Patent It Yourself - PDF Archive

Appendix 3 | GLOSSARIES | 471
If it can later be proved that the inventor knew of a better
way (or “best mode”) and failed to disclose it, that failure
could result in the loss of patent rights.
statute of limitations the legally prescribed time limit
in which a lawsuit must be filed. In patent law there is
no time limit (statute of limitations) for filing a patent
infringement lawsuit, but monetary damages can only
be recovered for infringements committed during the
six years prior to the filing the lawsuit. For example, if
a patent owner sues after ten years of infringement, the
owner cannot recover monetary damages for the first
four years of infringement. Despite the fact that there is
no law setting a time limit, courts will not permit a patent
owner to sue for infringement if the owner has waited an
unreasonable time to file the lawsuit (“laches”).
Statutory Invention Registration (SIR) a document that
allows an applicant who abandons an application to
prevent anyone else from getting a valid patent on the
same invention. This is accomplished by converting the
patent application to a SIR.
statutory subject matter an invention that falls into one
of the five statutory classes: process (method), machine,
article of manufacture, composition, or a “new use” of
one of the first four.
substitute application essentially a duplicate of an
abandoned patent application. (See MPEP § 201.09.)
The disadvantage of a substitute application is that the
applicant doesn’t get the benefit of the filing date of the
previously abandoned patent application, which could
be useful, because any prior art occurring after the filing
date of the earlier case can be used against the substitute
case. If the applicant’s substitute application issues into a
patent, the patent will expire 20 years from the filing date
of the substitute.
successor liability responsibility for infringement that is
borne by a company that has purchased another company
that is liable for infringements. In order for successor
liability to occur, there must be an agreement between
the companies to assume liability, a merger between the
companies, or the purchaser must be a “continuation”
of the purchased business. If the sale is made to escape
liability and lacks any of the foregoing characteristics,
liability will still attach.
summons a document served with the complaint that tells
the defendant he has been sued, has a certain time limit
in which to respond, and must appear in court on a stated
date.
temporary restraining order (TRO) a court order that tells
one party to do or stop doing something—for example
to stop infringing. A TRO is issued after the aggrieved
party appears before a judge. Once the TRO is issued, the
court holds a second hearing where the other side can
tell its story and the court can decide whether to make
the TRO permanent by issuing an injunction. The TRO
is often granted ex parte (without allowing the other side
to respond), and for that reason is short in duration and
only remains in effect until the court has an opportunity
to schedule a hearing for the preliminary injunction.
traverse to argue against.
tying a form of patent misuse in which, as a condition of
a transaction, the buyer of a patented device must also
purchase an additional product. For example, in one case
a company had a patent on a machine that deposited salt
tablets in canned food. Purchasers of the machine were
also required to buy salt tablets from the patent owner.
A party that commits patent misuse may have its patent
invalidated, may have to pay monetary damages, or both.
utility patent the main type of patent, which covers
inventions that function in a unique manner to produce a
utilitarian result.
verified statement a statement made under oath or a
declaration. A false verified statement is punishable as
perjury.
vicarious liability legal responsibility that results when a
business such as a corporation or partnership is liable for
infringements committed by employees or agents. This
liability attaches when the agent acts under the authority
or direction of the business, an employee acts within the
scope of employment, or the business benefits from, or
adopts or approves the infringing activity.
voir dire (“speak the truth”) process by which attorneys and
judges question potential jurors in order to determine
whether they may be fair and impartial.
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