Patent It Yourself - PDF Archive

468 | Patent it YOURSELF
first sale doctrine (also known as the exhaustion doctrine)
once a patented product (or product resulting from a
patented process) is sold or licensed, the patent owner’s
rights are exhausted and the owner has no further rights
as to the resale of that particular article.
generic (genus) an entire group or class, or a group of
related items or species.
grace period a period in which an action may be taken even
though the normal period for taking action has passed.
indirect infringement occurs either when someone is
persuaded to make, use, or sell a patented invention
without authorization (inducing infringement); or
when a material component of a patented invention is
sold with knowledge that the component is designed
for an unauthorized use (contributory infringement).
An indirect 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.
infringement an invention is infringing if it is a literal copy
of a patented invention or if it performs substantially
the same function in substantially the same manner and
obtains the same result as the patented invention (see
“doctrine of equivalents”).
injunction a court order requiring that a party halt a
particular activity. In the case of patent infringement, a
court can order all infringing activity be halted at the end
of a trial (a permanent injunction) or the patent owner
can attempt to halt the infringing activity immediately,
rather than wait for a trial (a preliminary injunction). A
court uses two factors to determine whether to grant a
preliminary injunction: (1) Is the plaintiff likely to succeed
in the lawsuit? (2) Will the plaintiff suffer irreparable
harm if the injunction is not granted? The patent owner
may seek relief for a very short injunction known as
a temporary restraining order or TRO, which usually
only lasts a few days or weeks. A temporary restraining
order may be granted without notice to the infringer if it
appears that immediate damage will result—for example,
that evidence will be destroyed.
intellectual property (IP) the law dealing with works that are
produced by mental activity, including ideas, inventions,
patents, trademarks, trade secrets, copyrightable material,
and unfair competition.
intellectual property attorney a person licensed to practice
law by one or more states and who specializes in
intellectual property. There are two types of IP attorneys:
those who are licensed by the PTO (and can handle
invention and patent matters before the PTO); and those
who are not.
interference a costly, complex PTO proceeding that
determines who will get a patent when two or more
applicants are claiming the same invention. It is basically
a method of sorting out priority of inventorship.
Occasionally an interference may involve a patent that
has been in force for less than one year.
inter partes (Latin: between parties) refers to legal proceedings
where all parties to the action are represented.
interrogatories written questions that must be answered
under oath.
invention any new article, machine, composition, or process
or new use developed by a human.
jury instructions explanations of the legal rules that the jury
must use in reaching a verdict.
lab notebook a system of documenting an invention that
usually includes descriptions of the invention and novel
features; procedures used in the building and testing of the
invention; drawings, photos, or sketches of the invention;
test results and conclusions; discussions of any known
prior-art references; and additional documentation such
as correspondence and purchase receipts.
literal infringement occurs if a defendant makes, sells, or
uses the invention defined in the plaintiff’s patent claim.
In other words, the infringing product includes each and
every component, part, or step in the patented invention.
It is a literal infringement because the defendant’s device
is actually the same invention in the patent claim.
machine a device or things used for accomplishing a task;
usually involves some activity or motion performed by
working parts.
magistrate an officer of the court, who may exercise some of
the authority of a federal district court judge, including
the authority to conduct a jury or nonjury trial.
manufactures (sometimes termed “articles of manufacture”)
items that have been made by human hands or by
machines; may have working or moving parts as prime
features.
means-plus-function clause (or means-for clause) a
provision in a patent claim in which the applicant does
not specifically describe the structure of one of the items
in the patent and instead describes the function of the
item. Term is derived from the fact that the clause usually
starts with the word “means.”
new matter any technical information, including
dimensions, materials, etc., that was not present in the
patent application as originally filed. An applicant can
never add new matter to an application (PTO Rule 118).
new-use invention a new and unobvious process or method
for using an old and known invention.