Patents and Patent Law
Expert-defined terms from the Professional Certificate in Intellectual Property Law course at London School of Business and Administration. Free to read, free to share, paired with a professional course.
Absolute Grounds for Refusal – Related terms #
lack of novelty, obviousness. A statutory basis for rejecting a patent application when the claimed invention fails to meet a core requirement such as novelty, inventive step, or industrial applicability. Example: an invention identical to prior art is refused on the ground of lack of novelty. Challenge: applicants must anticipate all prior disclosures to avoid refusal.
Accidental Invention – Related terms #
independent invention, prior art. An invention created unintentionally while pursuing a different objective, yet meeting patent criteria. Example: the discovery of penicillin during a study of bacterial cultures. Practical application: courts may still grant patents if the invention is novel and non‑obvious, despite its accidental nature.
Adequate Disclosure – Related terms #
enablement, best mode. The requirement that a patent specification describe the invention sufficiently for a skilled person to practice it without undue experimentation. Example: a chemical formula must include synthesis steps. Challenge: balancing detail with trade‑secret protection.
Amendment – Related terms #
office action, continuation. A modification to the claims, description, or drawings filed after the initial application, usually in response to examiner objections. Example: narrowing a claim to overcome an obviousness rejection. Practical tip: amendments must not introduce new matter beyond the original disclosure.
Application Publication – Related terms #
18‑month rule, provisional application. The public release of a patent application’s content, typically 18 months after the earliest filing date, allowing third parties to assess the scope of protection sought. Example: a biotech company monitors publications to identify potential freedom‑to‑operate issues. Challenge: strategic timing of publication to manage competitive exposure.
Artificial Intelligence (AI) Patentability – Related terms #
inventorship, algorithm. The evolving legal question of whether inventions generated by AI systems meet statutory requirements for patentability. Example: an AI‑designed antenna structure. Practical application: jurisdictions differ on attributing inventorship to AI, affecting filing strategies.
Assignment – Related terms #
ownership, licensing. The transfer of patent rights from one entity to another, usually via a written agreement. Example: a university assigning patents to a spin‑out company. Challenge: ensuring proper recording with the patent office to perfect the transfer.
Best Mode – Related terms #
enablement, disclosure. The requirement that the specification disclose the preferred way of carrying out the invention, as known to the inventor at filing. Example: describing the optimal catalyst composition. Note: in some jurisdictions the best‑mode requirement is not a ground for invalidity if omitted.
Biotechnological Patent – Related terms #
gene sequence, plant variety. A patent covering inventions in the life sciences, such as isolated DNA, genetically modified organisms, or diagnostic methods. Example: a patent on a CRISPR‑Cas9 editing tool. Challenge: ethical considerations and jurisdictional exclusions (e.g., human genes).
Business Method Patent – Related terms #
software patent, abstract idea. A patent that claims a method of conducting business, often implemented via computer. Example: an online payment processing system. Practical application: careful claim drafting to avoid abstract‑idea rejections under U.S. law.
Claim – Related terms #
independent claim, dependent claim. The numbered statements that define the legal scope of protection. Example: “1. A widget comprising…”. Challenge: crafting claims that are broad enough for value yet narrow enough to survive examination.
Claim Construction – Related terms #
interpretation, infringement analysis. The judicial process of determining the meaning and scope of patent claims. Example: a court applying the “Phillips” standard in the United States. Practical tip: well‑drafted claim language and supporting specification can steer construction.
Claim Drafting – Related terms #
patent attorney, claim hierarchy. The art of writing claims that capture the invention’s essence while meeting statutory requirements. Example: using “comprising” to create open‑ended claims. Challenge: avoiding indefinite language that could render claims invalid.
Clearance Search – Related terms #
freedom‑to‑operate (FTO), prior art search. A systematic investigation to determine whether a product or process infringes existing patents. Example: a pharmaceutical company conducting an FTO before launching a new drug. Practical application: mitigating infringement risk and informing licensing negotiations.
Co‑ownership – Related terms #
joint inventorship, licensing. Situation where two or more parties hold title to the same patent. Example: two universities sharing rights to a jointly developed technology. Challenge: coordinating enforcement and royalty arrangements.
Continuity Application – Related terms #
continuation, continuation‑in‑part (CIP). A family of applications that stem from an original filing, preserving priority while allowing claim amendments. Example: filing a CIP to capture new embodiments discovered after the parent filing. Practical tip: maintain proper chain of priority to avoid double‑patenting.
Contributory Infringement – Related terms #
induced infringement, direct infringement. Liability for supplying components that, when combined with a patented invention, constitute infringement. Example: a supplier of a specialized microchip used in a patented device. Challenge: proving knowledge and intent.
Defensive Publication – Related terms #
prior art, patent thicket. Publishing an invention to create prior art that prevents others from obtaining a patent on the same subject. Example: a research institute releasing a white paper on a novel sensor. Practical application: protecting freedom‑to‑operate without seeking a patent.
Doctrine of Equivalents – Related terms #
literal infringement, infringement analysis. A legal principle allowing a court to find infringement even when the accused product does not fall within the literal wording of the claims, provided it performs substantially the same function in the same way to achieve the same result. Example: a component that substitutes a patented element with a chemically equivalent material. Challenge: assessing the scope of equivalence can be unpredictable.
Doctrine of Territoriality – Related terms #
national filing, international patent. The principle that patent rights are enforceable only within the jurisdiction that granted them. Example: a U.S. patent provides no protection in Europe unless a European patent is obtained. Practical tip: develop a filing strategy aligned with market priorities.
Drawing Requirement – Related terms #
specification, claim support. The rule that patent applications must include drawings when they are necessary to understand the invention. Example: a mechanical device with detailed exploded views. Challenge: ensuring drawings meet formal standards to avoid office actions.
Durability Standard – Related terms #
patent term, maintenance fees. The period during which a granted patent remains in force, typically 20 years from the filing date, subject to payment of periodic maintenance fees. Example: a pharmaceutical patent expiring after 20 years, after which generics may enter the market. Practical consideration: budgeting for fee payments to keep key patents alive.
Enabling Disclosure – Related terms #
adequate disclosure, best mode. The portion of the specification that teaches a person skilled in the art how to make and use the invention without undue experimentation. Example: providing a step‑by‑step protocol for synthesizing a compound. Challenge: over‑disclosure may erode competitive advantage.
Examination Report – Related terms #
office action, examiner’s objection. The document issued by a patent examiner outlining objections and rejections based on prior art or statutory requirements. Example: a “non‑final” office action citing lack of inventive step. Practical tip: respond promptly and substantively to keep prosecution on track.
Exhaustion Doctrine – Related terms #
first sale, post‑sale restrictions. The principle that once a patented item is sold, the patentee’s control over that particular item is exhausted, limiting the ability to enforce patent rights against downstream uses. Example: a software license that attempts to restrict resale may be pre‑empted by exhaustion. Challenge: navigating differing exhaustion regimes across jurisdictions.
Extended Patent Term – Related terms #
patent term adjustment, regulatory review. Additional time added to the standard patent term to compensate for delays, often in pharmaceuticals where regulatory approval consumes a significant portion of the term. Example: a drug patent receiving a five‑year extension under the Hatch‑Waxman Act. Practical application: timing of market entry to maximize exclusivity.
Experimental Use Defense – Related terms #
non‑commercial use, infringement. A limited exception allowing the use of a patented invention for experimental purposes without liability. Example: a university researcher testing a patented chemical for academic study. Challenge: the scope of the defense varies widely between jurisdictions.
Family of Patents – Related terms #
continuity, priority. A group of related patent applications sharing a common priority date, often spanning multiple jurisdictions. Example: a US utility patent, a European patent, and PCT applications filed on the same invention. Practical tip: manage filing deadlines and translations to keep the family intact.
Filing Date – Related terms #
priority date, grace period. The date on which a patent application is officially received by the patent office, establishing the point from which novelty and prior art are measured. Example: an application filed on 1 January 2024 sets the filing date for all subsequent examination. Challenge: missing the filing deadline can forfeit rights.
First‑to‑File – Related terms #
priority, race to patent. The prevailing international rule that the right to a patent belongs to the first person to file an application, not necessarily the first to invent. Example: two inventors develop the same technology; the one who files first obtains the patent. Practical implication: maintain rapid internal filing processes.
First‑to‑Invent – Related terms #
interference, priority. The former U.S. system (pre‑2013) that awarded patents to the inventor who could prove earlier conception and diligence. Example: an interference proceeding to determine who invented first. Note: largely superseded by first‑to‑file, but still relevant for legacy patents.
Freedom‑to‑Operate (FTO) Opinion – Related terms #
clearance search, infringement risk. A legal analysis concluding whether a product or process can be commercialized without infringing existing patents. Example: a biotech firm obtaining an FTO opinion before launching a new assay. Practical application: informs licensing negotiations and risk mitigation.
General Anti‑Avoidance Rule (GAAR) – Related terms #
tax law, patent tax planning. A principle in some jurisdictions that prevents artificial arrangements designed solely to obtain tax benefits, potentially affecting patent monetization structures. Example: a royalty‑splitting scheme deemed abusive under GAAR. Challenge: structuring IP transactions to comply with anti‑avoidance provisions.
Grant – Related terms #
issuance, patent certificate. The act of a patent office conferring exclusive rights on an applicant after successful examination. Example: a patent is granted on 15 March 2025. Practical tip: monitor grant notices to schedule maintenance fee payments.
Infringement – Related terms #
literal infringement, contributory infringement. The unauthorized making, using, selling, offering for sale, or importing of a patented invention. Example: a competitor manufacturing a device that incorporates each element of claim 1. Challenge: proving all claim elements are present or equivalent.
Inventive Step – Related terms #
non‑obviousness, obviousness standard. The requirement that a claimed invention not be obvious to a person skilled in the art based on prior art. Example: a new polymer composition that achieves a performance improvement not suggested by existing literature. Practical tip: emphasize unexpected results in the specification.
Inventor – Related terms #
joint inventor, assignor. The natural person who conceived the invention. Example: a chemist who discovered a novel catalyst. Challenge: ensuring accurate inventor listings to avoid invalidity for incorrect inventorship.
International Search Report (ISR) – Related terms #
PCT, prior art. A document produced by an International Searching Authority during the PCT process, summarizing relevant prior art. Example: an ISR cites 12 documents that may affect patentability. Practical use: helps applicants decide whether to enter national phases.
International Preliminary Examination Report (IPER) – Related terms #
PCT, Chapter II. A report generated after a request for international preliminary examination, offering an opinion on patentability. Example: an IPER concludes that claims lack inventive step, prompting amendment before national phase entry. Challenge: interpreting the examiner’s suggestions for each jurisdiction.
Joint Inventorship – Related terms #
inventor, co‑ownership. When two or more individuals contribute to the conception of a single invention. Example: a team of engineers collaborating on a new battery design. Practical tip: document contributions to avoid disputes over ownership.
Judicial Review – Related terms #
appeal, patent board. The process by which courts examine decisions of patent offices or tribunals for legal errors. Example: an appeal to the Federal Circuit challenging a patent’s invalidity. Challenge: limited grounds for overturning administrative findings.
Maintenance Fees – Related terms #
patent term, annuity. Periodic payments required to keep a granted patent in force. Example: a U.S. patent requires fees at 3.5, 7.5, and 11.5 years. Practical tip: set reminders to avoid inadvertent lapse.
Patent Assertion Entity (PAE) – Related terms #
non‑practicing entity, litigation. A company that acquires patents primarily to enforce them through licensing or litigation. Example: a PAE sues a smartphone manufacturer for alleged infringement. Challenge: navigating the public policy debate surrounding PAEs.
Patent Cooperation Treaty (PCT) – Related terms #
international filing, national phase. A treaty facilitating a unified filing procedure for seeking protection in multiple countries. Example: filing a PCT application gives 30 months to enter national phases. Practical benefit: defers cost while preserving priority.
Patent Eligibility – Related terms #
subject‑matter, statutory categories. The determination of whether an invention falls within the categories of patent‑able subject matter (e.g., process, machine, composition of matter). Example: a software algorithm may be ineligible under certain jurisdictions. Challenge: navigating evolving jurisprudence.
Patent Family – Related terms #
continuity, priority. See “Family of Patents”.
Patent Litigation – Related terms #
infringement, invalidity defense. Legal proceedings to enforce or defend patent rights. Example: a court case over a disputed pharmaceutical patent. Practical tip: assess the cost‑benefit of litigation versus settlement.
Patent Pending – Related terms #
provisional application, publication. The status of an invention after filing but before grant. Example: a product marketed with “patent pending” to signal pending protection. Challenge: cannot enforce rights until the patent issues.
Patent Portfolio – Related terms #
strategic management, licensing. A collection of patents owned by an entity, often used to create a competitive moat or generate revenue. Example: a tech company maintains a portfolio of over 500 patents. Practical application: regular audits to prune low‑value assets.
Patent Prosecution – Related terms #
examination, amendment. The process of interacting with a patent office to obtain a grant, including filing, responding to office actions, and possibly appealing decisions. Example: a series of amendments leading to allowance. Challenge: managing timelines across multiple jurisdictions.
Patentability Search – Related terms #
novelty search, prior art. A search conducted to assess whether an invention meets the criteria of novelty and inventive step before filing. Example: a startup hires a search firm to evaluate a new sensor technology. Practical tip: use search results to refine claims.
Patent Term Adjustment (PTA) – Related terms #
delay compensation, USPTO. Additional time added to a U.S. patent’s term to compensate for USPTO‑induced delays. Example: a PTA of 8 months extends the patent’s expiration date. Challenge: accurately calculating PTA to inform commercialization plans.
Patent Thicket – Related terms #
PAE, licensing. A dense web of overlapping patents that can impede entry into a market. Example: a smartphone manufacturer navigates a thicket of patents covering wireless standards. Practical strategy: cross‑licensing or defensive patent aggregation.
Patent Troll – Related terms #
PAE, litigation. A colloquial term for entities that acquire patents primarily to enforce them through litigation without producing the patented technology. Example: a non‑practicing entity filing lawsuits against multiple small firms. Challenge: policy reforms aimed at curbing abusive practices.
Per Se Infringement – Related terms #
literal infringement, claim scope. Infringement that occurs when a product or process contains each element of a claim exactly as written, without need for equivalence analysis. Example: a competitor’s device includes every step of claim 2. Practical tip: claim drafting can influence the ease of proving per se infringement.
Prior Art – Related terms #
novelty, obviousness. Any evidence that the invention was known before the filing date, including publications, patents, public use, or sales. Example: a conference paper describing a similar method. Challenge: exhaustive searching to uncover hidden prior art.
Provisional Application – Related terms #
priority, 12‑month rule. A low‑cost filing in the United States that secures a filing date without a formal claim set, giving the applicant 12 months to file a regular utility application. Example: a startup files a provisional on a novel AI model. Practical tip: include enough detail to support later claims.
Public Disclosure – Related terms #
grace period, prior art. Any communication of the invention to the public, such as publications, presentations, or sales, which may affect patentability. Example: an inventor presenting a prototype at a trade show. Challenge: timing disclosures relative to filing dates.
Qualified Patent Claim – Related terms #
means‑plus‑function, structural claim. A claim written in a manner that meets statutory requirements for clarity and support, often using specific language to avoid indefiniteness. Example: using “a polymer comprising” rather than “a polymer selected from”. Practical tip: align claim language with the description to avoid invalidity.
Reexamination – Related terms #
post‑grant review, reissue. A proceeding to reevaluate the validity of an issued patent, typically initiated by a third party or the patent holder. Example: a challenger requests reexamination based on newly discovered prior art. Challenge: potential narrowing or cancellation of claims.
Reissue Patent – Related terms #
correction, error. A patent granted to correct errors in the original patent, such as overly broad claims or inadvertent omissions. Example: a reissue to narrow claim scope after a court finding of overbreadth. Practical use: fixing mistakes without losing priority.
Renewal Fee – Related terms #
maintenance fee, annuity. Synonymous with maintenance fees; periodic payments required to keep a patent in force. Example: a European patent requires renewal fees annually. Challenge: monitoring multiple deadlines across jurisdictions.
Research Exemption – Related terms #
experimental use, non‑commercial. See “Experimental Use Defense”.
Right of Priority – Related terms #
Paris Convention, filing date. The right to claim the filing date of an earlier application in a foreign jurisdiction, provided the later filing occurs within a set period (usually 12 months). Example: a U.S. filing claims priority to a European application. Practical tip: keep accurate records of the earliest filing.
Secrecy Order – Related terms #
national security, classified invention. An order issued by a government agency to keep a patent application confidential for security reasons. Example: a defense contractor’s invention placed under a secrecy order. Challenge: balancing protection of national interests with the inventor’s rights.
Software Patent – Related terms #
business method patent, algorithm. A patent that claims a computer‑implemented invention, often involving specific technical effects. Example: a patent on a data compression technique. Practical tip: draft claims emphasizing technical contribution to survive subject‑matter rejections.
Statutory Subject Matter – Related terms #
patent eligibility, categories. The categories of inventions that statutes permit to be patented (process, machine, manufacture, composition of matter). Example: abstract ideas are excluded unless tied to a practical application. Challenge: interpreting statutes in light of case law.
Strategic Patent Filing – Related terms #
portfolio management, filing sequence. Planning the timing, jurisdiction, and scope of patent applications to maximize business objectives. Example: filing early in key markets, then expanding via PCT. Practical tip: align filing strategy with product development roadmaps.
Technical Effect – Related terms #
inventive step, software patent. The tangible result produced by a computer‑implemented invention, often required to demonstrate patent eligibility. Example: reducing latency in network communications. Challenge: articulating the effect in claim language.
Term Extension – Related terms #
PTA, regulatory review. See “Extended Patent Term”.
Trademark‑Patent Interaction – Related terms #
brand protection, infringement. The relationship between trademark rights and patent rights, especially where a patented product is also a brand identifier. Example: a patented wine bottle design also serves as a trademark. Practical consideration: coordinate IP strategies to avoid conflicts.
Trade Secret – Related terms #
confidentiality, disclosure. Information that derives economic value from not being publicly known and is subject to reasonable secrecy measures. Example: a manufacturing process kept secret instead of patented. Challenge: risk of independent discovery and loss of protection if disclosed.
Utility Model – Related terms #
short‑term protection, incremental invention. A form of IP protection similar to a patent but with a shorter term and lower inventive‑step threshold, available in many jurisdictions. Example: a mechanical device protected by a utility model in Germany. Practical tip: use utility models for fast‑track protection of incremental improvements.
Validity – Related terms #
invalidity, enforcement. The legal standing of a patent; a patent is valid if it meets all statutory requirements and has not been invalidated. Example: a court upholding the validity of a biotech patent. Challenge: defending validity against prior‑art challenges.
Waiver – Related terms #
evidence, estoppel. The intentional relinquishment of a known right, often relevant in patent proceedings when parties fail to raise a defense timely. Example: a patentee waiving the right to challenge prior art by not objecting in the initial response. Practical tip: preserve all arguments early to avoid waiver.
World Intellectual Property Organization (WIPO) – Related terms #
PCT, international IP. The United Nations agency that administers international IP treaties, including the PCT. Example: filing a PCT application through WIPO’s online portal. Practical benefit: centralized filing and search services.
Written Opinion – Related terms #
examination report, examiner’s view. A document issued by a patent examiner summarizing objections and providing guidance for amendment. Example: a written opinion indicating lack of inventive step. Practical tip: address each point methodically to increase likelihood of allowance.