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466 | Patent it YOURSELF B. Glossary of Legal Terms abandonment (1) allowing a pending, active patent application to be removed from the PTO’s active files and treated as if the inventor has given up all claims to a patent on the invention. An inventor can expressly abandon an application by letter or allow an application to go abandoned by not timely replying to an office action. (2) treating an invention as if the inventor has lost all interest in exploiting it, usually by not developing it or by not filing a patent application on it for a very long time. abstract a concise, one-paragraph summary of the patent. It details the structure, nature, and purpose of the invention. The abstract is used by the PTO and the public to quickly determine the gist of what is being disclosed. actual damages (also known as compensatory damages) in a lawsuit, money awarded to one party to cover actual injury or economic loss. Actual damages are intended to put the injured party in the position he was in prior to the injury. agent (patent) a person licensed by the PTO to represent others in handling patents and patent applications before the PTO. Patent agents are required to have a technical degree or technical knowledge in a specific field. answer a written response to a complaint (the opening papers in a lawsuit) in which the defendant admits or denies the allegations and may provide a list of defenses. assignee a person or legal entity to which an assignment is made. assignor one who makes an assignment. assignment a document transferring ownership of an invention and/or a patent application or patent. attorney (patent) a person licensed by the PTO to represent others in handling patents and patent applications before the PTO and who is also licensed to practice law. Patent attorneys are required to have a technical degree or technical knowledge in a specific field. best mode a term indicating that a patent application should disclose the way the inventor presently prefers to make the invention. Board of Appeals and Patent Interferences (BAPI) a tribunal of judges at the PTO that hears appeals from final Office Actions. cease and desist letter correspondence from the owner of a proprietary work that requests the cessation of all infringing activity. clear and convincing proof evidence that is highly probable and free from serious doubt. complaint papers filed with a court clerk by the plaintiff to initiate a lawsuit by setting out facts and legal claims (usually called causes of action). compositions of matter items such as chemical compositions, conglomerates, aggregates, or other chemically significant substances that are usually supplied in bulk (solid or particulate), liquid, or gaseous form. conception the mental part of inventing, including how an invention is formulated or how a problem is solved. confidentiality agreement (also known as a nondisclosure agreement) a contract in which one or both parties agree not to disclose certain information. continuation application a new patent application that allows the applicant to re-present an invention and get a second or third bite at the apple. The applicant can file a new application (known as a “continuation”) while the original (or “parent”) application is still pending. A continuation application consists of the same invention, cross-referenced to the parent application, and a new set of claims. The applicant retains the filing date of the parent application for purposes of determining the relevancy of prior art. Continuation-in-Part (CIP) less common than a continuation application, this form of extension application is used when a portion or all of an earlier patent application is continued and new matter (not disclosed in the earlier application) is included. CIP applications are used when an applicant wants to present an improvement but is prevented from adding a pending application to it because of the prohibition against adding “new matter.” Continuing Prosecution Application (CPA) a patent application that is like a continuation application in effect, but no new application need be filed. The applicant merely pays another filing fee, submits new claims, and files a CPA request form. CPAs can only be used for applications filed prior to 2000 May 29. Applications after that date must use the Request for Continued Examination. contributory infringement occurs when a material component of a patented invention is sold with knowledge that the component is designed for an unauthorized use. This type of infringement cannot occur unless there is a direct infringement. In other words, it is not enough to sell infringing parts; those parts must be used in an infringing invention. copyright the legal right to exclude others, for a limited time, from copying, selling, performing, displaying, or making derivative versions of a work of authorship such as a writing, music, or artwork. counterclaim a legal claim usually asserted by the defendant against an opposing party, usually the plaintiff.
Appendix 3 | GLOSSARIES | 467 Court of Appeals for the Federal Circuit (CAFC) the federal appeals court that specializes in patent appeals. If the Board of Appeals and Patent Interferences rejects an application appeal, an applicant can further appeal to the CAFC within 60 days of the decision. If the CAFC upholds the PTO, the applicant can request the United States Supreme Court hear the case (although the Supreme Court rarely hears patent appeals). date of invention the earliest of the following dates: (a) the date an inventor filed the patent application (provisional or regular), (b) the date an inventor can prove that the invention was built and tested in the U.S. or a country that is a member of the North American Free Trade Association (NAFTA) or the World Trade Organization (WTO), or (c) the date an inventor can prove that the invention was conceived in a NAFTA or WTO country, provided the inventor can also prove diligence in building and testing it or filing a patent application on it. declaratory action a request that the court sort out the rights and legal obligations of the parties in the midst of an actual controversy. deed (patent) a document under seal or certificate issued by the PTO containing a printed copy of a patent and granting a patent monopoly to the patentee and the patentee’s assignee. deposit date the date the PTO receives a patent application. deposition oral or written testimony of a party or witness and given under oath. design patent covers the unique, ornamental, or visible shape or design of a nonnatural object. divisional application a patent application used when an applicant wants to protect several inventions claimed in the original application. The official definition is “a later application for a distinct or independent invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application” (MPEP 201.06). A divisional application is entitled to the filing date of the parent case for purposes of overcoming prior art. The divisional application must be filed while the parent is pending. A divisional application can be filed as a CPA. Doctrine of Equivalents (DoE) a form of patent infringement that occurs when an invention performs substantially the same function in substantially the same manner and obtains the same result as the patented invention. A court analyzes each element of the patented invention separately. Under a recent Supreme Court decision, the DoE must be applied on an element-by-element basis to the claims. double patenting when an applicant has obtained a patent and has filed a second application containing the same invention, the second application will be rejected. If the second application resulted in a patent, that patent will be invalidated. Two applications contain the same invention when the two inventions are literally the same or the second invention is an obvious modification of the first invention. embodiment a physical version of an invention as described in a patent application; a patent application may describe several embodiments of an invention, but is supposed to state the one that the inventor considers the best mode as of the filing date; see ramification. enhanced damages (treble damages) in exceptional infringement cases, financial damages may be increased, at the discretion of the court, up to triple the award for actual damages (known as “enhanced damages”). examiner’s answer a brief submitted by a patent examiner in response to an applicant’s brief in an appeal to the PTO’s Board of Patent Appeals and Interferences. exclusive jurisdiction the sole authority of a court to hear a certain type of case. exhaustion (see “first sale doctrine”). ex parte (Latin: one party only) refers to legal proceedings where only one party is present or represented. experimental use doctrine a rule excusing an inventor from the one-year bar provided that the alleged sale or public use was primarily for the purpose of perfecting or testing the invention. file wrapper estoppel (or prosecution history estoppel) affirmative defense used in patent infringement litigation that precludes the patent owner from asserting rights that were disclaimed during the patent application process. The term is derived from the fact that the official file in which a patent is contained at the Patent and Trademark Office is known as a “file wrapper.” All statements, admissions, correspondence, or documentation relating to the invention are placed in the file wrapper. Estoppel means that a party is prevented from acting contrary to a former statement or action when someone else has relied to his detriment on the prior statement or action. final Office Action the examiner’s response to the applicant’s first amendment. The final Office Action is supposed to end the prosecution stage but a “final action” is rarely final. first Office Action (sometimes called an “official letter” or “OA”) response from the patent examiner after the initial examination of the application. It is very rare that an application is allowed in the first Office Action. More often, the examiner rejects some or all of the claims.
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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8 9 E. Make and Sell Your Invention
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13 14 J. The Patent Laws of Other C
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Appendixes 1 2 Abbreviations Used i
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Your Legal Companion A. You Don’t
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Your Legal COMPANION | 3 D. Should
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C H A P T E R 4 Will Your Invention
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INDex | 577 Biotechnology patents e
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About the Author David Pressman is
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