the second reading, or publication, of a patent application.Author’s certificate
A form of inventor's recognition formerly available in the Soviet Union and a number of Socialist countries. Also called "inventor's certificate".B
Bifurcation system
Legal system in which patent infringement and patent validity are decided upon by different courts. The German legal system is bifurcated as patent infringement is dealt with by district courts and patent validity by the Federal Patent Court. See also German patent law#Litigation.Biogen sufficiency
U.K. law concept according to which, if "the extent of the monopoly claimed exceeds the technical contribution to the art made by the invention as described in the specification", the patent may be revoked on the ground of insufficiency of disclosure. The concept stems from the decision Biogen v. Medeva, issued by the House of Lords on 31 October 1996.Bolar exemption
See research exemption.Branching off
Under German patent law, a procedure consisting in deriving a utility model from a pending patent application. Also called "derivation". The corresponding German term is Abzweigung.C
Catch and release
The practice of a patent holding company buying a patent, offering a license to its members and then selling or donating the patent after a certain period of time.Chapter I
In the Patent Cooperation Treaty, "Chapter I" refers to the prosecution procedure when no demand under is made. The states selected under Chapter I by the applicant are called "designated States".Chapter II
In the PCT, "Chapter II" refers to the prosecution procedure when a demand under is made. An international preliminary examination is conducted in this case. The demand indicates the Contracting State or States in which the applicant intends to use the results of the international preliminary examination.Claim
A noun phrase defining the extent of the protection conferred by a patent, or the extent of protection sought in a patent application.Claim chart
A chart often used in the context of patent litigation for analyzing and presenting information regarding a patent claim vis-à-vis an allegedly infringing product or method.Claim construction
The process of interpreting or explaining the meaning of the terms in a patent claim, especially in the context of patent infringement.Clearance search and opinion
A search done on issued patents or on pending patent applications to determine if a product or process infringes any of the claims of the issued patents or pending patent applications. These searches and opinions are also called freedom-to-operate searches and opinions. See Patent infringement.Common general knowledge
A legal concept used notably when assessing whether an invention involves an inventive step, whether the disclosure of the invention is sufficiently clear and complete for a skilled person in the art to be able to carry out the invention, and whether the subject-matter of a prior art disclosure is enabling. The common general knowledge "is the common knowledge in the field to which the invention relates." The information "must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in that art before it becomes part of their common stock of knowledge relating to the art, and so part of the common general knowledge."Regarding the inventive step assessment, " information is part of the common general knowledge then it forms part of the stock of knowledge which will inform and guide the skilled person's approach to the problem from the outset. It may, for example, affect the steps it will be obvious for him to take, including the nature and extent of any literature search."
Under European practice, "the common general knowledge of the person skilled in the art is, as a general rule, established on the basis of encyclopaedias, textbooks and the like". Exceptionally however, common general knowledge may also be established on the basis of the content of patent specifications "and in particular when a series of patent specifications provides a consistent picture that a particular technical procedure was generally known and belonged to the common general knowledge in the art at the relevant date".
Compulsory license
Using compulsory licenses, a government may force a patent proprietor to grant use to the state or others. Usually, the holder does receive some royalties, either set by law or determined through some form of arbitration.Continuation-in-part application
Under United States patent law, a continuation-in-part is a type of continuing application that claims priority to a prior-filed application, repeats a substantial portion or all of the prior-filed application, and adds subject matter not disclosed in the prior-filed application.Continuation-in-part applications share at least one inventor with the prior-filed application. A continuation-in-part application that has a sole inventor may derive from a prior-filed application that has joint inventors, and a continuation-in-part application that has joint inventors may derive from a prior-filed application that has a sole inventor.