Unit 5: Patent Law and Protection
Expert-defined terms from the Professional Certificate in Brand Protection and Intellectual Property course at London School of Business and Administration. Free to read, free to share, paired with a professional course.
Absolute Novelty refers to the requirement that an invention must be completely… #
This concept is closely related to the idea of prior art, which includes all existing knowledge and information that is relevant to the invention. The absolute novelty standard is used in many countries, including those in Europe, to determine whether an invention is eligible for a patent. For example, if an inventor creates a new product that is similar to an existing product, but with a few minor changes, the invention may not be considered absolutely novel and therefore may not be eligible for a patent.
Acceleration of Examination is a process that allows patent applicants to expedi… #
This can be useful for applicants who need to quickly obtain a patent in order to protect their invention from being copied or used by others. The acceleration of examination process typically requires the applicant to pay an additional fee and to meet certain requirements, such as responding promptly to any office actions issued by the patent office. For instance, an applicant may request acceleration of examination if they have already been issued a patent in another country and want to obtain a patent in the United States as quickly as possible.
Administrative Revocation is a process by which a patent can be revoked by a pat… #
This process is usually initiated by the patent office and can result in the patent being canceled or revoked. For example, if a patent holder fails to pay the required maintenance fees, the patent office may initiate administrative revocation proceedings, which can ultimately result in the patent being revoked.
Amendment refers to the process of making changes to a patent application or pat… #
This can include changes to the claims, description, or drawings of the invention. Amendments can be made during the prosecution of a patent application, or after a patent has been granted. For instance, an applicant may amend their patent application to clarify the scope of their invention or to respond to objections raised by the patent office.
Appeal refers to the process of challenging a decision made by a patent office #
This can include appealing a decision to reject a patent application or to revoke a patent. The appeal process typically involves submitting written arguments and evidence to a higher authority, such as a patent appeal board. For example, if an applicant's patent application is rejected by the patent office, they may appeal the decision to the patent appeal board, which will review the decision and make a determination.
Assignment refers to the transfer of ownership of a patent or patent application… #
This can include the transfer of ownership from an inventor to a company, or from one company to another. Assignments are typically recorded with the patent office and can have significant implications for the ownership and control of the patent. For instance, an inventor may assign their patent rights to a company in exchange for a lump sum payment or ongoing royalties.
Background of the Invention refers to the section of a patent application that p… #
This section typically includes a discussion of the prior art and the problems or limitations of existing solutions. The background of the invention is used to provide context for the invention and to help the patent office understand the significance and novelty of the invention. For example, an inventor may describe the existing solutions for a particular problem and explain how their invention improves upon those solutions.
Breach of Contract refers to a situation in which one party fails to fulfill the… #
This can include a contract related to a patent, such as a licensing agreement or a contract for the sale of a patented product. Breach of contract can result in significant consequences, including damages or termination of the contract. For instance, if a company fails to pay royalties to a patent holder as required by a licensing agreement, the patent holder may sue for breach of contract.
Cancellation refers to the process of canceling a patent or patent application #
This can be done voluntarily by the patent holder or applicant, or involuntarily by a patent office. Cancellation can be used to correct errors or to resolve disputes over the ownership or validity of a patent. For example, if a patent holder discovers that their patent is invalid due to prior art, they may request that the patent be canceled to avoid further litigation.
Certificate of Correction is a document issued by a patent office to correct err… #
This can include errors in the patent application or in the patent itself. A certificate of correction is typically used to correct minor errors, such as typographical errors or errors in the formatting of the patent application. For instance, if a patent holder discovers that their patent contains a typographical error, they may request a certificate of correction to correct the error.
Claim refers to a statement in a patent application that defines the scope of th… #
Claims are used to establish the boundaries of the patent and to determine what is covered by the patent. There are different types of claims, including independent claims and dependent claims. For example, an independent claim may define the overall scope of the invention, while a dependent claim may define a specific embodiment or variation of the invention.
Combination Patent refers to a patent that covers a combination of existing tech… #
This type of patent is often used to protect innovative solutions that combine existing technologies in a new and non-obvious way. For instance, a company may develop a new product that combines two existing technologies, such as a smartphone that includes a camera and a GPS device.
Compulsory License refers to a license that is required by law to be granted to… #
This can include a license to use a patented invention, such as a pharmaceutical patent. Compulsory licenses are typically used to address issues of public health or national security. For example, a government may require a patent holder to grant a compulsory license to a generic drug manufacturer in order to address a public health crisis.
Continuation Application refers to a patent application that is filed as a conti… #
This type of application is used to pursue additional claims or to further develop an existing invention. Continuation applications are typically used to file new claims or to respond to office actions issued by the patent office. For instance, an applicant may file a continuation application to pursue additional claims that were not included in the original patent application.
Contribution to the State of the Art refers to the requirement that an invention… #
This concept is closely related to the idea of novelty and non-obviousness, which are used to determine whether an invention is eligible for a patent. For example, an invention that is simply a minor variation of an existing solution may not be considered a contribution to the state of the art.
Co #
Pending Application refers to a patent application that is pending at the same time as another patent application. This can include applications that are related to the same invention or that are filed by the same applicant. Co-pending applications can be used to pursue multiple claims or to develop different aspects of an invention. For instance, an applicant may file multiple co-pending applications to pursue different embodiments of an invention.
Copyright refers to the exclusive right to reproduce, distribute, and display a… #
Copyright is a form of intellectual property that is used to protect original works of authorship. For example, an author may copyright their book to prevent others from reproducing or distributing it without permission.
Cross #
Licensing Agreement refers to an agreement between two or more parties to exchange licenses to use each other's patented technologies. This type of agreement is often used to resolve disputes over patent infringement or to facilitate collaboration between companies. For instance, two companies may enter into a cross-licensing agreement to allow each other to use their respective patented technologies.
Defensive Publication refers to the publication of information about an inventio… #
This can include publishing a description of the invention in a journal or on a website. Defensive publication is often used to prevent patent trolls from obtaining patents for inventions that are already known or obvious. For example, a company may publish a description of an invention on their website to prevent others from patenting the same invention.
Derivation Proceeding refers to a proceeding that is used to determine whether a… #
This type of proceeding is often used to resolve disputes over the ownership of a patent. For instance, if two inventors claim to have invented the same thing, a derivation proceeding may be used to determine who invented it first.
Design Patent refers to a patent that covers the ornamental design of a product #
This type of patent is often used to protect the visual appearance of a product, such as the shape or configuration of a device. For example, a company may obtain a design patent for the shape of a new smartphone.
Divisional Application refers to a patent application that is filed as a divisio… #
This type of application is used to pursue a subset of the claims that were included in the original application. Divisional applications are typically used to file new claims or to respond to office actions issued by the patent office. For instance, an applicant may file a divisional application to pursue a specific embodiment of an invention that was not included in the original patent application.
Doctrine of Equivalents refers to the principle that a patent claim can be infri… #
This doctrine is often used to determine whether a patent has been infringed by a third party. For example, if a company develops a new product that is equivalent to a patented invention, they may be liable for patent infringement under the doctrine of equivalents.
Double Patenting refers to the practice of obtaining multiple patents for the sa… #
This can include obtaining multiple patents for different aspects of the same invention, such as a patent for a device and a patent for a method of using the device. Double patenting is often used to provide additional protection for an invention, but it can also be used to patent troll or to evergreen a patent. For instance, a company may obtain multiple patents for different embodiments of an invention in order to prevent others from developing similar products.
Drawing refers to a visual representation of an invention, such as a diagram or… #
Drawings are often used to help illustrate the invention and to provide additional context for the patent application. For example, an inventor may include drawings of their invention in the patent application to help the patent office understand how it works.
Enablement refers to the requirement that a patent application must provide suff… #
This concept is closely related to the idea of description and non-obviousness, which are used to determine whether an invention is eligible for a patent. For instance, an inventor may include a detailed description of their invention in the patent application, including drawings and examples, to enable others to make and use the invention.
Equitable Estoppel refers to the principle that a party can be prevented from as… #
This doctrine is often used to prevent patent holders from asserting their patent rights in a way that is inconsistent with their previous actions or statements. For example, if a patent holder has previously stated that their patent does not cover a particular technology, they may be estopped from later asserting that their patent does cover that technology.
Ex Parte Reexamination refers to a proceeding that is used to reexamine a patent… #
This type of proceeding is often used to determine whether a patent is valid or whether it should be revoked. For instance, a third party may request ex parte reexamination of a patent if they believe that the patent is invalid or that it was obtained through fraud.
Examination refers to the process of reviewing a patent application to determine… #
This can include reviewing the application for novelty, non-obviousness, and enablement. Examination is typically conducted by a patent office and can result in the issuance of a patent or the rejection of the application. For example, an examiner may review a patent application to determine whether the invention is novel and non-obvious, and whether the application provides sufficient information to enable others to make and use the invention.
Exhaustion of Rights refers to the principle that a patent holder's rights are e… #
This doctrine is often used to prevent patent holders from asserting their patent rights in a way that is inconsistent with the principle of exhaustion. For instance, if a patent holder sells a product to a third party, they may not be able to assert their patent rights against that third party if they later resell the product.
Extension of Time refers to a request to extend the time period for responding t… #
This can include a request to extend the time period for filing a response to a rejection or for paying a fee. For example, an applicant may request an extension of time to respond to an office action if they need additional time to gather information or to prepare a response.
Filing Date refers to the date on which a patent application is filed #
This date is often used to determine the priority of a patent application and to establish the date of invention. For instance, an applicant may file a patent application on a particular date and later claim priority to that date.
Foreign Filing License refers to a license that is required to file a patent app… #
This type of license is often required by the government of the country in which the application is being filed. For example, an applicant may need to obtain a foreign filing license from the US government before filing a patent application in a foreign country.
Formalities Examination refers to the process of reviewing a patent application… #
This can include reviewing the application for compliance with regulations and for completeness. For instance, an examiner may review a patent application to ensure that it includes all of the required elements, such as a description of the invention and claims.
Gazette refers to a publication that is used to announce the grant of a patent o… #
The gazette is often used to provide notice to the public of the existence of a patent or patent application. For example, a patent office may publish a gazette that lists all of the patents that have been granted in a particular week.
Infringement refers to the act of making, using, or selling a product or process… #
This can include direct infringement, such as making or selling a product that is covered by a patent, or indirect infringement, such as inducing or contributing to the infringement of a patent. For instance, a company may be liable for patent infringement if they sell a product that is covered by a patent without obtaining a license from the patent holder.
Innovation refers to the process of creating new or improved products, services,… #
Innovation is often driven by the desire to solve a problem or to meet a particular need. For example, a company may develop a new product that is more efficient or effective than existing products.
Intellectual Property refers to the rights that are granted to creators and inve… #
This can include patents, trademarks, copyrights, and trade secrets. Intellectual property is often used to protect the financial investment that is made in the development of a product or service. For instance, a company may obtain a patent for a new product to prevent others from copying or using the product without permission.
Interference Proceeding refers to a proceeding that is used to determine which o… #
This type of proceeding is often used to resolve disputes over the ownership of a patent. For example, if two inventors claim to have invented the same thing, an interference proceeding may be used to determine who invented it first.
International Application refers to a patent application that is filed under the… #
This type of application is used to seek protection for an invention in multiple countries. For instance, an applicant may file an international application to seek protection for their invention in the United States, Europe, and Japan.
International Search Report refers to a report that is prepared by an internatio… #
This report is often used to help the applicant and the patent office to determine whether the invention is novel and non-obvious. For example, an international search report may identify prior art that is relevant to the invention and that may affect the patentability of the application.
Invalidity refers to the principle that a patent can be declared invalid if it d… #
This can include a lack of novelty, non-obviousness, or enablement. Invalidity can be raised as a defense to a claim of patent infringement. For instance, a defendant may argue that a patent is invalid due to a lack of novelty or non-obviousness.
Invention refers to a new or improved product, service, or process that is creat… #
Inventions can be protected by patents, trademarks, copyrights, or trade secrets. For example, an inventor may develop a new product that is more efficient or effective than existing products.
Inventor refers to the person or persons who create an invention #
Inventors can be individuals or companies, and they can be entitled to rights and benefits under patent law. For instance, an inventor may be entitled to a share of the profits from the sale of their invention.
Inventorship refers to the process of determining who is the inventor of a parti… #
This can include determining who conceived of the invention and who reduced it to practice. For example, if two people work together to develop an invention, they may both be considered inventors and may be entitled to share the rights and benefits of the invention.
Licensing refers to the process of granting permission to another party to use a… #
This can include granting a license to make, use, or sell a product or process that is covered by a patent. Licensing can be used to generate revenue from a patent or to facilitate the use of a patented technology. For instance, a patent holder may license their patent to a third party in exchange for royalties or other consideration.
Maintenance Fee refers to a fee that is paid to maintain a patent in force #
This fee is typically paid at regular intervals, such as annually or every few years. For example, a patent holder may be required to pay a maintenance fee every year to keep their patent in force.
Non #
Obviousness refers to the requirement that an invention must be significantly different from existing technology in order to be eligible for a patent. This concept is closely related to the idea of novelty and is used to determine whether an invention is eligible for a patent. For instance, an invention that is simply a minor variation of an existing solution may not be considered non-obvious and therefore may not be eligible for a patent.
Novelty refers to the requirement that an invention must be new and not obvious… #
This concept is closely related to the idea of non-obviousness and is used to determine whether an invention is eligible for a patent. For example, an invention that is identical to an existing solution may not be considered novel and therefore may not be eligible for a patent.
Office Action refers to a communication from a patent office to an applicant reg… #
This can include a rejection of the application or a request for additional information. For instance, an examiner may issue an office action to request additional information or to reject a patent application.
Patent refers to a grant of exclusive rights to an inventor for a new or improve… #
Patents are often used to protect the financial investment that is made in the development of a product or service. For example, a company may obtain a patent for a new product to prevent others from copying or using the product without permission.
Patent Application refers to a request to a patent office to grant a patent for… #
This can include a description of the invention, claims, and drawings. For instance, an inventor may file a patent application to seek protection for their invention.
Patent Cooperation Treaty (PCT) refers to an international treaty that provides… #
The PCT allows applicants to file a single international application that can be used to seek protection in multiple countries. For example, an applicant may file a PCT application to seek protection for their invention in the United States, Europe, and Japan.
Patent Infringement refers to the act of making, using, or selling a product or… #
This can include direct infringement, such as making or selling a product that is covered by a patent, or indirect infringement, such as inducing or contributing to the infringement of a patent. For instance, a company may be liable for patent infringement if they sell a product that is covered by a patent without obtaining a license from the patent holder.
Patent Office refers to the government agency that is responsible for granting p… #
The patent office is often responsible for examining patent applications and for determining whether an invention is eligible for a patent. For example, the US Patent and Trademark Office (USPTO) is responsible for granting patents and for administering the patent system in the United States.
Patent Pending refers to the status of a patent application that has been filed… #
This status is often indicated by the phrase "patent pending" or "patent applied for." For instance, a company may indicate that their product is "patent pending" to warn others that they have filed a patent application and that they may be entitled to exclusive rights if the patent is granted.
Patent Term refers to the length of time that a patent is in force #
This can include the term of the patent from the date of grant to the date of expiration. For example, a patent may have a term of 20 years from the date of filing.
Patent Troll refers to a party that asserts patent rights in a way that is consi… #
This can include asserting patent rights against a company or individual that is not infringing the patent, or asserting patent rights in a way that is intended to extract a settlement or license fee. For instance, a patent troll may send letters to companies demanding that they pay a license fee or face litigation.
Petition refers to a request to a patent office to take a particular action, suc… #
This can include a petition to withdraw an application or to suspend an application. For example, an applicant may file a petition to withdraw their patent application if they decide not to pursue the application.
Prior Art refers to the existing body of knowledge and information that is relev… #
This can include existing patents, publications, and other forms of prior art. Prior art is often used to determine whether an invention is novel and non-obvious. For instance, an examiner may review prior art to determine whether an invention is significantly different from existing technology.
Priority Date refers to the date on which a patent application is first filed #
This date is often used to determine the priority of a patent application and to establish the date of invention. For example, an applicant may file a patent application on a particular date and later claim priority to that date.
Prosecution refers to the process of pursuing a patent application through the p… #
This can include responding to office actions, filing amendments, and paying fees. For instance, an applicant may prosecute their patent application by responding to office actions and filing amendments to address any objections or issues raised by the examiner.
Provisional Application refers to a type of patent application that is used to e… #
This type of application is often used to provide a temporary protection for an invention while a more complete application is being prepared. For example, an inventor may file a provisional application to establish an early filing date for their invention and later file a non-provisional application to pursue a patent.
Reexamination refers to the process of reexamining a patent that has already bee… #
This can include reexamining the patent for novelty, non-obviousness, and enablement. Reexamination can be requested by a third party or by the patent holder. For instance, a third party may request reexamination of a patent if they believe that the patent is invalid or that it was obtained through fraud.
Reissue refers to the process of issuing a new patent to replace an existing pat… #
This can include issuing a new patent with revised claims or with changes to the description or drawings. For example, a patent holder may request a reissue of their patent to correct errors or to make changes to the claims.
Request for Continued Examination (RCE) refers to a request to continue the exam… #
This can include filing additional amendments or responses to office actions. For instance, an applicant may file an RCE to continue the examination of their patent application after a final rejection.
Revocation refers to the process of canceling a patent that has already been gra… #
This can include revoking a patent due to invalidity or due to a failure to pay maintenance fees. For example, a patent may be revoked if it is found to be invalid due to a lack of novelty or non-obviousness.
Search Report refers to a report that is prepared by a patent office to identify… #
This report is often used to help the applicant and the patent office to determine whether the invention is novel and non-obvious. For instance, a search report may identify prior art that is relevant to the invention and that may affect the patentability of the application.
Specification refers to the part of a patent application that describes the inve… #
This can include a description of the prior art and a description of the invention itself. For example, an inventor may include a detailed description of their invention in the specification, including drawings and examples.
Statutory Invention Registration (SIR) refers to a type of patent application th… #
This type of application is often used to provide a form of protection for an invention that is not eligible for a patent. For instance, an inventor may file an SIR application to register their invention and to provide notice to others that the invention is not eligible for a patent.
Substantive Examination refers to the process of examining a patent application… #
This can include examining the application for novelty, non-obviousness, and enablement. For example, an examiner may conduct a substantive examination of a patent application to determine whether the invention is significantly different from existing technology.
Supplemental Examination refers to the process of reexamining a patent that has… #
This type of examination is often used to determine whether a patent is valid and whether it should be revoked. For instance, a third party may request supplemental examination of a patent if they believe that the patent is invalid due to a lack of enablement or written description.
Term Extension refers to the process of extending the term of a patent beyond it… #
This can include extending the term of a patent due to regulatory delays or other factors. For example, a patent holder may be entitled to a term extension if their patent was delayed due to regulatory approvals or other factors.
Third Party Observation refers to the process of submitting comments or observat… #
This can include submitting prior art or other information that is relevant to the application. For instance, a third party may submit a third party observation to provide additional information or to raise objections to a patent application.
Trade Secret refers to a type of intellectual property that is used to protect c… #
This can include formulas, recipes, or other types of information that are not publicly known. For example, a company may use trade secrets to protect their recipe for a particular product.
Transfer refers to the process of transferring ownership of a patent or patent a… #
This can include assigning the patent to a new owner or transferring the patent to a subsidiary or affiliate. For instance, a company may transfer ownership of a patent to a new owner as part of a merger or acquisition.
Utility Model refers to a type of patent that is used to protect functional inve… #
This type of patent is often used to provide a form of protection for an invention that is not eligible for a full patent. For example, an inventor may file a utility model application to protect their invention and to provide notice to others that the invention is not eligible for a full patent.
Validity refers to the principle that a patent must be valid in order to be enfo… #
This can include a determination of whether the patent is novel, non-obvious, and enabled. Validity can be raised as a defense to a claim of patent infringement. For instance, a defendant may argue that a patent is invalid due to a lack of novelty or non-obviousness.
Waiver refers to the process of giving up a right or claim, such as a right to a… #
This can include waiving a right to a patent in exchange for a settlement or other consideration. For example, an inventor may waive their right to a patent in exchange for a lump sum payment or ongoing royalties.
Willful Infringement refers to the act of intentionally infringing a patent, suc… #
This can include a deliberate and intentional act of infringement, such as inducing or contributing to the infringement of a patent. For instance, a company may be liable for willful infringement if they intentionally sell a product that is covered by a patent without obtaining a license from the patent holder.
Written Description refers to the requirement that a patent application must pro… #
This can include a description of the prior art and a description of the invention itself. For example, an inventor may include a detailed description of their invention in the written description, including drawings and examples.