Patent It Yourself - PDF Archive

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.