Patent Terminology +US

Question 1

Abandonment

Answer 1

An application that has been declared abandoned is dead and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response from an applicant to an Office Action letter within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances.

Question 2

Absolute Novelty

Answer 2

A system whereby any prior publication or prior use anywhere in the world destroys the novelty of a patent.

Question 3

Acquisition

Answer 3

The Acquiring, or takeover, of a company by buying up the company shares giving the buyer voting control of the company.

Question 4

Active inducement to infringe

Answer 4

One may be held liable for patent infringement as a result of actively encouraging another to infringe if such other does infringe, even though the inducer has not made, used, sold, offered for sale, or imported the patented invention.

Question 5

Advisory action

Answer 5

An official action issued by the US examiner when a final rejection is being maintained.

Question 6

AIPA

Answer 6

American Inventors Protection Act of 1999

Question 7

AIPLA

Answer 7

American Intellectual Property Law Association

Question 8

AIPPI

Answer 8

The International Association for the Protection of Intellectual Property.

Question 9

Alternative dispute resolution

Answer 9

Alternatives to the court system to resolve disputes. This usually refers to mediation or arbitration. May include mechanisms set out in contracts.

Question 10

ANDA

Answer 10

Abbreviated New Drug Application, is the process of obtaining approval to market a generic drug. An ANDA contains information demonstrating that the generic drug is bioequivalent to the brand-name product and certification that the generic drug does not infringe on any patent for the brand-name product listed in the Orange Book or certification that the listed patents are invalid.

Question 11

Anticipation

Answer 11

Prior art which destroys the novelty of a claim by fully describing something falling within it.

Question 12

Apparatus claim

Answer 12

This refers to that part of a patent document called the Claims. An apparatus Claim provides a structural description of a piece of equipment that is embraced by the expression “machine” in the definition of patentable subject matter in the US Patent Statute. Drawings of the apparatus are essential.

Question 13

Appeal brief

Answer 13

A summary of the arguments why the invention should be patentable, submitted to the board of appeals.

Question 14

applicant1

Answer 14

In the US applicants must be individuals. An application for patent is filed under 35 USC 111(a)

Question 15

Apportionment of Profit

Answer 15

A measure of damages in patent-infringement litigation. Apportionment generally refers to dividing the profits on the sale of a particular piece of apparatus or a product according to the percentage of cost or sale price attributable to the patented invention. Where the whole of the product is covered by the patent, or where the patented component contributes all of the market value, apportionment of profit is not necessary.

Question 16

Argument

Answer 16

The process by which a lawyer or other person tries to persuade the court, based on the record, to find for his side. The Attorney’s Canon of Ethics (sic) require there be some basis in the record for such arguments.

Question 17

Assignee

Answer 17

The person or company to whom ownership of the patent is transferred. Usually by assignment in writing. Note exception…Matrimonial Property Act.

Question 18

Assignment

Answer 18

in intellectual property an assignment is a legal transfer of ownership or usage rights from one entity to another. A transfer of ownership of a patent application or patent from one entity (assignor) to another (assignee). All assignments should be recorded with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.

Question 19

Automatic prohibition

Answer 19

30-month stay is the automatic prohibition of FDA action on an ANDA with a Paragraph IV certification if the brand-name company files a patent infringement suit against the generic applicant within 45 days.

Question 20

Background of the invention

Answer 20

A specific subsection of a patent application outlining the relative prior art and problems associated with a technology.

Question 21

Best mode requirement

Answer 21

The obligation to describe the best way of carrying out the invention at the date of filing the application. It imposes on the inventor the requirement to disclose the best version of the invention, not an alternative second best another inferior version.

Question 22

Bioequivalence

Answer 22

The Food & Drug Administration requirement that the active ingredient of a generic drug be absorbed into the body and metabolized in approximately the same amount over approximately the same period as the active ingredient of the innovator drug. Bio-equivalence is demonstrated in two ways. Dissolution testing determines if the generic drug product dissolves in approximately the same amount of time as the innovator product. Blood-level testing is done by giving the generic drug product to humans and measuring how much of the drug enters the bloodstream, how fast it does so, and how long it takes to leave the body.

Question 23

Bolar Provision

Answer 23

An Exemption which states that it is not an infringement to make, use, offer to sell, or sell within- or import into solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.

Question 24

BPAI

Answer 24

Board of Appeal Interferences

Question 25

Brand

Answer 25

traditionally refers to a distinctive product or service associated with an organization. Recently, this term has been used to define a corporate image associated with a particular organization that is firmly rooted in the public’s mind.

Question 26

Budapest Treaty

Answer 26

A Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

Question 27

CAFC (Court of Appeals for the Federal Circuit)

Answer 27

All patent decisions are appealed to this court rather than to the Appellate Courts throughout the United States. While the CAFC decisions can be appealed to, and overturned by, the Supreme Court, the Supreme Court takes few patent cases and so the CAFC is the court which primarily determines the patent law.

Question 28

Cease and desist letter

Answer 28

a letter (usually issued by an attorney on behalf of an intellectual property rights holder) sent to an accused infringer notifying them of their possible violation of copyright, trademark, or patent law, and requesting that the recipient stop all use (i.e., cease) of the intellectual property in question or face legal action.

Question 29

Certificate of Correction

Answer 29

Issued upon patentee request due to a USPTO or applicant minor error in the patent such as printing, typographical, or clerical errors.

Question 30

Claim

Answer 30

The part of a patent specification that defines the legal scope of the protection sought by an inventor. Each claim is a single sentence in a legalistic form that defines an invention and its unique technical features. A valid claim is one that reads on the invention described in the specification but does not read on any prior art. Each and every Claim must be clear and concise and supported by the description.

Question 31

Classes

Answer 31

A term relating to Patents, Trademarks and Designs. Classes allow technical and descriptive matter to be categorized and searched.

Question 32

Clean hands doctrine

Answer 32

The principle that equitable relief such as enforcement of patent rights by an injunction can be granted only to one who has acted in good faith.

Question 33

Combining Prior Art

Answer 33

Under Section 102 of the US Patent Statute, a claim must be identically disclosed in a single prior-art reference in order to be rejected as being anticipated by prior art. Under Section 103 of the Patent Statute (which deals with the standard of obviousness) one is permitted to employ a single prior art reference, or may combine two or more references to render a claim obvious if such a combination would be apparent to one skilled in the art. In both cases a patent examiner can reject a patent application, or a patent claim can be ruled invalid by a court.

Question 34

Common Law Rights

Answer 34

Property or other legal rights that do not absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual. Active Federal registration of trademark can provide a higher degree of legal protection and readily demonstrated evidence of ownership of a mark.

Question 35

Comprising

Answer 35

The word “comprising” in a claim renders the claim open to allow for additional elements that could be added to the alleged infringing device without avoiding infringement.

Question 36

Continuation Application

Answer 36

This is a patent application directed toward the same invention as a prior application and filed while the prior application is pending, naming the same inventive entity. The continuation application is given the benefit of the earlier filing date of the application on which it is based.

Question 37

Continuation in Part Application

Answer 37

Continuation-in-Part (CIP). An application filed during the lifetime of an earlier non-provisional application, often repeating a substantial portion or all of the earlier non-provisional application and adding matter not disclosed in the earlier non-provisional application.

Question 38

Counterpart

Answer 38

An application filed in a foreign patent office that is substantially similar to (like) the patent application filed with the USPTO and is based upon some or all of the same invention. The two applications would generally have the same applicant. Called an Equivalent in other jurisdictions.

Question 39

Cultural heritage community

Answer 39

individuals, organizations, associations, and groups who work in the cultural sector and promote its growth, preservation, and sustainability.

Question 40

Cybersquatting

Answer 40

The process of registering, trafficking in, or using a domain name with bad-faith intent in order to profit from the goodwill of a trademark belonging to someone else.

Question 41

Delphion

Answer 41

A subscription based searching tool with extensive data coverage including collections from all over the world. Delphion is the most comprehensive sources for finding and viewing patent information.