Patent It Yourself - PDF Archive

Appendix 3 | GLOSSARIES | 469
nonobviousness a standard of patentability that requires
that an invention produce “unusual and surprising
results.” In 1966, the U.S. Supreme Court established
the steps for determining unobviousness in the case of
Graham v. John Deere, 383 U.S. 1 (1966).
Notice of Allowance a document issued when the examiner
is convinced that the application meets the requirements
of patentability. An issue fee is due within three months.
objection a disapproval made by an examiner to a
nonsubstantive matter, such as an unclear drawing or
dependent claim having a rejected claim.
objects and advantages a phrase used to explain “what the
invention accomplishes.” Usually, the objects are also the
invention’s advantages, since those aspects are intended
to be superior over prior art.
Office Action (OA, also known as Official Letter or
Examiner’s Action) correspondence (usually including
forms and a letter) from a patent examiner that describes
what is wrong with the application and why it cannot be
allowed. Generally, an OA will reject claims, list defects
in the specifications or drawings, raise objections, or cite
and enclose copies of relevant prior art demonstrating a
lack of novelty or nonobviousness.
one-year rule a rule that requires an inventor to file a patent
application within one year after selling, offering for
sale, or commercially or publicly using or describing an
invention. If an inventor fails to file within one year of
such occurrence the inventor is barred from obtaining a
patent.
on-sale bar prevents an inventor from acquiring patent
protection if the application is filed more than one year
from the date of sale, use, or offer of sale of the invention
in the United States.
patent a grant from a government that confers upon an
inventor the right to exclude others from making, using,
selling, importing, or offering an invention for sale for a
fixed period of time.
patent application a set of papers that describe an invention
and that are suitable for filing in a patent office in order to
apply for a patent on the invention.
Patent Application Declaration (PAD) a declaration that
identifies the inventor or joint inventors and provides an
attestation by the applicant that the inventor understands
the contents of the claims and specification and has fully
disclosed all material information. The PTO provides a
form for the PAD.
patent misuse a defense in patent infringement that
prevents a patent owner who has abused patent law from
enforcing patent rights. Common examples of misuse
are violation of the antitrust laws or unethical business
practices.
patent pending (also known as the “pendency period”)
time between filing a patent application (or PPA) and
issuance of the patent. The inventor has no patent rights
during this period. However, when and if the patent
later issues, the inventor will obtain the right to prevent
the continuation of any infringing activity that started
during the pendency period. If the application has been
published by the PTO during the pendency period and
the infringer had notice, the applicant may later seek
royalties for these infringements during the pendency
period. It’s a criminal offense to use the words “patent
applied for” or “patent pending” (they mean the same
thing) in any advertising if there’s no active, applicable
regular or provisional patent application on file.
patent prosecution the process of shepherding a patent
application through the Patent and Trademark Office.
Patent Rules of Practice administrative regulations located
in Volume 37 of the Code of Federal Regulations
(37 CFR § 1).
pendency period (see patent pending).
permanent injunction a durable injunction issued after a
final judgment on the merits of the case; permanently
restrains the defendant from engaging in the infringing
activity.
Petition to Make Special an applicant can, under certain
circumstances, have an application examined sooner
than the normal course of PTO examination (one to three
years). This is accomplished by filing a “Petition to Make
Special” (PTMS), together with a Supporting Declaration.
plant patent covers plants that can be reproduced through
the use of grafts and cuttings (asexual reproduction).
power of attorney a document that gives another person
legal authority to act on your behalf. If an attorney is
preparing an application on behalf of an inventor, a
power of attorney should be executed to authorize the
patent attorney or agent to act on behalf of the inventor.
The power of attorney form may be combined with the
PAD.
prima facie (Latin: on its face) at first sight, obvious.
prior art the state of knowledge existing or publicly available
either before the date of an invention or more than one
year prior to the patent application date.
priority the benefit of the filing date of an earlier patent
application accorded to a later-filed patent application.
process (sometimes referred to as a “method”) a way of
doing or making things that involves more than purely
mental manipulations.