Definitions of Patent Terms

Broad v. Narrow Claims

The patent writer will attempt to draft and obtain both broad and narrow claims. While obtaining broad claims results in a stronger patent, getting the patent office to allow them is more difficult than for narrower claims. This is because broad claims give more scope to the protection afforded to the inventor than the narrow claims. The process of getting claims allowed and patent issued is called patent prosecution.

Claims

Claims are statements included in the patent application that "recite" the structure of an invention. Each claim must "particularly point out and distinctly claim" the invention for which the patent is sought. The broader the claim, the wider reach of the patent. Broad claims however may preclude the allowance of a patent. So narrower claims, which narrow the scope of the invention, may recite a novel and non-obvious invention. The tradeoff is that claims must be narrow enough to distinguish the invention from the prior art or previous developments, but broad enough to provide meaningful patent protection.

"Computer-related inventions"

Includes inventions implemented in a computer and inventions employing computer-readable media.

Continuing Applications

It is possible to file continuing applications that extend from an earlier "parent" application. Continuing applications may be filed any time before the last parent application issues to patent or is irrevocably abandoned. Continuing applications must share at least one inventor with the parent application and must claim priority to the parent application. The term of a patent arising from a continuing application is calculated from the filing date of the earliest parent application. See Divisional Application, Continuation in Part Application, and Continuation Application.

Continuation-in-part (CIP) application (U.S. only)

A "continuation-in-part application", also known as a "CIP application", is a U.S. application that adds new matter to a parent U.S. application. CIP applications are used to cover improved versions of an invention that arose more than one year after the priority date of an earlier application for the basic invention. While an independent application for the improved invention may be filed instead, the earlier application may possibly be cited as prior art against the patentability of the later independent application. A CIP application overcomes this problem because the disclosure that is not new matter is deemed to have been filed on the same date as the parent application, therefore the parent application cannot be relied upon by the patent office as prior art.

However, a new, independent application will extend the patent term for the improved invention, i.e. from the filing date of that application.

Continuation application (U.S. only)

A continuation application is a U.S. application for the same basic invention claimed in a parent U.S. application. A continuation application is usually filed after the prosecution of an application has been terminated by an examiner because the services provided for the filing fee have run out. For example, where the examiner has allowed only certain claims, such as narrow claims, and repeatedly rejected broad claims, the applicant may choose to obtain an issued patent on the narrow claims and file a continuation application with the broad claims. This may be useful if it is important to get patent protection to prevent a competitor from infringing, but broader patent protection is ultimately desired.

Some applicants use continuation applications simply to ensure that the disclosure of the original patent application is pending, thereby preserving the ability to file additional claims at any time. This is particularly useful where the original patents claims do not clearly cover an infringing act or where later the validity of the original patent claims may be affected by later discovered prior art. Without a continuation application, the original application could be cited as prior art against subsequent independent applications.

Design Around

Designing or building a device or process that is similar to, but does not infringe on a patented invention. Since the scope of protection afforded by a patent depends on the wording of the patent claims, any device, process or substance containing the same elements described in a patent's claims can be said to infringe on the patent. On the other hand, a device, process or substance that contains fewer or different elements does not infringe, i.e. the claims to not "read on" or literally describe the infringing claim. By studying the claims, it is often possible to build or design an invention that is described in a patent without legally infringing on that patent's claims.

Divisional application

A "divisional application" may be filed when more than one distinct and independent invention (i.e. unconnected by design or operation) is disclosed in a patent application, but the applicant did not prosecute the claims for every invention.

Divisional applications are typically filed when a patent examiner rules an application has claims directed to more than one distinct and independent invention and requires the applicant to restrict the claims of that application to include only one such invention (known as a "restriction requirement"). The applicant does so by "electing" which invention to proceed with in that application. The other inventions may then be pursued in subsequently filed divisional applications. A divisional application may also be filed if the applicant disclosed, but did not claim, an invention in a patent application, providing the invention is patentably distinct from what has already been claimed.

Doctrine of Equivalents

Infringement occurs under the doctrine of equivalents when the two inventions work the same way to produce substantially the same result.

European Patent Convention (EPC)

The EPC is adhered to by approximately 28 European and non-European countries. Member countries have agreed to abide by the decisions of a central European Patent Office (EPO) to grant a "European patent". The provisions of Convention priority are extended to European patent applications, and a European patent can be granted on the basis of a PCT international application.

After a European patent is granted, it must be registered in each EPC member country for which it is desired to have an effect. Registration requires paying national fees and translating of the patent, if necessary. After a European patent is registered in a particular country, it has the same legal effect as a national patent granted directly by that country. Matters of infringement and validity of the granted patent must then be litigated in the national courts.

Independently Created Invention

Non-obvious or Un-obvious

Novel or Novelty

Patent Protection

A patent protects a new and useful processes, machines, articles of manufacture, and compositions of matter as well as new and useful improvements of processes, machines, articles of manufacture, and compositions of matter.

Prior Art

Reissue

The procedure by which an inventor goes back to the patent office to obtain more or different claims. To broaden claims, the reissue application must be filed within two years of the patent's issue. Usually, a patent with only a few claims, or with very narrow claims consisting of long lists of elements, are subject to reissue.

Unpatentable

"laws of nature, natural phenomena, and abstract ideas." Diamond v. Diehr, 450 U.S. 175.

Utility Patent

An invention must be useful or have utility in order to be patented.

Doctrine of Equivalents

Infringement occurs under the doctrine of equivalents when the two inventions work the same way to produce substantially the same result.

Independently Created Invention

Non-obvious or Un-obvious

Novel or Novelty

Paris Convention

The "Paris Convention for the Protection of Industrial Property" allows patent seekers to claim priority through applications filed in foreign countries, i.e. claim "Convention Priority". On the basis of a first patent application filed in one of the Paris Convention countries (or, as provided by the TRIPS Agreement, a country who is a member of the World Trade Organization), the applicant may delay for up to one (1) year filing in other Paris Convention countries. Without the Paris Convention, applications would have to be filed simultaneously in all countries in which protection is desired in order to prevent one application from becoming prior art for other applications. Convention priority therefore allows an applicant to defer the cost and time of filing in multiple countries at the outset.

Patent Cooperation Treaty (PCT)

The PCT facilitates the filing of applications for patents on the same invention in more than one country. An applicant may initiate patent protection procedures in a several countries by filing a single PCT application, commonly referred to as an "international application", and claiming Convention priority. An initial application may be filed in one country or region, followed by the filing of a PCT application within one year of the first application which claims priority to the first application.

The PCT is a patent application filing procedure and not a patent grantor.
The PCT application does not result in an "international patent". National applications must be eventually filed and prosecuted in each country or region for which a patent is sought. A PCT application, however, allows the applicant to defer filing national and regional applications for up to 30 months from the priority date. The PCT application also provides an opportunity to obtain a patent office opinion on patentability and determine the patentability of the invention.

The PCT application procedure does not extend to countries that are not signatory to the PCT; therefore, separate applications must be made in those countries.

Patent Protection

A patent protects a new and useful processes, machines, articles of manufacture, and compositions of matter as well as new and useful improvements of processes, machines, articles of manufacture, and compositions of matter.

Prior Art

Reissue

The procedure by which an inventor goes back to the patent office to obtain more or different claims. To broaden claims, the reissue application must be filed within two years of the patent's issue. Usually, a patent with only a few claims, or with very narrow claims consisting of long lists of elements, are subject to reissue.

Unpatentable

"laws of nature, natural phenomena, and abstract ideas." Diamond v. Diehr, 450 U.S. 175.

Utility Patent

An invention must be useful or have utility in order to be patented.