Common Patent Definitions: Everything You Will Come Across On Your Patent Journey

When working on your patent applications, either with a patent agent or on your own, you may come across terms that will be unfamiliar to you. We have assembled a list of the most common acronyms and terms that are used in the patent application process with easily understood definitions.

At M&B IP, we always want our clients to be informed during the patent application process while also being respectful of their time.

US Patent Law Common Terms:

Patent = A form of intellectual property which protects inventions that are new, useful, and non-obvious. Patents are assets that can be bought, sold, licensed, and more.

Patent Protection = The right to prevent others from making, using, and/or selling the patented invention.

Patent Infringement = Making, selling, or using a product or service that meets all of the requirements of one or more claims of an issued patent.

Patent Prosecution = The process of back-and-forth with a patent office in order to obtain a patent. Only a registered US Patent Agent or US Patent Attorney can represent patent applicants before the United States Patent and Trademark Office.

Patent Pending = A phrase that can be used in advertising when a US patent application has been filed for an invention.

Priority = A patent application may claim the benefit of an earlier filed patent application in order to use the filing date of the earlier filed patent application, subject to various limitations.

US Patent Agent = A person who is registered to practice before the United States Patent and Trademark Office. A US patent agent must pass the Patent Bar and have a technical background.

US Patent Attorney = A patent agent who is also a licensed attorney in at least one US state.

Inventor = A person who contributes to the conception of an invention of a patent application. Generally, who is an inventor depends on the claims of the patent application.

Pro Se Inventor = An inventor who represents themself.

Patent Application = Documents filed at a patent office by a person or company seeking patent protection for their invention. Typically includes a specification, drawings, and claims, among other documents.

United States Patent and Trademark Office (USPTO) = The government office which examines and grants patent applications in the United States. The “main” location is in Alexandria, Virginia, with satellite offices throughout the US.

Patent Examiner = A person who evaluates patent applications to determine if they comply with all requirements for patentability.

Supervisory Patent Examiner (SPE) = A manager of patent examiners at the USPTO. A SPE mentors and teaches patent examiners, allocates workloads, and can be contacted in the event that there is a conflict with the examiner.

Art Unit = A section of the USPTO including examiners who review patent applications related to a particular type of technology.

Technology Center (Tech Center, or TC) = A group of art units who collectively include examiners working on patent applications in a broader technology field. Managed by a TC Director.

International Patent Application = Also called a PCT (Patent Cooperation Treaty) application. A patent application which can later be converted into patent applications in various individual countries. Useful when the patent applicant is considering filing in other countries later.

Claim = The part of a patent application defining the scope of protection of the patent.

Specification = The part of a patent application including written descriptions of the invention. May include subsections such as brief descriptions of drawings and a detailed description.

Background = A portion of a patent application providing relevant background information for an invention such as the state of the art, existing solutions, or other challenges faced by people working in the art.

Drawings = A part of most patent applications illustrating the invention to help the reader understand the invention better.

Provisional Patent Application = A placeholder patent application that is not evaluated for patentability by the US Patent and Trademark Office. Must be converted to a full (non-provisional) patent application within 1 year of filing.

Non-Provisional Patent Application = A patent application which is evaluated for patentability by the US Patent and Trademark Office.

Continuation Application = a type of continuing patent application which claims the benefit of a previous application without adding new subject matter. A continuation typically has the same description as the previous application, but has new claims.

Continuation-in-part (CIP) Application = a type of continuing patent application which claims the benefit of a previous application and adds new subject matter.

Divisional Application = a type of continuing patent application which claims the benefit of a previous application whose claims were subject to a restriction requirement.

Patent Cooperation Treaty (PCT) Application = an international patent application filed under the Patent Cooperation Treaty (PCT). A timely filed PCT application gives a patent applicant more time to decide which countries and regions to file national patent applications in without losing priority date.

Conversion = Informally, a term often referring to filing a non-provisional patent application that claims the benefit of a provisional patent application, thereby “converting” the placeholder application into a full patent application. There is also a rarely used formal conversion process defined by 37 CFR 1.53(c)(2).

Utility Patent Application = A type of non-provisional patent application which seeks to protect functional aspects of an invention. In general, a utility patent protects how an invention is used and/or works.

Design Patent Application = A type of patent application which seeks to protect ornamental features of an article of manufacture. In general, a design patent protects how an invention looks.

Plant Patent Application = A type of patent application which seeks to protect a new and distinct species of plant. The plant must have been asexually reproduced in order to obtain a plant patent.

Anticipation = Defined in 35 USC 102. An invention must be new (novel) as compared to existing technical references in order to be patentable. A patent claim is said to be anticipated by a prior art reference where the reference teaches each and every feature of the patent claim, arranged as required by the patent claim.

Obviousness = Defined in 35 USC 103. An invention must not be obvious as compared to existing technical references in order to be patentable. A patent claim is said to be obvious over two or more prior art references when those references collectively teach all of the features of the patent claim and a person having ordinary skill in the art would have been motivated to combine the references.

Person Having Ordinary Skill in the Art (PHOSITA) = A person with a typical or normal amount of skill in a particular technical area. Used as the standard for determining if a patent application meets certain patent requirements.

Indefinite = An invention described in a patent application must be clearly pointed out and distinctly claimed in order to be patentable. A claim term is said to be indefinite and can be rejected as indefinite when the term does not clearly define the scope of protection. Ambiguous and subjective terms may be indefinite.

Subject Matter Eligibility = An invention must be a process, machine, manufacture, or composition of matter in order to be subject matter eligible. Any claimed invention which does not fall into one of these categories is not patent eligible. There are judicial exceptions to subject matter eligibility which are not eligible for patenting even if they technically fall into one of these categories.

Judicial Exceptions to Subject Matter Eligibility = An invention may be ineligible for patenting if the invention is directed to a judicial exception to patentability without providing “significantly more” than the judicial exception. Judicial exceptions include abstract ideas, laws of nature, and natural phenomena.

Office Action = A communication from the patent office indicating that a patent is allowable or indicating reasons why the patent is not allowable in the form of objections and/or rejections.

Objection = An indication that a patent application contains a formal error that needs to be corrected. A response to an objection should fix the error in order to overcome the objection.

Rejection = An indication that a patent application does not meet one or more of the requirements for patentability. A response to a rejection should present arguments and/or amendments that demonstrate why the patent should be granted.

Final Office Action = A second or subsequent office action on the merits which closes prosecution. If an office action is final, the examiner will designate it as such. In the US, a final office action is not necessarily the end of the process, but the patent applicant must take some action which puts off abandonment of the patent application after receiving a final office action.

Request for Continued Examination (RCE) = A request to continue examining a patent application after prosecution has closed, usually after receiving a final office action. There is a fee to the patent office for filing a RCE.

After Final Consideration Pilot (AFCP) = A pilot program at the USPTO which allows the patent applicant to make an amendment and ask for the examiner to consider the amendment further. The program does not cost patent office fees and can allow the patent applicant to get more information about the potential allowability of the claims before filing a request for continued examination or appeal.

Restriction Requirement = A requirement to separate multiple inventions into multiple patent applications when the patent application covers multiple distinct inventions that would put a serious burden on the examiner to examine in a single patent application.

Election = A choice of a single invention to be examined on the merits made in response to a restriction requirement. Inventions which are not elected are withdrawn from consideration.

Traverse = A term used to indicate that the patent applicant disagrees with a rejection. A response to an office action must have a proper traversal for each rejection, including reasons why the rejection is improper.

Appeal = A mechanism for seeking review of the current rejections of a patent application. A panel of judges considers the rejections and either overrules or sustains each rejection.

Patent Trial and Appeal Board (PTAB) = A portion of the US Patent and Trademark Office which handles patent trials, appeals, and interferences. Trials handled by the PTAB may include inter partes reviews, post grant reviews, and covered business method reviews.

Notice of Appeal = A document filed at the US Patent and Trademark Office which signals that the patent applicant will seek appeal. Usually filed in response to a second or subsequent office action in a patent application.

Appeal Brief = A document including the arguments to be presented to the Patent Trial and Appeal Board. Must be filed within 2 months of filing a Notice of Appeal, with extensions being allowed for a fee.

Interference = A proceeding before the patent office where one party attempts to establish that it is the first inventor of an invention claimed in a patent application by another. If successful, the patent application is prevented from being patented.

Inter Partes Review = A proceeding held before the Patent Trial and Appeal Board to challenge the patentability of a granted patent based on lack of novelty or obviousness in view of patents and/or printed publications.

Post Grant Review = A proceeding held before the Patent Trial and Appeal Board to determine the validity of a granted patent that claims an invention related to a financial product or service.

Covered Business Method Review = A proceeding held before the Patent Trial and Appeal Board to challenge the patentability of a granted patent based on invalidity under certain sections of 35 USC 282.

Ex Parte Reexamination = A proceeding in which the US Patent and Trademark Office reevaluates the patentability of a granted patent based on patents or printed publications. When requested by a third party (someone other than the patent owner), the third party is usually excluded after submitting the initial request for reexamination.

Third Party Preissuance Submission = A process by which a submitter provides one or more references and reasons why the reference is relevant to a pending patent application owned by another entity. The person submitting this cannot be anonymous, but someone can remain anonymous by having another person file it for them.

Abstract Idea = One of the judicial exceptions to patent eligibility. There is no concrete definition for abstract ideas, but potential categories of ideas that could be abstract ideas are mathematical concepts, certain methods of organizing human activity, and mental processes.

Legal Experience and Advancement (LEAP) Program = A program offered by the US Patent and Trademark Office which is aimed at providing opportunities for less experienced advocates to gain experience in Patent Trial and Appeal Board proceedings.

Patent Publication = A formal publication of a patent application by the US Patent and Trademark Office. A patent application is typically published around 18 months from the priority date, although patent applicants can request that the patent not be published.

Information Disclosure Statement (IDS) = A document submitted to the US Patent and Trademark Office which notes references that may be relevant to patentability of a patent application. Each person that is substantively involved in prosecution of a patent application has a duty to disclose all references that are material to patentability.

Oath or Declaration = A sworn statement in a patent application. Each inventor must sign an oath or declaration swearing that they invented the claimed invention, among other things. Must be filed before a patent is granted.

Assignment = A transfer of patent rights from one entity to another.

Substitute Statement = A document that can be filed when the inventor will not or cannot sign a patent application. Can be used in place of the oath or declaration normally required for inventors.

* Note: this guide is for educational purposes and is not legal advice. Patent laws vary by country, and the right advice will always depend on your unique circumstances. If you are interested in obtaining a patent, always consult a registered patent agent or patent attorney.