IP Jargon: What are they talking about? – Part 2

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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 (Part 1 can be found here). In this part we will cover jargon often heard during the patent review and appeal processes.

Patent Review Process Jargon

  • Amending the Claim/Amendment: After the patent has been filed, if it is discovered that an aspect of the invention already mentioned within the patent is not fully described or drawn, the patent may be amended to properly describe it.Patent Graphic

  • Office Action: After a patent application is submitted, the case is assigned an examiner, who evaluates the application for language and structure as well as prior art. If the application is rejected (which most are initially) the case’s examiner will provide this document explaining why.

    • Non-final Office Action: The Office Action sent after the patent application’s first rejection. The applicant may respond in a variety of ways, including amending the terms or requesting reconsideration.

    • Final Action: If the inventor’s response to the first Office Action was not considered sufficient, they may receive a Final Action. A case’s second rejection is usually deemed “final,” which means that the inventor’s options for response are restricted. Options for response include modifying the rejected claims, filing a Request for Continued Examination, requesting an interview with the examiner or filing an appeal.

    • Restriction Requirement: A given patent may only be awarded to one individual invention. If an examiner feels that the application includes more than one distinct invention, the applicant will have to choose one, and restrict the claims to those concerning that invention.

  • Rejections: is technically an office action where the patent examiner rejects claims based on patentability of the subject matter (section 101) or patentability in light of prior art (section 102 or 103). Although a rejection of claims (section 112) may sound like a rejection of the content found in a claim, this rejection is can be based on objections that the claims are not in their proper form.

    • Obviousness (section 103): An invention must not simply consist of a combination of prior art or an improvement on a previous invention. To be eligible for a patent, an invention must be completely unique.

    • Novelty (section 102): An invention may not have been previously patented, described in publication, or have been in use or on sale by anyone—including the inventor—for more than a year before the application was filed.
    • Patentable Subject Matter (section 101): An invention that is eligible for patent protection meeting the standards of novelty (section 102), utility (section 112), and non-obviousness (section 103). This includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

Patent Appeal Jargon

  • Appeal: A request that a decision be reviewed by a higher authority. An appeal may be filed after an inventor receives a final office action, to be reviewed by the Patent Trials and Appeals Board.

  • RCE: (Request for Continued Examination): After the final office action, an inventor may file an RCE and make any amendments and arguments to be considered by the examiner.