Glossary of Patent Terms and Acronyms
- §101 – The section of the U.S. patent code that addresses what is patentable subject matter.
- §102 – The section of the U.S. patent code that addresses “novelty” of an invention.
- §103 – The section of the U.S. patent code that addresses “obviousness” of an invention.
- §112 – The section of the U.S. patent code that addresses requirements for the “specification” (the written description of an invention) in a patent application.
AIA – The Leahy–Smith America Invents Act is a federal statute that was signed into law on September 16, 2011. The law represents the most significant change to the U.S. patent system since 1952. The law changed the U.S. patent system from a “first to invent” to a “first inventor to file” system, eliminated interference proceedings, and created new post-grant opposition proceedings. Its central provisions went into effect on September 16, 2012 and on March 16, 2013. See MedTech Brief of September 12, 2011.
CFR – U.S. Code of Federal Regulations. Title 37 of the CFR addresses Patents, Trademarks and Copyrights.
CIP – see Continuation-in-Part
Claims – Patent claims establish the boundaries or scope of an invention. They are the numbered sentences at the end of an issued patent. The claims may be amended during the prosecution of a patent application before the USPTO. A claim having many elements in it is narrower in scope than a claim having fewer elements. The claims of a patent include at least one “independent” claim, which defines the invention by itself, and typically also include a number of “dependent” claims, each of which refers back and incorporates the language of another independent or dependent claim and adds addition element(s). A patent is infringed if at least one of its (presumably valid) claims covers an accused method or apparatus.
Continuation – A subsequent patent application for a similar invention claimed in an earlier nonprovisional application and filed before the prior “parent” application issues or becomes abandoned. A continuation typically has the same written description and drawings as the parent application but has different claims.
Continuation-in-Part – A subsequent patent application for a similar invention claimed in an earlier nonprovisional application and filed before the prior “parent” application issues or becomes abandoned. A CIP typically repeats some substantial portion or all of the parent application and adds additional matter not disclosed in the parent.
Continuing Application – A continuation, divisional, or continuation-in-part patent application.
Divisional – A subsequent patent application for a similar invention claimed in an earlier nonprovisional application and filed before the prior “parent” application issues or becomes abandoned. A divisional typically has the same written description and drawings as the parent application but has claims that were withdrawn from consideration during prosecution of the parent application due to a Restriction Requirement.
Embodiment – One implementation of an invention
EPO – European Patent Office
IDS (Information Disclosure Statement) – An IDS is a list of all patents, applications, publications, or other information submitted by an applicant of a non-provisional patent application for consideration by the USPTO to comply with the applicant’s duty to submit to the USPTO information which is material to patentability of the invention claimed in the patent application. Multiple IDS’s may be submitted over the course of prosecution of a patent application.
IPR (Inter-Partes Review) – Introduced by the America Invents Act (AIA) as a counterpart to post-grant review (PGR). Together, IPR and PGR collectively replace inter partes reexamination and allow third parties to challenge the validity of patents in proceedings before the USPTO. IPR may be used to challenge pre and post AIA patent applications. However, for post AIA applications (in general, those filed on or after March 16, 2013) a 9-month time period after patent issuance must expire (or actual PGR proceedings must be completed) before IPR may be requested.
MPEP (Manual of Patent Examining Procedure) – The MPEP provides USPTO patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications before the USPTO. It contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in the normal examination of a patent application. The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.
MTEP (Manual of Trademark Examining Procedure) – Similar to the MPEP, but is used to guide the prosecution of trademark applications.
PCT – Patent Cooperation Treaty – A PCT patent application is also referred to as an “international patent application.” A PCT application does not mature into a patent, but may be filed up to one year after an earlier “priority” patent application and allows an applicant to delay filing national stage patent applications in individual countries and/or regions until 30 months after the priority filing date.
PGR – Post-grant review was introduced by the America Invents Act (AIA) as a counterpart to inter partes review (IPR). Together, IPR and PGR collectively replace inter partes reexamination and allow third parties to challenge the validity of patents in proceedings before the USPTO. PRG may only be used to challenge post AIA patent applications (in general, those filed on or after March 16, 2013), and must be requested within 9 months of a patent’s issue date.
PHOSITA – A person having ordinary skill in the art. 35 U.S.C. §103 states that a patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
Prior Art – In general terms, prior art is the body of knowledge that comes before a particular invention. Depending on the circumstances, the dates of conception, patent application filing, publication and/or public disclosure of either the prior invention, or the patent application or patent in question determines whether a particular reference is prior art to the patent application or patent. Prior art may be used by patent examiners to reject particular patent application claims, or by third parties to invalidate claims of issued patents.
Prosecution – The process of moving a patent application from filing to issuance.
PTAB – Patent Trial and Appeal Board. The PTAB is the part of the USPTO that presides over appeals of rejections of patent applications, IPR, PGR and other proceedings.
PTO – Short for USPTO, the United State Patent and Trademark Office.
RCE – Request for Continued Examination. After a patent application has received a final rejection from the USPTO, it may be necessary to file an RCE to continue the prosecution of the application.
Restriction Requirement – When the USPTO believes that more than one invention is being claimed in a patent application, it will issue a Restriction Requirement, requiring the applicant to elect one of inventions to pursue first. The remaining invention(s) are withdrawn from consideration in the parent application, but may be pursued in a divisional application.
SCOTUS – The Supreme Court of the United States, the final court of appeals in patent cases.
Specification – A written description of the invention and the manner and process of making and using the same.
USC – United State Code. Title 35 of the United States Code governs patent law.
USPTO – United States Patent and Trademark Office.