IP Jargon: What are they talking about? – Part 1

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When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal. In this part we will cover jargon found in patent statutes and applications.

Patent Statue Jargon

  • Statutory Subject Matter: Something that can be legally protected under a patent. There are four categories of ideas that can be protected by patents: process (a series of steps), machine (an object consisting of parts), manufacture (an object produced by giving new form to raw materials), and composition of matter (compositions of two or more substances.)

  • Bar date (aka Statutory Bar Dates): Dates that are triggered by statue in the patent application process. If any date is missed all potential rights are lost. These are similar to statute of limitations.Patent Graphic

  • Provisional Patent Application: Acts almost as a “placeholder” for a patent application, a provisional application will be granted a filing date, but the application will never be examined and will not become a patent. Although provisional applications become void after one year, an inventor may wish to file one once they have enough detail on the invention, to ensure that they are the first to file. Provisional applications may also allow more time for research or developing the idea before applying for a full patent.

  • Utility vs. Design Patents: There are hree types of patents available in the US: utility, design, and plant. Utility and Design patents, can both be obtained for the same invention. Utility patents protect what an invention does, whereas design patents protect how an invention looks. Although design patents last longer (14 years is typical), utility patents are generally stronger in that they protect the actual function of the invention. For example, if an inventor only holds a design patent, others can make inventions that have the same function as long as they appear differently. Lastly, are plant patents which provide 20 years of patent protection for the inventor of a new variety of plant, preventing others from reproducing and/or selling the plant.

  • PCT Patent Application: A patent application filed under the “Patent Cooperation Treaty.” This non-provisional “International” type patent application lasts for 18 months. It enables the applicant to a single application and retain both their filing date as well as the ability to choose which countries specifically to enter their application into at the end of the 18 months. This method is best for those considering applying for patents in many countries, and wishing to delay cost.

  • AIA (Leahy-Smith America Invents Act): Enacted in the US in 2013, the main change made by the AIA was the switch from “first to invent” to “first to file,” in regards to patents. When multiple inventors file for the same patent, the party that filed a patent first wins control, instead of the party who invented the idea first. You can find more information on the America Invents Act here.

Patent Application Jargon

  • Assignment: Describes both the act of transferring one’s rights to a patent or application to someone else and the legal document memorializing the transfer.

  • Claim: The exact part of an idea within a patent application in which an inventor outlines his or her invention. The claims usually take the shape of a list formatted in oddly worded sentences. This is what the patent will protect and what the inventor will have the rights to.

  • Declaration: A document in which the inventor declares that he/she was the inventor, and that he/she authorized the filing of the patent, acknowledging associated penalties.

  • Enablement: The application and the patent must provide language clear enough for an ordinary person in the field to be able to build or practice the invention from the description in the patent.

  • Embodiments: Different versions of the invention. The intended usage of the invention is known as the “preferred embodiment,” whereas other related versions are known as “alternative embodiments.” Preferred and alternative embodiments must be described in a patent application either through words, drawings, or both.

  • Prior Art: Any information (publication, presentations, etc.) regarding an invention that has been made public before patenting. To ensure originality for a patent, there must not be any prior art for the invention. Search Report: a report published by a patent office, explaining which documents may be used in determining the patentability of an invention. These documents usually contribute to prior art.