GLOSSARY OF TERMS
Amendments
An amendment is a response to an examiner office action. The amendment is prepared by the applicant (agent), and will generally re-write one or more claims to make the application allowable, so that a patent will issue. See First Office Action and Second Office Action.
Claims
The claims define, in legal terms, the novel portions of the invention that are patented. The claims are the heart of a patent. Every other part of the patent, the detailed description, drawings, and abstract, are drafted to support the claims. See Sample Patent.
Examiner
The PTO assigns a patent examiner to each application. The examiner will review the application and advise the applicant (agent) whether the claims are allowable. If not, the applicant will amend the claims to overcome a rejection and obtain a patent. The examiner is trained in the area of technology relevant to the invention. The PTO employs more than 7000 patent examiners.
Foreign Patents
A U.S. patent protects an invention from being made, sold, or used in the United States, but not in any foreign country. If protection is needed in foreign countries, then patents must be granted in each separate country. This need will depend upon where the invention will be manufactured and marketed. The cost can be prohibitive. Foreign patent applications must be filed before any public disclosure or demonstration of the invention. See Foreign Patents.
Infringement
Infringement of a U.S. patent means that a patented invention is made, sold, or used in the U.S. by someone not authorized by the patent holder. A U.S patent is a basis for the patent holder to sue the infringer.
Invention Disclosure
Any documents, drawings, photos, etc., that describe an invention are a disclosure. The invention disclosure is provided to the agent by the inventor. The disclosure includes the title, detailed description, drawings, use and purpose, novel aspects, and advantages of the invention. The disclosure is used by a patent agent or attorney to evaluate the invention, perform a novelty search, and draft the specification and claims for the application. See the Disclosure page.
Novelty
The most important rule for granting a patent is that the invention must be novel. This means that the invention must have some feature that is different from anything known beforehand, called prior art. A minor feature added to an invention can convey novelty.
Office Action
An office action is a report prepared by a patent examiner after reviewing a patent application or amendment to a patent application. During the examination procedure, several office actions may be sent by the examiner over months or years. See First Office Action and Second Office Action.
Patent Agent vs Patent Attorney
A patent agent is a person licensed to practice patent law before the U.S. Patent and Trademark Office (PTO). The patent agent is registered with the PTO, and is qualified to prepare and prosecute patent applications for inventors. Patent agents and patent attorneys are considered as equally qualified by the PTO. A patent agent has a degree in science or engineering, has passed the patent bar examination, and can provide all services necessary to obtaining a patent. A patent agent typically will charge less than a patent attorney for the same service. See Attorney or Agent.
Patent Application, Non-provisional
A patent application is a manuscript filed with the U.S. Patent and Trademark Office (PTO) for the purpose of granting a patent for an invention. There are three kinds of patents: utility, design, and plant. A utility patent concerns how an invention works. A design patent shows how an invention looks. A plant patent covers a new variety of plant. The patent application is examined by the PTO. If the examination finds the invention to be both novel and unobvious, a patent is issued.
See the Utility Patents page.
Patent Application, Provisional
A provisional patent application is a document filed to establish a date so that an application filed after yours cannot be used as prior art against you. This gives an inventor more time before filing a conventional patent application. The provisional application is not examined, and does not issue as a patent.
The conventional application, based upon the provisional, must be filed within one year so as to claim the filing date priority. The provisional is inexpensive, and allows the inventor to use patent pending status. The provisional buys time for product development, financing, marketing, manufacturing, or licensing. The provisional will preserve foreign filing rights for one year.
See the Provisional Patents page.
Patent Cooperative Treaty (PCT)
A Patent Cooperative Treaty (PCT) allows one patent application to be filed and examined. If allowed, separate translations and issue fees must be provided for each foreign country. The PCT patent application does not mature into a patent.
Patent Pending
The term "Patent Pending" may be printed on an invention product once a patent application for the invention is filed with the PTO. After a patent issues, patent pending is replaced with the patent number.
Patent Search
A patent novelty search is conducted to find any prior art that would prevent a patent from being issued. If the search uncovers very close prior art that would obviate a patent, then the inventor is advised not to apply for a patent. The patent search today is carried out online on one or more computer databases. The PTO organizes inventions into one or more of 400+ classes and 25,000+ subclasses. Thus, the patent search should be made by experts. See Patent Novelty Search.
Prior Art
Prior art is any item similar to the invention that has existed before the patent application was filed. Prior art can include U.S. and foreign patents, publications, magazine articles, products used by the public, or offered for sale.
Exposure of Invention
Under U.S. patent law, if an invention is publicly exposed more than one year before filing a patent application, the inventor is forever barred from obtaining a patent on that invention. Public exposure occurs in any of these ways:
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a disclosure in a magazine, newspaper, or other printed document anywhere in the world or posted on the internet, that describes the invention.
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a public use of the invention, including presentation at a trade show.
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selling or offering to sell the invention.
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Often, the inventor's marketing effort causes the problem, as when a small manufacturer shows a new product at a trade show. Free exchange of knowledge can be a problem, as when a scientist presents a paper and lecture before an audience, then seeks a patent later.
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Thus, an inventor should keep the invention secret until a patent application has been filed. In foreign countries there is no one year grace period. Any exposure prior to filing prevents a patent from ever being granted.
Rejection
A rejection is a statement made by an examiner that a claim is not acceptable. The examiner will recite this in an office action. Rejections may be for three reasons:
unclear or improper form (112).
not novel over one prior art reference (102).
obvious over several prior art references combined (103).
Rejections may be overcome by claim amendments or arguments in response from the applicant's patent agent or attorney.
Non-Obvious
Another important rule for granting a patent is that the invention cannot be obvious. This means that the invention cannot be a clear and evident variation of an existing item. For example, a specially shaped golf club head made of titanium would be obvious over the same golf club head made of steel. An obviousness rejection is known as a 103 rejection, and can combine multiple prior art references.