Patent Prosecution
Expert-defined terms from the Specialist Certification in Intellectual Property Law and Biotechnology course at London School of Business and Administration. Free to read, free to share, paired with a globally recognised certification pathway.
Patent Prosecution #
The process of obtaining a patent by preparing and filing a patent application with the patent office, and responding to office actions issued by the patent office. Related terms include patent application, office action, and patent examination.
Patent Application #
A set of documents, including a specification, claims, and drawings, filed with the patent office to secure legal rights for an invention. Related terms include provisional application, non-provisional application, and continuation application.
Specification #
A written description of the invention in a patent application, including the background, summary, detailed description, and claims. The specification must provide sufficient detail to enable a person skilled in the art to make and use the invention.
Claims #
Legal statements in a patent application that define the scope of protection sought for the invention. The claims must be clear, concise, and supported by the specification.
Drawings #
Illustrations in a patent application that show the invention in detail, including views, cross-sections, and flowcharts. Drawings must meet the formal requirements of the patent office.
Provisional Application #
A type of patent application that provides a filing date and allows the applicant to claim "patent pending" status for the invention. A provisional application must include a specification and may include drawings, but does not include claims.
Non #
provisional Application: A type of patent application that includes a specification, claims, and drawings, and is examined by the patent office. A non-provisional application can claim priority to a provisional application.
Continuation Application #
A type of patent application that allows the applicant to continue prosecution of a previously filed application, either to pursue additional claims or to address office actions.
Office Action #
A communication from the patent office that sets forth the examiner's evaluation of the patent application, including any rejections or objections.
Patent Examination #
The process by which a patent examiner reviews a patent application and determines whether the invention meets the patentability requirements, including novelty, non-obviousness, and enablement.
Novelty #
A requirement for patentability that the invention must be new, i.e., not previously disclosed or patented.
Non #
obviousness: A requirement for patentability that the invention must not be obvious to a person having ordinary skill in the art.
Enablement #
A requirement for patentability that the specification must enable a person having ordinary skill in the art to make and use the invention without undue experimentation.
Infringement #
The unauthorized making, using, selling, or offering for sale of a patented invention.
Litigation #
Legal proceedings in court to enforce patent rights or defend against allegations of infringement.
Patent Cooperation Treaty (PCT) #
An international treaty that allows an applicant to file a single patent application in multiple countries.
International Searching Authority (ISA) #
An organization designated by the PCT to perform a search for prior art and provide a written opinion on the patentability of the invention.
International Preliminary Examining Authority (IPEA) #
An organization designated by the PCT to perform a preliminary examination and provide a written opinion on the patentability of the invention.
National Stage #
The phase of the PCT process in which the applicant enters the national phase in individual countries.
Request for Continued Examination (RCE) #
A request to the patent office to continue examination of a previously filed application.
Appeal #
A legal proceeding in which the applicant challenges a final rejection of a patent application.
Inter Partes Review (IPR) #
A proceeding in which a third party challenges the validity of an issued patent.
Post #
Grant Review (PGR): A proceeding in which a third party challenges the validity of an issued patent on any ground.
Ex Parte Reexamination #
A proceeding in which the patent office reexamines an issued patent based on newly discovered prior art.
Continuation #
in-Part (CIP) Application: A type of patent application that adds new matter to a previously filed application.
Divisional Application #
A type of patent application that splits off a portion of a previously filed application into a separate application.
Continuation #
in-Force (CIF) Application: A type of patent application that continues prosecution of a previously filed application after the patent has expired.
Double Patenting #
A situation in which two patents claim the same invention, which is generally not allowed.
Terminal Disclaimer #
A statement made by the applicant to overcome a double patenting rejection, in which the applicant agrees to limit the term of the later-filed patent to the term of the earlier-filed patent.
Restriction Requirement #
A requirement by the patent office that the applicant elect one of several independent and distinct inventions in a single application.
Claim Construction #
The process of interpreting the meaning and scope of the claims in a patent.
Markman Hearing #
A hearing in which the judge determines the construction of the claims in a patent case.
Infringement Contentions #
A document filed by the plaintiff in a patent infringement case that identifies the accused products or processes and the basis for the infringement allegations.
Invalidity Contentions #
A document filed by the defendant in a patent infringement case that identifies prior art and the basis for challenging the validity of the patent.
Claim Chart #
A document that maps the elements of a patent claim to the corresponding elements of an accused product or process.
Willful Infringement #
The intentional and deliberate violation of a patent, which may result in enhanced damages.
Indirect Infringement #
Infringement that occurs when a party induces or contributes to the infringement of a patent by another party.
Doctrine of Equivalents #
A legal doctrine that allows a patent to cover equivalent structures, methods, or compositions that do not literally infringe the claims.
Experimental Use Exception #
An exception to patent infringement for activities that are solely for experimental purposes.
First #
to-File System: A system in which the first applicant to file a patent application for a particular invention is entitled to the patent.
First #
to-Invent System: A system in which the first inventor to conceive and reduce to practice an invention is entitled to the patent.
Prior Use Rights #
A defense to patent infringement for activities that were initiated before the filing date of the patent application.
Statutory Bar #
A time limit for filing a patent application, after which the invention is no longer patentable.
Patent Term Adjustment (PTA) #
An adjustment to the term of a patent to compensate for delays in the patent examination process.
Patent Term Extension (PTE) #
An extension of the term of a patent to compensate for delays in the regulatory approval process for certain types of inventions.
Best Mode Requirement #
A requirement that the applicant disclose the best mode for carrying out the invention in the specification.
Written Description Requirement #
A requirement that the specification describe the invention in sufficient detail to enable a person having ordinary skill in the art to make and use the invention.
Enablement Requirement #
A requirement that the specification enable a person having ordinary skill in the art to make and use the invention without undue experimentation.
Definiteness Requirement #
A requirement that the claims be clear and definite, and not be overly broad or vague.
Prosecution History Estoppel #
A legal doctrine that limits the scope of claims in a patent based on statements made during the prosecution of the application.
File Wrapper Estoppel #
A legal doctrine that limits the scope of claims in a patent based on the prosecution history of the application.
Prosecution Disclaimer #
A statement made by the applicant during prosecution
Patent Prosecution #
The interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Patent prosecution includes preparing and filing applications, responding to office actions, appealing denied applications, and maintaining the patent after it has been granted.
Applicant #
The individual or entity that files a patent application with a patent office.
Patent Examiner #
A patent office employee who reviews patent applications to determine if they meet the patentability requirements.
Office Action #
A written communication from a patent office to a patent applicant that sets forth the office's decision regarding the patent application.
Response to Office Action #
The applicant's submission in reply to an office action, typically including arguments and/or amendments to the claims.
Appeal #
A request for review of a patent office's decision by a higher authority within the patent office.
Inter Partes Review (IPR) #
A trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
Post #
Grant Review (PGR): A trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent. A petition for PGR may be filed only within nine months after the grant of the patent or the issuance of a reissue patent.
Continuation Application #
A type of application that allows the applicant to pursue additional claims to an invention that were not included in the original application.
Divisional Application #
A type of application that is filed as a result of a restriction requirement in another application, where the applicant is required to elect only one of several inventions for patenting in the original application.
Continuation #
in-Part (CIP) Application: A type of application that contains matter that was not disclosed in the original application, but which is based on the original application.
Claim #
A formal statement that defines the scope of an invention, and which the patent office uses to determine whether the invention is novel and non-obvious.
Infringement #
The unauthorized making, using, selling, or offering to sell a patented invention during the term of the patent.
Invalidity #
A defense to infringement, which asserts that the patent is not valid because it does not meet the patentability requirements.
Provisional Application #
A type of application that allows an applicant to establish an early effective filing date for an invention and defer filing of a regular application for up to 12 months.
Non #
Provisional Application: A type of application that includes at least one claim and is examined by the patent office.
Patent Cooperation Treaty (PCT) #
An international treaty with more than 150 contracting states that allows an applicant to file a single international patent application and seek protection for an invention in multiple countries.
International Searching Authority (ISA) #
An authority designated by the World Intellectual Property Organization to perform an international search on a PCT application.
International Preliminary Examining Authority (IPEA) #
An authority designated by the World Intellectual Property Organization to perform an international preliminary examination on a PCT application.
Demand #
A request for international preliminary examination made by the applicant or by another designated office.
Written Opinion #
A document issued by the ISA or IPEA that sets forth the authority's opinion on the patentability of the invention.
International Search Report (ISR) #
A document issued by the ISA that identifies the prior art located during the international search.
International Preliminary Examination Report (IPER) #
A document issued by the IPEA that sets forth the authority's opinion on the patentability of the invention and the reasons for any objections or rejections.
National Stage #
The phase of a PCT application in which the applicant enters the national phase in one or more designated states.
Request for Continued Examination (RCE) #
A request filed by an applicant to reopen prosecution in a non-provisional application after a final office action.
After Final Consideration Pilot (AFCP) Program #
A USPTO program that allows applicants to submit additional arguments and amendments after a final rejection, and have the application advanced out of turn for examination.
Track I Prioritized Examination #
A USPTO program that allows applicants to request expedited examination of their application for an additional fee.
Supplemental Examination #
A procedure that allows patent owners to request that the USPTO consider, reconsider, or correct information believed to be relevant to the patent.
Ex Parte Quayle #
A USPTO procedure that allows an applicant to request a hearing before a panel of the Patent Trial and Appeal Board to consider an appeal of a final rejection.
Interference #
A proceeding conducted at the Patent Trial and Appeal Board to determine priority of invention between two or more applications or patents.
Derivation Proceeding #
A trial proceeding conducted at the Patent Trial and Appeal Board to determine whether an inventor named in an earlier application derived the claimed invention from an inventor named in a later application.
Double Patenting #
The issuance of two patents for the same invention, which is generally not allowed.
Terminal Disclaimer #
A disclaimer made by a patentee to avoid double patenting, in which the term of the second patent is limited to the remaining term of the first patent.
Bibliographic Data #
Information about a patent or application, such as the title, inventor, assignee, and filing date.
Patent Family #
A group of patents and/or applications that share a common priority claim.
Prosecution History #
The written record of the examination of a patent application, including office actions, responses, and appeals.
Restriction Requirement #
A requirement made by a patent examiner that an applicant elect only one of several inventions for examination in a single application.
Non #
Final Rejection: A rejection of some or all of the claims in an application that does not terminate prosecution.
Final Rejection #
A rejection of some or all of the claims in an application that does terminate prosecution, unless the applicant files an appeal or requests continued examination.
Allowance #
A determination by a patent examiner that an application meets the patentability requirements and is entitled to a patent.
Notice of Allowance #
A written communication from a patent office indicating that an application has been allowed and will issue as a patent.
Issue Fee #
A fee paid to a patent office to issue a patent.
Maintenance Fee #
A fee paid to a patent office to maintain a patent in force.
Reexamination #
A procedure that allows a third party or the patent owner to request that the USPTO consider, reconsider, or correct information believed to be relevant to the patent.
Supplemental Examination #
A procedure that allows patent owners to request that the USPTO consider, reconsider, or correct information believed to be relevant to the patent.
Inter Partes Reexamination (IPR) #
A procedure that allows a third party to challenge the validity of one or more claims in a patent through a trial proceeding conducted at the Patent Trial and Appeal Board.
Post #
Grant Review (PGR): A procedure that allows a third party to challenge the validity of one or more claims in a patent through a trial proceeding conducted at the Patent Trial and Appeal Board.
Cover Sheet #
A document that accompanies a patent application, petition, or other submission and includes information such as the title, inventor, and application number.
Information Disclosure Statement (IDS) #
A document filed by an
Patent Prosecution #
The interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Patent prosecution includes preparing and filing applications, responding to office actions, appealing denied applications, and maintaining the patent after it has been granted.
Abandonment #
The termination of a patent application due to the failure of the applicant to reply to an office action or to take any other necessary action within the time allowed.
Advanced Depended Claim #
A claim that depends from a previous claim and adds additional limitations.
Applicant #
The individual, organization, or entity that files a patent application with a patent office.
Application Data Sheet (ADS) #
A document that provides the administrative data of a patent application, including the names of the inventors, the title of the invention, and the correspondence address.
Claim #
A statement that defines the scope of protection of a patent and describes the invention.
Continuation Application #
A new application that claims priority to an earlier application and contains new matter that goes beyond the scope of the earlier application.
Dependent Claim #
A claim that includes all the limitations of a previous claim and adds additional limitations.
Examination Support Document (ESD) #
A document that provides additional information and arguments in support of a patent application during examination.
Infringement #
The unauthorized making, using, selling, or offering to sell a patented invention during the term of the patent.
Interference #
A proceeding conducted by a patent office to determine which of two or more applications or patents contains the earliest effective filing date for the same invention.
Non #
Publication Request: A request made by an applicant to prevent the publication of a patent application.
Office Action #
A written communication from a patent office that sets forth the reasons for an action taken on a patent application, such as an allowance, rejection, or requirement for further information.
Patent Cooperation Treaty (PCT) #
An international treaty that allows an applicant to file a single patent application in multiple countries.
Patent Examiner #
A person who examines patent applications to determine if they meet the requirements for patentability.
Patent Family #
A group of patent applications that are related to the same invention, including parent, child, and sibling applications.
Patent Term Adjustment (PTA) #
An adjustment made to the term of a patent to compensate for delays in the examination process.
Request for Continued Examination (RCE) #
A request made by an applicant to continue the examination of a patent application after a final rejection.
Restriction Requirement #
A requirement made by a patent office that an applicant choose one of several alternative inventions described in a single application for examination.
Specification #
The written description of an invention in a patent application that includes the background, summary, detailed description, and claims.
Statutory Bar #
A provision in patent law that prevents an applicant from obtaining a patent if the invention was previously described in a printed publication, in public use, or on sale more than one year before the application was filed.
Terminal Disclaimer #
A statement made by an applicant that a patent will expire on the same date as another patent owned by the same entity.
Unity of Invention #
A requirement that a patent application can only contain one invention.
In addition to understanding these terms, it is also important to be familiar wi… #
For example, when drafting a patent application, it is important to carefully consider the language used in the claims to ensure that the scope of protection is as broad as possible. This can be challenging, as the claims must be specific enough to distinguish the invention from the prior art, but broad enough to cover potential future developments.
Similarly, when responding to an office action, it is important to carefully rev… #
This may involve conducting additional research to uncover new prior art or presenting the invention in a new light.
Finally, it is important to stay up #
to-date on the latest developments in patent law and biotechnology, as these fields are constantly evolving. This may involve attending conferences, participating in professional organizations, and regularly reviewing industry publications.
In conclusion, patent prosecution is a complex and challenging field that requir… #
By mastering these terms and staying up-to-date on the latest developments, you can lay the foundation for a successful career in patent prosecution.