An application that has been declared abandoned is dead and no longer pending.


occurs under several circumstances. The most common reason is when the USPTO does not receive a response from an applicant to an Office Action letter within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances. See Request for Reinstatement.

Absolute novelty:

A system whereby any prior publication or prior use anywhere in the world destroys the novelty of a patent.

Abstract (EP):

A summary of the disclosure of a patent specification, written by the applicant.

Account of profits (EP):

Alternative to damages, based on profits made by infringer.

Active Inducement to Infringe:

One may be held liable for patent infringement as a result of actively encouraging another to infringe if such other does infringe, even though the inducer has not made, used, sold, offered for sale, or imported the patented invention.


The Acquiring, or takeover, of a company by buying up the company shares giving the buyer voting control of the company.

Advisory action:

An official action issued by the US examiner when a final rejection is being maintained.


American Inventors Protection Act of 1999.


The International Association for the Protection of Intellectual Property.


American Intellectual Property Law Association.


This is the same as the UK concept of acceptance.

Alternative Dispute Resolution (ADR):

Alternatives to the court system to resolve disputes. This usually refers to mediation or arbitration. May include mechanisms set out in contracts.


, Abbreviated New Drug Application, is the process of obtaining approval to market a generic drug. An ANDA contains information demonstrating that the generic drug is bioequivalent to the brand-name product and certification that the generic drug does not infringe on any patent for the brand-name product listed in the Orange Book or certification that the listed patents are invalid.


Laws or regulations to prevent the abuse of monopoly


Prior art which destroys the novelty of a claim by fully describing something falling within it.

Apparatus Claim:

This refers to that part of a patent document called the Claims. An apparatus Claim provides a structural description of a piece of equipment that is embraced by the expression “machine” in the definition of patentable subject matter in the US Patent Statute. Drawings of the apparatus are essential.

Appeal brief:

A summary of the arguments why the invention should be patentable, submitted to the board of appeals.


In the US applicants must be individuals. An application for patent is filed under 35 USC 111(a).

Apportionment of Profit:

A measure of damages in patent-infringement litigation. Apportionment generally refers to dividing the profits on the sale of a particular piece of apparatus or a product according to the percentage of cost or sale price attributable to the patented invention. Where the whole of the product is covered by the patent, or where the patented component contributes all of the market value, apportionment of profit is not necessary.


The process by which a lawyer or other person tries to persuade the court, based on the record, to find for his side. The Attorney’s Canon of Ethics (sic) require there be some basis in the record for such arguments.


The person or company to whom ownership of the patent is transferred. Usually by assignment in writing. Note exception…Matrimonial Property Act. A Universal term.


A transfer of ownership of a patent application or patent from one entity (assignor) to another (assignee). All assignments should be recorded with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.

Automatic prohibition:

30-month stay is the automatic prohibition of FDA action on an ANDA with a Paragraph IV certification if the brand-name company files a patent infringement suit against the generic applicant within 45 days.

Background of the Invention:

A specific subsection of a patent application outlining the relative prior art and problems associated with a technology.

Berne Convention:

A Convention for the Protection of Literary and Artistic Works. See http://www.wipo.int/treaties/en/ip/berne/index.html.

Best mode requirement:

The obligation to describe the best way of carrying out the invention at the date of filing the application. It imposes on the inventor the requirement to disclose the best version of the invention, not an alternative second best another inferior version.


is the Food & Drug Administration requirement that the active ingredient of a generic drug be absorbed into the body and metabolized in approximately the same amount over approximately the same period as the active ingredient of the innovator drug. Bio-equivalence is demonstrated in two ways. Dissolution testing determines if the generic drug product dissolves in approximately the same amount of time as the innovator product. Blood-level testing is done by giving the generic drug product to humans and measuring how much of the drug enters the bloodstream, how fast it does so, and how long it takes to leave the body.


Board of Appeal Interferences.

Bolar Provision:

An Exemption which states that it is not an infringement to make, use, offer to sell, or sell within- or import into – e.g. the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products. A specific ‘Bolar’ type exemption has been included in Directive 2004/27/EC which allows for: conducting the necessary studies and trials with a view to the application of [the abridged procedure for obtaining a marketing authorization for generic medicinal products] and the consequential practical requirements shall not be regarded as contrary to patent rights or to supplementary protection certificates for medicinal products.”
Other Countries having similar exemptions include, Australia, New Zealand, Argentina, Japan, Canada and Malaysia. The wording of the EU exemption is narrower than that for the US.

Budapest Treaty:

A Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. See http://www.wipo.int/treaties/en/registration/budapest/index.html.

CAFC (Court of Appeals for the Federal Circuit):

All patent decisions are appealed to this court rather than to the Appellate Courts throughout the United States. While the CAFC decisions can be appealed to, and overturned by, the Supreme Court, the Supreme Court takes few patent cases and so the CAFC is the court which primarily determines the patent law.

Cease and Desist:

A letter written by a Patent owner to an alleged infringer, ordering the alleged infringer to stop making, using, selling, or offering for sale the patented Invention. The matter should never be ignored and may result in an injunction to stop the infringing activity. In many cases the order will come with a proposal to negotiate a license from the patent owner..

Certificate of Correction:

Issued upon patentee request due to a USPTO or applicant minor error in the patent such as printing, typographical, or clerical errors.


The Supreme Court has discretion as to which cases it wants to hear and decide. To have the Supreme Court review a lower court decision, a litigant must petition the Supreme Court on a writ of certiorari. If the Supreme Court grants the petitioners request for certiorari, the litigants prepare appeal briefs and the Supreme Court hears the case. The Supreme Court grants certiorari on about 1% of the certiorari petitions.

Chapter One (PCT):

The first, mandatory phase under the Patent Cooperation Treaty (PCT). This phase includes an international-type search, issuance of an International Search Report and publication of the application and Search Report by the International Bureau of WIPO.

Chapter Two (PCT):

Second stage in PCT. Extra fee for International Preliminary Examination Report (IPER) and defer national phase Entry for 30/31 months (country dependent).

Characterizing clause (EP):

The part of a German or European style claim that indicates the novel features of the invention.


See Continuation-In-Part below.


The part of a patent specification that defines the legal scope of the protection sought by an inventor. Each claim is a single sentence in a legalistic form that defines an invention and its unique technical features. A valid claim is one that reads on the invention described in the specification but does not read on any prior art. Each and every Claim must be clear and concise and supported by the description.


A term relating to both Patents, Trademarks and Designs. Classes allow technical and descriptive matter to be categorized and searched.

Clean hands doctrine:

The principle that equitable relief such as enforcement of patent rights by an injunction can be granted only to one who has acted in good faith.

Combining Prior Art:

Under Section 102 of the US Patent Statute, a claim must be identically disclosed in a single prior-art reference in order to be rejected as being anticipated by prior art. Under Section 103 of the Patent Statute (which deals with the standard of obviousness) one is permitted to employ a single prior art reference, or may combine two or more references to render a claim obvious if such a combination would be apparent to one skilled in the art. In both cases a patent examiner can reject a patent application, or a patent claim can be ruled invalid by a court.

Community Patent (EP):

A proposal for a single Patent application to be Granted for the whole of the 25 European Union States. Does not yet exist (2005).

Community Trademark (EP):

A mechanism allowing a single application to be given uniform Trademark protection and to be enforceable in all 25 European States.


The word “comprising” in a claim renders the claim open to allow for additional elements that could be added to the alleged infringing device without avoiding infringement. For example, if a claim stated that a chair had three legs and employed the word “comprising,” a chair having four legs would infringe. At the other end of the spectrum is a closed claim, which uses the expression “consisting of.” This means that in a product alleged to infringe, if meaningful additional elements are added to the features recited in a claim there is no infringement. These types of claims frequently appear in the chemical and metallurgical arts. A Universal term.

Common Law Rights:

Property or other legal rights that do not absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual. Active Federal registration of trademark can provide a higher degree of legal protection and readily demonstrated evidence of ownership of a mark. Universal term.


This is the creation of the mental concept of the invention. Invention is considered in two parts . First there is the Conception of the idea and secondly there is it’s Reduction to Practice

Confidential disclosure:

Self explanatory, disclosure in confidence of an invention to another party. Universal term.

Constructive reduction to practice:

The filing of an adequate patent as evidence of having fully worked out the invention.

Constructive Reduction to Practice:

A reduction to practice involves physical verification of the operability of the invention or its suitability for its intended purpose. When an applicant files a US patent application he/she obtains a constructive reduction to practice as at the filing date.

Contact Address:

The address to which a Patent or Trademark Office will send all correspondence relating to a particular application.

Continuation Application:

This is a patent application directed toward the same invention as a prior application and filed while the prior application is pending, naming the same inventive entity. The continuation application is given the benefit of the earlier filing date of the application on which it is based.

Continuation-in-Part Application:

Continuation-in-Part (CIP). An application filed during the lifetime of an earlier non-provisional application, often repeating a substantial portion or all of the earlier non-provisional application and adding matter not disclosed in the earlier non-provisional application .

Continuation Patent Application:

CPA. Continued Prosecution Application. A continuation or divisional application filed in a design application under 37 CFR 1.53(d). NB: CPA’s may no longer be filed in utility and plant patent applications, effective 14 July 2003.

Continuation application:

A new filing of a US application, with unaltered specification to allow presentation of new claims.

Continuation in part application:

A new filing of a US application, with alterations or additions to the specifications.

Contracting State (EP/PCT):

A national Patent Office that is party to the Patent Cooperation Treaty. See http://www.wipo.int/pct/en/.

Convention Country:

A state, which is a member of the Paris Convention for the Protection of Industrial Property. A Universal term.

Convention year:

A period of 12 months from a first application in a convention country within which applications having the effective date of the original filing may be filed in other convention countries. N.B. 6 months for TM and designs. A Universal Term.


An Intellectual Property Right. An Automatic that protect works of authorship, such as writings, music, films, computer software and works of art that have been tangibly expressed. In the US, the Library of Congress registers copyrights. In the US the term of copyright last for the lifetime of the author plus 70 years. In most countries the term is the author’s lifetime plus 50 years.


An application filed in a foreign patent office that is substantially similar to (like) the patent application filed with the USPTO and is based upon some or all of the same invention. The two applications would generally have the same applicant. Called an Equivalent in other jurisdictions.

Critical Date:

This refers to the date of the initial placing on sale, publication, or public or commercial use of an invention. At the end of the one-year period, a US patent application cannot be filed because the statute bars such filing. A Universal term.

Crowded Art:

This refers to an area of technology in which there have been a large number of prior inventions. In a crowded art, it takes less of an advancement to obtain a valid patent. A Universal term.

Dedication to the Public:

A document signed by a patent owner filed in the U.S. Patent and Trademark Office giving up all patent rights. This is generally done when the owner believes the patent is invalid.

Demand (PCT):

Form PCT/IPEA/401 that is filed with an International Preliminary Examining Authority (IPEA) demanding that an international application shall be the subject of an international preliminary examination.

Dependent claim:

A Claim that makes express reference to and depends on an earlier claim. Such a Claim by definition incorporates by reference all of the recitals of the earlier claim from which it depends. A Dependent Claim must be read as containing its unique one or more additional feature plus the recitals of every claim or claims from which it depends.


In a US infringement suit, the pre-trial stage of taking down evidence on oath.


That part of a Patent application giving sufficient instruction to enable a person of ordinary skill in the art to make or perform the invention. The description forms the basis for the Claims. The description can cover subject matter broader than the Claims. The Claims may never be broader than the description.

Designation (EP/PCT):

The naming of the countries and Regions for which a European or PCT application is being filed. In most instances all countries and Regions are designated.

Designated Office (EP/PCT):

Designated Office. The national Office or intergovernmental organization of or acting for the Contracting State designated by the applicant under Chapter I of the Patent Cooperation Treaty.

Design Patent:

A type of patent covering the new, original and ornamental aspects of an article of manufacture (product). The prime focus is on the overall appearance of the new product. An application will also contain a textual description of the product.

Diligent Searcher:

A substantive search looking at the state of the art at the earliest date of Filing of the Patent. Using the “diligent searcher concept” the search agency conducts an investigation of the art without knowledge of the scope of the claims or of the “invention”. The Diligent Searcher simply knows the problem the invention purports to solve. It is permissible to cast the problem using the terminology from the patent specification as long as it does not delineate the solution but simply sets the bounds for the search enquiry


The exclusion of specific subject matter from the scope of protection claimed.


This term can refer either to an invention disclosure of an product or method that is not the subject of a patent application and may be use, display or an oral or written communication of a development. The term can also refer to portions of a patent application, generally those parts other than the Claims. A Universal term.


A court order to parties in an infringement action to produce relevant documents. Here the courts have the power to order a person who has not committed any infringing act, but who has innocently become involved in assisting others to commit infringement, to give full information and disclose the identity of the infringers. 

This type of order for discovery against an innocent party enables a person to discover the identity of any infringer who is manufacturing, importing, supplying or putting the infringing goods into circulation. This type of action is more effective than numerous separate actions against individual retailers.

Doctrine of Claim Differentiation:

This is a judicially created rule of Claim construction that states that when two claims in the same patent have an apparently similar or identical meaning, an effort should be made to adopt an interpretation that will give them a different (as distinguished from identical) meaning.

Doctrine of Equivalents:

A doctrine which says that if a patent claim does not literally read on a possibly infringing device, it can be read more broadly providing it does not read on the prior art. It is designed to allow the inventor to assert a patent where the differences between the inventor’s and an infringer’s product are not substantial. (See Hilton Davis Chemical Company v. Warner-Jenkinson Company, Inc. 93-1088). A Universal Term.

Double Patenting:

A doctrine that states that an invention cannot be twice patented. An inventor cannot obtain claims in two patents directed either to the same invention or to an obvious variation of the same invention. Where the inventions are identical, the second patent is invalid. With respect to obvious variations, this rejection can be overcome by filing a terminal disclaimer which states that the second or any additional patents to issue will expire on the same date as the first patent, thereby eliminating any improper extension of the period of exclusivity resulting from the second or additional patents.


Patent drawings must show every feature of the invention as specified in the Claims. Omission of drawings may cause an application to be considered as incomplete. Apparatus Claims must be accompanied by drawings showing the inventive feature(s). This is also important for Provisional Applications.

Due Diligence:

The process of investigation, performed by investors, into the details of a potential investment or agreement, such as an examination of operations and management and the verification of material facts.

Early publication:

Publication of an application before examination. Most countries, including the US now publish before examination 18 months from earliest priority. New Zealand is an exception and makes public the invention only after acceptance of an application.


A manner in which an invention can be made, used, practiced or expressed. It is generally considered to be non-limiting and fulfils the best-method obligation.

Enabling disclosure:

A description sufficient to enable the reader to carry out the invention.

En banc:

Normally an appellate court such as the CAFC randomly assigns a panel of three of the court’s full complement of 12 (or more) judges to consider each case. When the whole court considers a case it is called an en banc decision and is generally done to address fundamental and controversial issues that have been before the court and so has very strong value as precedent.


The right of the patent owner to bring an infringement suit against an alleged infringing party who, without permission, makes, uses or sells the claimed invention. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action. See 35 USC 286-296


Electronic Patent Assignment System. See Also eTAS.


European Patent Office. See http://www.european-patent-office.org/index.en.php.


The extension of the scope of a patent to cover something outside the literal wording of the claims.

Equivalent (EP):

An application filed in a foreign patent office that is substantially similar or equivalent to the first filed patent and is based upon some or all of the same invention. The two applications would generally have the same applicant and priority date.


The barring of a person from claiming a legal right because of an earlier act incompatible with his claim, e.g. File Wrapper Estoppel.


Electronic Trademark Assignment System.


electronic Trademark Examination Application System – electronic trademark filing system. It allows the public to complete various trademark filings and transactions on-line. For example, eTEAS allows you to complete trademark Applications, preliminary amendments, amendments to allege use/statements of use in responses to Office Actions, and post registration filings online, and then submit them directly over the Internet, paying by credit card, electronic funds transfer or an existing USPTO deposit account.

European Patent (EP):

Allows an applicant to file a single application covering all 25 EPC Contracting States. A European Application must be filed in an “Official Language”, either German, French or English. In most contracting states for a Patent to take effect it must be validated for that Country.


A Scrutiny by an Official of a National Department or Region of an application to determine acceptability of a Patent, Trademark or Design. Patents are Examined to determine if an invention is novel, contains an inventive step (not obvious) and is industrial applicable (useful).

Exclusive license:

A license that excludes use of the invention by all others, including the patentee himself. A Universal Term.


180-day exclusivity is the marketing exclusivity granted to the first applicant that files an ANDA with Paragraph IV certification.

Excusable Non-Use:

A Trademark term relating to a Section 8 application for non-use. A sworn statement, filed by the owner of a registration, that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Section 8 of the Trademark Act, 15 U.S.C. 1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 

(1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946), and 
(2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration. 

Once the USPTO accepts the Section 8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another Section 8 Declaration until the next statutory filing period.

Exhaustion of rights (EP):

The principle that when the patented goods have been sold by the patentee, he has no further control over them. A Universal Term.

Ex parte:

A procedure between a single party and a decision maker, as opposed to inter partes which is a procedure between a two parties with a decision maker. The patent prosecution process is an ex parte procedure.

Experimental Use:

Under Section 102(b) of the US Patent Statute, there are a number of statutory bars which state that one cannot file a US patent application more than one year after the initial placing on sale, publication, or public use of an invention. If the use was, in fact, experimental use rather than public or commercial use, such use is not counted in computing the one-year period. The experimentation must be to verify that the invention works for its intended purpose as distinguished from other factors such as marketing research. In addition, exceptions are allowed for in Canada and NZ allowing manufacturers of generic products to circumvent patent infringement liability if they make, sell, conduct field trials or experiments in respect of a patented product, regardless of the extent of those activities as long as they can prove that the use was to obtain regulatory approval for the product.

Express Abandonment:

A patent application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment becomes effective when an appropriate official of the Office takes action thereon. Express abandonment of the application may not be recognized by the USPTO before the date of issue or publication unless it is actually received by appropriate officials in time to act. Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one, which is removed from the USPTO docket of pending applications.

Extension or prolongation of term:

Prolongation of a normally fixed term such as the life of a patent.

File history or file wrapper:

The dossier containing all papers relevant to the prosecution of an application.

File wrapper estoppel:

A principle forbidding the patentee from asserting a scope broader than the literal wording of the claims if the claims are narrowed during prosecution to avoid prior art.

Filing Date:

The date of receipt in the Office of an application which includes 
(1) a specification containing a description and, if the application is a non-provisional application, at least one claim, and 
(2) any required drawings.

Final rejection:

An official action severely limiting further prosecution. An Office action on the second or any subsequent examination or consideration by an examiner that is intended to close the prosecution of a non-provisional patent application. An Applicant’s reply under 37 CFR 1.113 to a final rejection is limited either to an appeal in the case of rejection of any claim to the Board of Patent Appeals and Interferences (37 CFR 1.191) or to an amendment complying with the requirements set forth in the Office action (37 CFR1.114 or 1.116). Reply to a final rejection must comply with 37 CFR 1.114 or include cancellation of, or appeal from the rejection of, each rejected Claim. If any claim stands allowed, the reply to a final rejection must comply with any requirements or objections as to form (37 CFR1.113(c)).

Fingerprint claim:

A claim characterizing a new product of an unknown structure in terms of its properties.

First to File (EP):

In the European patent system, the patent is awarded to the first person to file an application on that invention independent of who was the first to invent. (cf First to Invent).

First to Invent:

In the United States the patent is awarded to the first person to make an invention independent of who was the first to file an application for that invention. (cf First to File).

Foreign filing:

Filing in countries other than the country of first filing.

Forum shopping:

Legal maneuvering to try to have a suit heard by a court thought favorable to one’s own side.


Franchising may be defined as a business arrangement which allows for the reputation (goodwill), innovation, technical know-how and expertise of the innovator (franchisor) to be combined with the energy, industry and investment of another party (franchisee) to conduct the business of providing and selling of goods and services. The franchisee will operate under the franchisor’s Tradename, usually with the franchisor’s guidance, in exchange for a fee.

Fraud on the Patent Office:

Obtaining a patent by concealment or misrepresentation of the facts.

Generic drug:

(multisource pharmaceutical) is a pharmaceutical preparation that is essentially similar to an original product, involves an active ingredient that is no longer protected by patent, is approved for sale by a simplified registration, and is sold under a common name with little, if any, promotion.

Generic claim:

A claim that covers a number of compounds defined by common structural features.

Geographical Indication:

A sign used on goods that has a specific geographical origin and possesses qualities or a reputation that are due to that place of origin, e.g. “Roquefort” for cheese produced in France.


The benefit and advantage of the good name, reputation and correction of a business with its customers, suppliers, and distributors”. It is often referred to as the attractive force, which brings in custom.
 Goodwill as the subject of proprietary rights cannot exist by itself. It has no independent existence apart from the business to which it is attached. In an acquisition, goodwill appears on the balance sheet of the acquirer in the amount by which the purchase price exceeds the net tangible assets of the acquired company. The most obvious form of goodwill is seen as the name, sign or trademarks under which a business trades and by which it is recognized in the market place.

Grace period:

A period of time before the filing date of an application during which certain types of publication do not invalidate the application. From the date of first disclosure or publication, the US has a 12 month Grace period for filing an application.

Hague System:

A system for the International Registration of Industrial Designs. See http://www.wipo.int/hague/en/.

How to Make:

This is part of the obligation to provide a disclosure in the patent application that would enable one skilled in the art to practice the invention without engaging in undue experimentation.

How to Use:

This is a similar standard to the “how-to-make” standard and relates to the use aspect of an invention, if appropriate.


Information Disclosure Statement:

A USPTO or AIPO requirement for the applicant to provide all relevant prior art to the Examining authority at the time of a Patent Application and throughout the course of its prosecution. It is predicated on the belief that the Inventor knows more about the invention as Claimed than does the Examiner. Often abbreviated to IDS. Failure to provide relevant information may invalidate the patent.

Improvement Patent:

Refers to a patent that is issued on an application filed later in time than a prior application and tends to build upon the previously disclosed invention or the previously disclosed and claimed invention.

Indefiniteness of Claim:

Section 112 of the Patent Statute requires that the claims be sufficiently definite so as to provide a standard by which a third party could, with some degree of certainty, determine whether a given practice would or would not be an infringement of the claims.


(1) Doing something forbidden by the grant of a patent to another. (2) Encroach or trespass on the rights of others, usually involving intellectual property. A device infringes on a patent if the claims of a valid patent read on that device. Infringement can be direct or Literal Infringement, infringement under the Doctrine of Equivalents, Contributory Infringement or Active Inducement to Infringe.


Any party that who makes, uses, sells, places on sale, or imports into the country where the patent is in force the invention as claimed.

Independent Claims:

Claims that do not depend from another are referred to as independent Claims.


A court order obligating an offending party to cease doing an illegal act, such as infringing another party’s Intellectual Property Rights.


A wonderful Resource for obtaining Patent Information. INPADOC is one of the most comprehensive patent collections in the world. Produced by the European Patent Office and updated weekly, this database contains patent family documents and legal status information from 65 WIPO signatories and 22 patent offices, respectively. See http://www.european-patent-office.org/inpadoc/.

In re Pardo:

An important precedent that says that something does not cease to become patentable merely because the point of novelty is an algorithm. (Scheme or plan).

Intangible Asset:

Something of value that cannot be physically touched, such as a brand, franchise, Trademark, Copyright, or Patent. The opposite of a tangible asset.

Intellectual Property:

Creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. 
 Intellectual property is divided into two categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs.

Intellectual Property Regulations (37 CFR) Index:

A list of the Rules concerning Patents, Trademarks, Designs and Copyrights in the US. See http://www.bitlaw.com/index.html


A distinct feature or element of a claim.


A procedure declared by the patent office when it appears that two or more people made the same invention at roughly the same time. It is an expensive, lengthy court-like proceeding designed to determine who was the first inventor. About 1/10 of 1% of patents are involved in interference.

International application (PCT):

An application made under the provisions of the PCT.

Inventive Step (EP/PCT):

Inventive step goes to a feature that is non-obvious and is mandatory to gaining Patent rights.


Someone who has a new idea and pursues its development. Inventors apply for patents on their inventions as a part of developing their invention. Many inventors are also product developers, entrepreneurs and businessmen and most inventors find it good marketing practice to sell themselves as product developers or, entrepreneurs or businessman, as the term inventor often having a bad connotation to a business man.


International Preliminary Examination Authority.


International Preliminary Examination Report Released after Demand has been filed.


International Patent Classification is a hierarchical system in which the whole area of technology is divided into a range of sections, classes, subclasses and groups. The eighth edition of the IPC entered into force on January 1, 2006. See http://www.wipo.int/classifications/fulltext/new_ipc/.


International Searching Authority. There are 12 such authorities, the latest addition being that of Finland.


International Search Report. Usually within 16 months from priority date.

Jepson claim:

Relates to a claim format. A claim in the German style that distinguishes the new from the old features. The new features are generally introduced by the words “the improvement comprising” or “the improvement consisting of” or “the improvement consisting essentially of”.

Junior Party:

The party in an interference who has the later US filing date.


Unpatented technical or commercial information. Can be part of what are considered to be Trade Secrets.

Label license:

A statement that the purchase of the labeled goods gives a license to use them in a patented process.

Language of the proceedings (EP):

The language (French, English or German) in which a European patent application is filed.

Lapse (EP):

A term used in some jurisdictions to show when an IP is no longer protected in a country or system due to failure to pay renewal fees or maintenance fees. In many cases a Patent can be reinstated with good reason and within a limited time period.

Large entity:

Not a small entity: In the US more than 500 employees. In Canada more than 50 employees.

Legal Status:

The legal status of a patent publication includes information about events affecting the patent after the initial publication. Examples of legal status include the publication of a Patent, The publication of Equivalent Patents within the Patent Family, Assignments, Licenses, mortgages and most importantly whether the Patent is “in Force”, Lapsed, Expired or if the Patent Term has been Extended


A legal contract given by a licensor to a licensee the right to use a Patented invention, Trademark, Design or Copyrighted work.

Licenses of right (EP):

An endorsement on a patent to the effect that anyone may have a license upon reasonable terms.

Likelihood of Confusion: A Trademark term.

The statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered. 

 The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: 
(1) the similarity of the marks; and 
(2) the commercial relationship between the goods and/or services listed in the application.

 To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

Lisbon Agreement:

for the Protection of Appellations of Origin and their International Registration. See http://www.wipo.int/lisbon/en/.

Literal Infringement:

A term used to refer to an infringing article or process that contains every integer of a claim (literally).

Long-Felt Need:

Refers to a known problem facing a particular technical area that has gone unsolved for a prolonged period. The presumption is if the solution had been obvious to those skilled in the art, they would have solved the problem.

Lost Profits:

This is a measure of damages and is generally keyed to the profits that could have been the patentee’s, but were lost to the infringer. The alternate standard, where the patentee is either not in the business or cannot prove that profits made by the infringer would have been his or hers, is to employ the standard of the statute that is not less than a reasonable royalty.

Locarno Classification:

The International Designs Classification System. See http://www.wipo.int/classifications/fulltext/locarno/enmain.htm.

Madrid Protocol:

A Trademark term. An mechanism that allows the owner of a Trademark registered in one country to apply for protection of that Trademark in other countries within the system. Administered by WIPO. See http://www.wipo.int/madrid/en/.

Maintenance fees:

Annual fees payable to keep a patent application pending. In the US, maintenance fees must be paid at 3.5, 7.5, and 11.5 years after issuance of a patent in order to keep the patent in force and maintain the exclusive right.


The placing the word “patent” or “patent pending” or “Patent application” along with the patent number on articles made by the patentee or a licensee. If the patentee fails to mark his or her products, then the patentee may recover only damages for infringement that occurred after the infringer has received actual notice through a charge of patent infringement. Mandatory in some countries before an infringement action can be issued. Also Called Notice.

Markush Group:

A group of compounds or substituents defined for the purpose of a patent claim and lacking a common generic description.

Means Plus Function Claims:

Goes to equivalence. This concept allows an applicant rather than referring to a component by a specific, limiting term or feature such as “a screw” or a “nail” but may instead refer to a feature as a means for accomplishing something. For example a “screw” or “nail” may be refer to as a “a fixing means for uniting A with B.”


A method of alternative dispute resolution in which a mutually agreed on mediator works with the disputing parties to help them reach an agreement. While mediation has a high rate of success in resolving disputes, in contrast to arbitration, a mediator has no authority to force a decision on the parties.

Mere paper anticipation:

Misnomer. Part of Obviousness. An untried paper provisional is of little value.

Mere Descriptiveness:

A Trademark term. A statutory basis (Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. 

The degree of descriptiveness can be determined only by considering it in relation to the specific goods or services. At one extreme are marks that are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks.

The major reasons for not protecting descriptive marks are: 
(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and
(2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.


The combining of two or more entities into one, through a purchase acquisition or a pooling of financial interests.

Minimum Documentation (PCT):

The minimum requirement for a patent office collection that is used to find prior art documents (patents and periodicals) in order to assess novelty and inventiveness. See http://www.wipo.int/scit/en/standards/.

Moral Rights:

Specific rights retained by the author of a copyrighted work to maintain the integrity of a work. Also gives the author the right to be named as the originator or creator of the work even after the copyright to it has been sold.

Multiple Claim Dependency:

A dependent claim that further limits and refers back in the alternative to more than one preceding independent or dependent claim. Acceptable multiple dependent claims shall refer to preceding claims using the terms “or, any one of, one of, any of, either.” In the US, a multiple dependent claim may not depend on another multiple dependent claim, either directly or indirectly.

Multiple Inventions:

This term refers to an application that endeavors to Claim more than one invention in a single application. In most instances an Objection will be the result. Separate inventions may be divided out as Divisional Applications and maintain their original Filing Date.

National phase (PCT):

Leave PCT International Phase and file in one or more individual countries or regions.


, New Drug Application, is the process of obtaining approval from FDA to market a new drug.

National route (EP/PCT):

Obtaining patents in EPC countries by separate applications at national patent offices or filing elsewhere outside of the PCT.

Nice Classification:

A Trademark term where good and services are divided into separate Classes according to a Nice Convention on International Classification. There are presently 45 Classes, 34 relating to goods and 11 relating to services. See http://www.wipo.int/classifications/nice/en/index.html.

Non-convention application/filing:

An application that does not claim priority from an earlier application, although one exists.

Non-exclusive license:

A license that does not exclude the possibility of further licenses being granted.

Non Final Office Action:

An Office action made by the examiner where the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment.
 On taking up an application for examination or a patent in a reexamination proceeding, the examiner is required to make a thorough study of the application and of the available prior art relating to the subject matter of the claimed invention. This examination must be complete with respect to:
 (1) compliance of the application or patent under reexamination with the applicable statutes and rules,
 (2) the patentability of the invention as claimed, and

 (3) matters of form, unless otherwise indicated.

Non-unity (EP/PCT):

The condition of an application claiming more than one invention. Also referred to as Multiple Inventions.

Notice of Allowance:

A written notification from the USPTO that a specific application has been allowed. In the Case of a Trademark it indicates that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration. 
 Notices of allowance are only issued for applications that have been filed based on “intent to use”. 
 The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned.

Notice of Appeal:

A document filed by the applicant in the USPTO to initiate an appeal of an Examiner’s rejection to the Board of Patent Appeals and Interferences.


One of the essential conditions for patentability. It is a requirement that what is claimed is new. Novelty is present if no single document discloses every element of the Claimed invention.

Object clause:

Part of the patent specification stating the object to be achieved by the invention.


Apparent to the averagely skilled man in possession of all the relevant prior art. Prior art may be combined to show that an invention would have been obvious. In ascertaining whether an application is obvious, prior art teachings may be combined. If an invention would have been obvious to a person of only ordinary skill in the art at the time the invention was made, then it is not patentable.

Obvious to Try:

Goes to obviousness. The validity of a patent can be challenged by attempting to show that what the inventor given a particular problem did would have been obvious for an ordinarily skilled practitioner to try, based on the prior art. As such the invention would have been obvious.

Official action:

Communications from the Patent Office examiner raising objections to a patent application. After receiving an adverse office action, the applicant must respond within the set time limits. Six months in the US. A Universal Term.


A Trademark term relating to “The Office For The Harmonization In The Internal Market”. An administrative arm of the EC whose role is to register Community Trademarks and Community Designs. A single application can be protected and enforced in all 25 European States. See http://oami.eu.int.

On Sale:

If an inventor places his or her invention on sale more than one year before a US patent application is filed, then a valid patent cannot be obtained. This is sometimes referred to as the on-sale bar to a patent. An invention is on sale where it has actually been sold or an offer of sale has been made.


A proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to prevent the issuance of a registration of a mark. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. Any person who believes that he or she will be damaged by the registration of a mark may file an opposition. See Aggrieved Person, but the opposition may only be filed in response to the publication of the mark in the Official Gazette.

Orange Book

is the common name of “Approved Drug Products with Therapeutic Equivalence Evaluations,” the FDA publication that lists, among others, patents protecting the active ingredient, formulation, and method of use of a drug product.

Ordinary Skill in the Art:

A hypothetical state. The level of technical knowledge, experience, and expertise possessed by the run-of-the-mill or ordinary engineer, scientist, or designer in the technology (or technical team) that is relevant to the invention. Fundamental to an Obviousness defense. Obviousness is measured with reference to a hypothetical person having ordinary skill in the art to which the invention pertains. The Ordinary skilled practitioner is considered to have no inventive capacity.


Patent Application Information Retrieval. An excellent USPTO product that provides secure access for customers who want to view current patent application status electronically via the Internet. See http://portal.uspto.gov/external/portal/pair.

Paragraph IV certification

is a declaration that a patent listed in the Orange Book is invalid or will not be infringed by the generic drug in an ANDA.

Paris Convention:

Refers to the Paris Convention for the Protection of Intellectual Property first signed in 1883 and updated again several times, the last being September 1979. See http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html.


A document issued by the patent office that purports to give an inventor the exclusive right to make, use and sell an invention as specified in the claims of that patent. A patent, which is the mature form of a patent application, consists of drawings of the invention, a specification explaining it, and claims that define the scope of exclusivity. A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.


The basic requirements needed to gain monopoly rights. An invention has to be novel, inventive (non-obvious) and capable of being industrially applied (useful).

Patent Application:

A document submitted by an inventor requesting to be issued a patent in respect of an invention described in the specification which accompanies the application.

Patent Family:

All the Patents filed worldwide relating to a particular application, with a common priority date.).

Patent misuse:

Any attempt to extend the scope or effect of a patent beyond that granted by law.

Patent of addition or Modification (EP):

A patent for a non-inventive improvement in, or modification of, the subject of an earlier patent, which expires with the earlier patent. No renewal fees are incurred.

Patent Pending:

A phrase that often appears on manufactured items. It means that someone has applied for a patent on an invention that is contained in the manufactured item. It serves as a warning that a patent may issue that would cover the item and that copiers should be careful because they might infringe if the patent issues. Once the patent issues, the patent owner will stop using the phrase “patent pending” and start using a phrase such as “covered by US Patent Number xxxxxxx.” Applying the patent pending phrase to an item when no patent application has been made can result in a fine. See Marking above.


An International Patent Cooperation Treaty administered by WIPO (The World Intellectual Property Organization). The Patent Cooperation Treaty is charged with simplifying and reducing costs of obtaining international patent protection and facilitates public access to a wealth of technical information relating to inventions. See http://www.wipo.int/pct/en/.


PCTFILER Holdings Pty Ltd is a patent administration company with offices in Sydney and New York. This company offers a low-cost option for “Nationalizing” PCT applications through it agents in 19 industrialized countries www.pctfiler.com.


PCTreminder is a free automated web-based reminder service for patent attorneys and IP Management Departments. It is designed so that those important milestones in a PCT application (or a Paris Convention application for that matter) can be tracked easily and simply and acted upon as appropriate.


Earlier legal rulings. One of the basic principles of law is stare decisis (that which has been decided stands). Once a principle has been determined in a case, all other cases must follow the same principle. In fact such decisions can change, but rarely and with due consideration. In fact such decisions can be changed, either by being overruled by a higher court or by a change in the relevant statute. Precedent tends to be given more weight in common law countries, e.g. UK, US, Australia, New Zealand, than in civil law countries, e.g. most European countries (A well known UK example is Brown v. Board of Education (1954) which overruled Plessy v. Furgesson (1896)).

Pre-characterizing clause (EP):

The part of a German or European style claim, which recites the features of the invention that are already known. The novel aspect of the invention is introduced by the words “Characterized by” or “Characterized in that”. See Jepson Claim.

Prior Art:

(1) In a broad sense, technology that is relevant to an invention and was publicly available (e.g. described in a publication or offered for sale) before the relevant priority date, 
(2) in a narrow sense, any such technology which would invalidate a patent or limit its scope. The process of prosecuting a patent or interpreting its claims largely consists of identifying relevant prior art and distinguishing the claimed invention from that of prior art.

Priority date:

The date on which an invention was first disclosed to a Patent Office in the application in question or in an earlier application from which it validly claims priority.

Priority document:

The patent application from which subsequent applications claim priority. The Paris Convention enables an inventor to file in a first country and Claim priority for a period up to 12 months for Patents and up to six months for Trademarks and Designs for filing an application in other countries.

Product by process claim:

A claim to a product when made by a specified process. Goes to novelty.

Product developer:

Someone who develops a product usually including visualizing what that product should be and assembling the resources needed to design and develop the product in contrast to an entrepreneur. A product developer may be an inventor.

Product per se claim:

A claim to a product irrespective of how it is made.


Overly worded claims. Repetitious claims.


The process in which an inventor or his lawyer engage with the patent office to obtain a patent and determine the scope of its claims.

PTO (Patent and Trademark Office):

In the US, the USPTO is the office of the Department of Commerce that is responsible for examining and issuing patents.

Provisional specification:

Formerly, a brief description of the invention filed with an application, to be followed by a complete specification.

Public Use:

A prior public or commercial use of an invention before Filing. In the US, public use is allowed up to 12 months before filing a Patent Application. See Grace Period above.

Reads On:

A claim reads on something, if every element of that claim is present in the document with which it is being compared i.e. reads on. If a claim reads on prior art, then the claim is invalid. A claim must read on an accused device for infringement to occur.


That evidence which is before the court or patent office on which a decision can be made. In a patent prosecution that consists of such things as the inventors’ oath, the patent application, any affidavits submitted, and any prior art.

Reduction to Practice:

There are two limbs to this term. Actual and Constructive. Actual reduction to practice refers to the physical manifestation of the Invention. It refers to the actual making of the apparatus, article, compound or composition. In the case of a process or method it is to the actual carrying out of the method or process steps. Constructive reduction to practice is usually completed by the filing of a Patent Application that provides sufficient information for an ordinary skilled but otherwise unimaginative worker to make and use the invention without undue research or experimentation.


A new procedure whereby the patentee or a third party can ask the patent office to review a granted patent in the light of new prior art.

Reduction to practice:

Completion of the inventive act by carrying out the invention and finding a use for it.


Abandonment of a first filed application and filing a new application with essentially the same specification.


A procedure by which defects in a granted US patent may be corrected on application by the patentee. An application for a patent to take the place of an unexpired patent that is defective in one or more particulars, items, or details.


An adverse ruling by an Examiner in an Office Action.

Renewal fee:

A fee payable at designated intervals to maintain a granted patent, Registered Trademark or Registered Design in force. If Renewals fees are not paid, the Right is said have lapsed.

Request for Re-examination:

A request to the Board of Appeals to reverse its own adverse decision.

Request to Reinstate:

If an application is abandoned due to a USPTO Office error, an applicant may file a request to reinstate the application, instead of a petition to revive. There is no fee for a request for reinstatement. You must file a request for reinstatement within two months of the issue date of the notice of abandonment. You must include a true copy of the document that was timely submitted, and a copy of an acceptable form of proof of receipt in the USPTO.

Restriction requirement:

A demand by the examiner that the applicant limit his application because of non-unity. If two or more independent and distinct inventions are claimed in a single application, the examiner may require the applicant to elect (designate) a single invention to which the claims will be restricted (limited to). This requirement is known as a requirement for restriction (also known as a requirement for division). Can be made at any time before final Action (final rejection). (– see 37 CFR § 1.141 and § 1.142)


A payment made for the use of an Intellectual Property Right, such as a Patent, Trademark, Design, Franchise or Copyrighted work. The amount paid is usually a percentage of any revenue obtained through its use.

Second pharmaceutical use claim (EP):

Similar concept to a “Swiss-type” Claim: a claim that attempts to protect the invention that a compound already known as a pharmaceutical has a new unrelated pharmaceutical use.

Section 8 Declaration of Incontestability:

A Trademark term. A sworn statement, filed by the owner of a registration that the mark is in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods:
 (1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946), AND
 (2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.

Section 9 Renewal Application:

A Trademark term. A sworn document, filed by the owner of a registration, to avoid the expiration of a registration. Federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods. Trademark owners have a total of 18 months to file a §9 Renewal Application. 
 The §9 Renewal Application may be filed one year prior to the registration expiration date or during the 6-month grace period immediately after the date of expiration. If the §9 Renewal Application is not filed or is filed after the grace period ends, the registration will expire. Because the due date of the 10-year §8 Declaration coincides with the due date of the §9 Renewal Application, the USPTO created a form entitled “Combined Declaration of Use in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9″.

Section 15 Declaration Of Incontestability:

A sworn statement, filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified. An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 15 U.S.C. §1065. 
 Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed. A §15 Affidavit may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

Senior party:

The party in an interference who has the earlier US filing date.

Serial number:

A six-figure number allocated to an application on filing.

Service Mark:

A Trademark term relating to a word, name, symbol or device that is to indicate the source of the services and to distinguish them from the services of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are often used to refer to both trademarks and service marks. Universal Type of Trademark also called a Certification Mark. An Example is the Trademark “Registered Master Builders”.

Shop right:

The right of an employer to a free license under a patent belonging to an employee, if the invention was made using the employer’s facilities.


Evidence of unexpected superiority filed to overcome an objection of obviousness over prior art.

Small entity:

The patent statutes distinguish two type of applicants, small entities and large entities for the determination of fees. Small entities often pay about half of what a large entity would for the same service. A small entity includes companies with less than 500 (employees, non-profit, and academic institutions). Often the term is used informally to distinguish the smaller, new and more entrepreneurial inventor entities from the older, larger established ones. A Canadian small entity has 50 or fewer employees.

Sole license:

A license exclusive except that the patentee retains the right to use the invention.

Species claim:

A claim to a single chemical compound, a member of a claimed genus.


The description of the invention filed with the patent application. The specification must describe the invention in sufficient detail so that someone knowledgeable in the art could practice it.


A Trademark term: A factual example showing how a trademark is actually being used. Labels, tags, or containers for goods are considered to be acceptable specimens of use for a trademark. 
 For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8½” x 11″, then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens. Facsimiles may not exceed 8½” x 11″. One specimen is required for each class of goods or services specified in the trademark application.

State of the art:

The total information in the relevant field known to the hypothetical man skilled in the art.

Statement of invention (EP/PCT):

The part of the specification corresponding to the main claim, summarizing the broadest aspect of the invention.

Statement of Use: SOU.

A Trademark term. A sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With a statement of use, the owner must submit:
 (1) a filing fee of $100 per class of goods/services; and 
 (2) one specimen showing use of the mark in commerce for each class of goods/services. 
 Statements of use must be filed within 6 months from the date the USPTO issues a notice of allowance. Failure to submit the statement of use in a timely manner results in abandonment of the application. The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed.

Statutory Disclaimer:

Under 35 USC § 253 (paragraph 1) and 37 CFR 1.321(a), the owner (in part or in entirety) of a patent may relinquish all rights to a complete claim or claims of the owner’s patent.

Statutory Invention Registration:

SIR. A published statutory invention registration contains the specification and drawings of a regularly filed non-provisional application for a patent without examination if the applicant:
 (1) meets the requirements of section 112 of this title; 
 (2) has complied with the requirements for printing, as set forth in regulations of the Commissioner; 
 (3) waives the right to receive a patent on the invention within such period as may be prescribed by the Commissioner; and (4) pays application, publication, and other processing fees established by the Commissioner. 
 A request for a statutory invention registration (SIR) may be filed at the time of filing a non-provisional application for patent, or may be filed later during pendency of the non-provisional application.

Stylized Mark:

One type of depiction of the mark sought to be registered. Another name for this type of mark is “special form” trademark. If the mark includes a particular style of lettering, or a design or logo, the mark is considered to be stylized or in special form. Therefore, applicants must select the “stylized or special form” mark format when applying for these types of marks. The representation of the mark’s page should show a black and white image of the mark, no larger than 3.5 inches by 3.5 inches (8 cm by 8 cm). The mark in special form must be a substantially exact representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.

Substantive examination (EP):

Examination for patentability, as distinct from formal matters.

Substitute Patent Application:

An application which is in essence a duplicate of a prior (earlier filed) application by the same applicant abandoned before the filing of the substitute (later filed) application; a substitute application does not obtain the benefit of the filing date of the prior application.

Substantive Reasons for Refusal:

A Trademark term. There are several substantive reasons for refusing registration of a mark. The reasons for refusal include: 
 (1) likelihood of confusion; the mark is descriptive of the goods or services; primarily geographically descriptive or primarily geographically deceptively; 
 (2) poor or mis-description of the goods or services; 
 (3) the marks is a surname; or
 (4) mere ornamentation.

Suggestive Mark:

A Trademark term. A mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services.

Supplementary Protection Certificate (EP):

A Supplementary Protection Certificate extends the duration of a Patent. It is Granted solely for medicines or plant patents. The maximum extension allowed is 5 years.

Swearing back:

Presenting evidence of an invention date in the US earlier than the publication date of the cited reference.

Swiss type Claim (EP):

A Swiss type claim is of the form “Use of [a known compound X] in the manufacture of a medicament for treating [a particular medical condition Y]”. Swiss type claims are used when a new use for a known pharmaceutical has been discovered.


What happens when two plus two makes five, that is, greater than the sum of its parts. Generally referred to in Pharmaceutical Inventions where the interaction of two or more compounds gives a super-additive effect.

Tangible Asset:

Physical entities, such as cash, equipment, and real estate. For accounting purposes, accounts receivable are also usually considered tangible assets. The opposite of intangible assets.

Therapy (EP):

Therapy is defined as covering any treatment, which is designed to cure, alleviate, remove or lessen, the symptoms of, or prevent or reduce the possibility of contracting any disorder or malfunction of the human or animal body. See http://legal.european-patent-office.org/dg3/pdf/t910024ex1.pdf.


A legal wrong, separate from breach of contract or breach of trust, for which remedies may be obtained by suit in the civil courts.


A Trademark is a distinctive sign or word, or combination of signs that identifies (marks) certain goods and services as coming from or being made by a particular person or proprietor. Once Registered, Trademarks may be renewed indefinitely.

Traditional Knowledge:

Refers to tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks, names and symbols; undisclosed information; and all other tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields. See http://www.wipo.int/tk/en/glossary/.


Trade Related Aspects of Intellectual Property Matters. Part of GATT – General Agreement on Tariffs and Trade.

Utility Model (EP)::

Sometimes called a petty Patent. This type of protection has lower patentability requirements than for a Full Patent. The period of Protection is less than for a Full Patent. Well used in Japan and Germany.

Unity statement::

The part of the specification that states what the invention is useful for.


United States Patent and Trade Mark Office. See http://www.uspto.gov/.


A valid patent is an issued patent that is not invalid for one of several reasons, the most common of which is that one or more of its claims read on prior art that was not considered by the patent office during patent prosecution. While only a court can hold a patent is invalid, many patents are informally referred to as being invalid to indicate that a court would likely rule them so.


World Intellectual Property Organization based in Geneva, Switzerland. Administers and Examines PCT applications. By filing one international patent application under the PCT an inventor can simultaneously seek protection for an invention in over 120 Countries and Regions throughout the world. See http://www.wipo.int/pct/en/.


Howard M. Cohn & Associates has extensive and varied experience in all aspects of Intellectual Property law, with a unique specialty in patent and trademark preparation and prosecution. Schedule an appointment or call us at 800-613-1067.