Glossary of Patent Terms

Abstract of the Invention - That portion of a patent application that briefly indexes the disclosure of the invention.

Anticipation - Prior conception and reduction to practice of the same invention by another.

Assignment - A document that transfers all or a portion of an inventor's rights in an invention to another person or corporation.

Background of the Invention - That portion of a patent application that describes the state of the prior art as it existed at the time of invention.

Best Mode - The process or technique that the inventor considers to be the most effective way of producing and using the invention at the time the patent application is filed.

Claims - That portion of a patent application which spells out the boundaries of the invention much as a deed spells out the boundaries for land; entering the boundaries of land is trespass while entering the boundaries of patent claims is infringement.

Conception of Idea - The formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention and communication of the concept to a non-inventor.

Declaration - An affirmation by an inventor that he or she believes that he or she is the original, first and sole (or joint) inventor of the subject matter claims, has reviewed and understands the contents of the specification (and claims) and acknowledges the duty to disclose information which is material to the examination of the application; the written declaration must warn the declarant that willful false statements are punishable by fine or imprisonment or both.

Detailed Description of the Invention - That portion of the patent application wherein one of ordinary skill is taught to make and use the invention; this is usually where much of the enablement requirement is satisfied; every aspect of the invention in its broadest scope must be taught at least in a prophetic manner.

Enablement - The legal requirement that a patent application must contain sufficient information to allow to one of ordinary skill in the art to make and practice the invention.

Examiner - a patent officer responsible for determining the patentability of an invention submitted to the U.S. Patent and Trademark Office.

Examples - That portion of a patent application that provides details of reducing to practice aspects of the invention.

First to File - That patent system in most foreign countries where priority is based on filing date.

First to Invent - The patent system in the United States where priority is based on date of conception linked to reduction to practice.

Formal Papers - As assignment, a patent application, a power of attorney and an oath or declaration.

Infringement - The unauthorized act of making, using, selling, offering for sale or importing into the United States, without the patent owner's permission, a product that is covered by one or more claims of a valid patent.

Interference - A determination by the USPTO of priority of invention.

Invention - Conception of a new, useful, nonobvious idea followed by reduction to practice and communicated to a non-inventor.

Invention Disclosure Form (IDF)- A form submitted to the patent department by a researcher when he or she conceives of or thinks they have an invention; the form is witnessed and includes as many details of the invention (how to make and use, prior art, etc.) as possible.

Inventorship - One who makes an inventive contribution to conception or reduction to practice; does not include one who contributes ordinary skill in the art.

Manuscript Release -The form to be submitted when an employee seeks to make research information public in a publication, presentation, poster session symposium, news release, etc.; the form should contain details of the information to be released (manuscripts) as well as identification of any previous publications or patent applications to which it may pertain.

Novelty - The legal requirement that the elements for an invention not be anticipated in the prior art; an invention that has not been known or used by others in the U.S., or patented or described in a printed publication in this or a foreign country prior to the invention thereof by the applicant for a patent.

Nonobviousness - The legal requirement for a patent application that the prior art as a whole does not motivate or teach one of ordinary skill in the art the invention sought to be patented.

Nonprovisional Patent Application - A formal U.S. patent application that will be examined by the U.S. Patent and Trademark Office and has the potential to issue as a patent. Nonprovisional applications include continuation applications, continuation-in-part applications and divisional applications.

Notice of Allowance - An official notice sent to the Applicant by the U.S. Patent and Trademark Office (USPTO) indicating which claims meet the requirements for patentability and therefore have been "allowed" by the USPTO. When the Applicant pays a fee known as the Issue Fee, the USPTO issues a patent based upon the allowed claims.

Oath - An affirmation by an inventor that he or she believes that he or she is the original, first and sole (or joint) inventor of the subject matter claimed, has reviewed and understands the contents of the specification (and claims) and acknowledges the duty to disclose information which is material to the examination of the application.

Office Action - a letter from the U.S. Patent and Trademark Office providing an assessment of a patent application under review.

Ordinary Skill in the Art - The level of skill based upon the knowledge engineers or scientists in the field usually possess as evidenced by publications, books, prior patents and similar documents.

Patent - the exclusive right to exclude others from making, using or selling an invention for a specified period of years (usually less than 20) granted by the federal government to the inventor(s) if the device, composition, method or process is useful, novel and nonobvious.

Patent and Trademark Office - the Department of Commerce agency that examines patent and trademark applications, issues patents, registers trademarks, and furnishes patent and trademark services to the public.

Patent Application - An application filed by or on behalf of an inventor(s) for a patent. Technically, a patent application includes the patent document, the declaration (if filed as a nonprovisional application), the filing fee and transmittal forms. However, the patent document itself is often referred to as the patent application.

Patent Review Committee (PRC) - A team of representatives that prioritizes invention disclosure forms.

Patent Term - The length of time a patent has in its life; seventeen years form the date of issue for United States patent applications filed prior to June 8, 1995 and twenty years from the date of filing a patent application (not a provisional application) for United States patent applications filed on or after June 8, 1995 as well as all foreign patent applications

Power of Attorney - An authorization by the inventor to have the patent attorney or agent represent him/her in all matters before the USPTO.

Prosecution - the proceedings from the initial filing of a patent application in the U.S. Patent and Trademark Office to the issuance of the patent.

Prior Art - Publicly available printed information, or public use in U.S. that pertains to the novelty and nonobviousness of a claimed invention including U.S. and foreign patents, publications, etc.

Priority Date - The filing date of a previously filed corresponding foreign or U.S. patent application if the subsequent corresponding U.S. or foreign application to which it pertains respectively is filed within one year.

Provisional Application - An informal patent application that can be filed with the United States Patent Office to preserve a priority date for a later U.S. or foreign patent application without beginning the twenty year patent term so long as the provisional application is enabling and the later applications are filed within a year. A provisional application is not examined and therefore will never issue as a patent.

Reduction to Practice (Actual) - The date on which it can be proven that an invention was shown to be physically made and capable of producing the desired and intended result.

Reduction to Practice (Constructive) - The date of filing a patent application.

Sequence Listing - A format for submitting sequences in patent applications to the PTO including computer readable forms (CRF) capable of being compared to other sequences.

Summary of the Invention - That portion of a patent application giving a brief summary of the invention indicating its nature and substance.

Trade Secret - Any formula, pattern, device or compilation of information which is used in one's business and which gives him or her an opportunity to obtain an advantage over competitors who do not know or use it.

Utility (Usefulness) - The legal requirement that an invention must have an application or use; it cannot just be a new thing.

Utility Patent - A patent granted to an inventor of any new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereof.

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