Innovators Almanac

 

Worldwide knowledge

Be informed. 600+ innovation and intellectual property words and terms.

  • Legal terminology used by attorneys and examiners.
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  • Marketing terminology used by sales/marketing experts.
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Innovation dictionary
 
  • A-B
  • C
  • D-E
  • F-H
  • I-K
  • L-M
  • N-O
  • P
  • Q-S
  • T-Z

35 USC

The section of US statute that defines US Patent law.

Abandoned application

A patent application that is not allowed and its prosecution is terminated. Abandoned applications are normally undisclosed unless they have been published 18 months after the filing date.  See: prosecution.

Abandonment

A forfeit of an application or invention with regards to the governing patent office.  This may be accomplished by some positive act or failure to act within a reasonable or statutorily fixed time and may be either expressly or implied.

Abandonment (of trademark)

A situation in which the owner of a trademark or service mark fails to protest the unauthorized use of the mark by others, does not use the mark for an extended period of time or lets others use the mark without adequate supervision. If a trademark is abandoned, the owner loses his or her exclusive rights to the mark.  See: abandonment.

Absolute novelty

A patent requirement for issuance in most countries of the world. This ruling states that prior public disclosure or sale anywhere in the world before filing of a patent application within a country subject to the Paris Convention will be a bar to obtaining a valid and enforceable patent in those countries. See: novelty.

Abstract

A brief summary of an invention in the body of a patent application that will quickly identify its key features.  It is used to define the general scope and operation of the invention.

Actual reduction to practice

That point in time when an invention is shown to operate in its completed form. When the inventor's concept is embodied in such a way that it is capable of being used for its intended purpose, even if it is not perfect or a commercial success; the first successful experimental demonstration of an invention.

Address for service

The place of record with the governing patent or trademark office for an inventor. Under most patent laws, only one address is affixed to any one given patent application. Usually this is the address of the First Inventor.

AEIC

Acting Examiner in Chief.

Allowance

When a patent examiner finds a claim in a patent application meets the conditions for patentability, and final action on other claims is completed, the application is in condition for allowance. The applicant is notified then that, upon payment of requisite fees, the application will issue as a patent.

Alpha-testing

An early test of new or updated software or hardware conducted by developers prior to beta-testing by potential users. See: beta-testing.

Amendment

An answer to an office action by a United States Patent and Trademark Office Examiner, usually making necessary changes to either the body of the application or to the drawings. In an attempt to overcome objections to allowance of the application, the Examiner may require distinguishing prior art.

American Dream

The hope for prosperity and happiness, symbolized by an inventor whose invention becomes widely accepted and highly profitable. Applies to all except the very rich and suggests a confident hope to achieve success.

And so on

A phrase commonly used in patent applications that serves to expand the breadth of scope of a description. Commonly used in place of “etc.” For example, “the housing of the present invention may be made of metal, wood and any number of plastics such as polyethylene, polypropylene, nylon, and so on."

Angel

Typically an individual who provides development funding in the early stages. Angels generally want a substantial return on investment and may want a position in the start-up company.

Anticipation

A term used usually in the consideration of an invention with respect to novelty. This refers to prior knowledge, established as by publication or use of the invention at a date prior to the claimed date of invention and thus indicating that the present invention lacks patentable novelty.

APLF

See: Association of Patent Law Firms.

Apparatus patent

A patent covering the physical form of an invention that defines the structure of an apparatus or product. Same as device or product patent. See: product patent.

Appeal

The process used to request a review of a patent application after a final office action rejecting the requested claims. It is conduct by the Court of Appeals.

Applicant

The person or corporation that applies for a patent with the intent to use, manufacture or license the technology of the invention. Under U.S. law, except in special situations, the applicant(s) must be the inventor(s).

Application

Rare terminology referring to a systems or method patent type. See: method of use.

Application for patent

An application for the protection of an invention; those documents or papers including a petition, a specification, drawings (when required), one or more claims, an oath or declaration, and requisite filing fee, with which an applicant seeks a patent. See: PPA; provisional patent application.

Arrow line

See: lead line with arrow, floating lead line.

Art

The established practice and public knowledge within a given field of technology. This also identifies a process or method used to produce a useful result. A term used in consideration of the problem of patentable novelty encompassing all that is known prior to the filing date of the application in the particular field of the invention. See also: prior art.

Article of manufacture

A discrete and distinct part of an invention or writing; one of several things that together form a whole. This is used to categorize patent applications into different subcategories.

Assignment

Transferring all or part of one's ownership rights in a patent or intellectual property to another.  Ownership rights may also be licensed. The assignment can be a transfer of all rights of exclusivity in the patent, of an undivided portion (for example, a 50 percent interest), or of all rights within a specified location (for example, a certain area of the United States). Transfer of anything less is considered to be a "license".

Assignment of rights

This occurs when you sell or bequeath your IP rights to someone else. This is simply a change of ownership of property. See also: IP; intellectual property.

Assignor

One who assigns or transfers a patent right to another person or corporate entity. This is accomplished through an assignment.

Association of Patent Law Firms

An association of law firms that devotes its practice primarily to patent, trademark and copyright law.

Attorney

Legal representative typically used to file, prosecute intellectual property applications and to defend them when infringed.

Augmented product

New inventions tend to focus on the augmented product and not the generic or expected product. See also: potential product.

Background of the Invention

The section in a patent application that includes the nature of the invention. Typically it is broken down into two subsections entitled “Field of the Invention” and “Description of Related Art.”

Bankruptcy clause

In a license agreement, it refers to an out clause allowing the licensor to terminate the license agreement and pursue a suitable replacement licensee. It may, however, be unenforceable in court. See also: out clause.

Barcode

See: UPC.

Barriers to entry

Refers to the number of competitors in the field of an invention, their relative strength, and their competitive response.

Basic patent

The first patent application within a new field of patents that is recognized as unexpected by those skilled in the art.  For example a software patent during the formation of the computer age.  See: dominant patent.

Basket of cobras

When securing multiple patents on a single product, the protection is sometimes referred to as a basket of cobras. In other words, if you try to knock-off the patented product, it's like sticking your hand in a basket of cobras. If one doesn't get you, the other one will.

Berne Convention

Under the Convention, copyrights for creative works are automatically in force upon their creation without being asserted or declared. An author does not need to register or apply for a copyright in countries adhering to the Berne Convention.

Best mode

A condition for the issue of a patent. An inventor must describe the best method he or she knows for carrying out the invention. If the inventor discovers a better method of implementation of the invention at the time of filing the application, the results could be a ruling of an invalid patent.

Beta-testing

The final stage of testing of new software or hardware prior to its commercial release and conducted by consumers.

Blanket the world

Refers to filing a patent application with a very broad scope and then settling on a lesser scope that is still broad enough to provide protection in the marketplace. See: broad scope.

Block diagram

A type of drawing used in patent applications that show the interrelationship between the components used in an invention.

Blown up view

A drawing type that has been substantially enlarged in order to view the inventive matter sufficiently.

Board of Appeals

An administrative board of senior patent personnel that hears appeals from applicants and reviews the decisions of examiners on applications for patents. If applicant or his representative disagrees with the ruling of examination the Board of Appeals may review the application in question.

Boolean

Used in patent searching, an expression with two possible values, "true" and "false". Includes variables of a function with common functions AND, OR and NOT. Boolean is no longer commonly used in search engines.

Breakthrough opportunities

May be an invention that is considered a major improvement over existing products. May also be considered a minor improvement to an existing product that substantially increases sales.

Brief Description of the Drawings

These are a section heading in a patent application listing the drawings in order and defining their type and content.

Brief Summary of the Invention

The section of a patent application describing an invention in broad terms, how it is composed and how it works.

Broad claim

A patent term used to describe the scope of a patent claim. A claim is identified as being broad when it incorporates a large range of alternative embodiments of the invention with the provision that those embodiments are described within the specification. A claim that is too broad covers prior art or matter not adequately included in the specification. See: claim.

Broad scope

A patent that has one or more broad claims provides broad scope protection. See: broad claim.

Business methods (patent)

A patent on a methodology of doing business. May also include training systems and methods. Frequently accommodated with computer and software methodologies.

Buying influences

Refers to all influences that may affect (yea or nay) the purchase of an innovation throughout the entire purchasing chain. May includes handlers in shipping/receiving, distributor buyers, retailers, operations people, end users and upper management.

CAD drawings

Computer Aided Drawings are engineering drawings usually used to manufacture a new innovation.

CAFC

Court of Appeals for the Federal Circuit.

Call center

The great majority of sales from DRTV and infomercials are immediate, so it’s necessary to have dozens, even hundreds of operators standing by to field phone calls, take orders and process credit card payments. This work is typically done by call centers.

CCPA

Court of Customs and Patent Appeals.

Cease and desist

A legal notice, usually in the form of a written demand, requesting an infringing party to stop a) manufacturing and/or b) using and/or c) selling a product falling under the scope of a patent. It is sent by holder of the patent rights or its attorney.

CFR

Code of Federal Regulations.

Chemical composition

See: composition of matter.

CIP

See: continuation-in-part.

Circuit layout rights

See: mask works.

Citation

This may include patents or journal articles that the applicant or examiner deems relevant to a current application. A reference to legal authorities or prior art documentation are examples of a citation.

Claim

A written statement at the end of a patent application stating what the inventor alleges as the invention. The claims define the legal scope of a patent. What falls within that definition is protected by the patent.

Claim statement

A statement, or list, prepared before writing a provisional patent application outlining the claims that will be pursued.  Sometimes referred to as a “claim plan”.

Closed claim

A claim using a phrase such as "consisting of" and would not be infringed upon if the accused invention included additional elements to those described in the claim.

Combination

A combination of elements may be patentable; this is accomplished through a grouping of parts, steps, processes, or ingredients to produce an integrated result.

Commerce (and trademarks)

As defined by the Lanham Act, trade that the federal government is authorized to regulate. To qualify for federal trademark protection and registration, a mark must have first been used in commerce. In practice, this means that a product or service must be sold outside of the state in which it originates, be advertised out of state or cater to travelers, such as a hotel, before it can qualify for trademark protection.

Commercialization

Commercialization of intellectual property is simply a process of taking an invention and taking it to the marketplace. This will consist of protection, design, development and marketing; then establishing the product in a viable distribution system to distribute the finished product.

Commodity products

While inventions focus on the augmented and potential product, commodities focus on the generic or expected product.

Common language marks

Although common language cannot be trademarked, there are certain exceptions. For example, if common words such as "Dual-tab" are used without opposition for a period of five years, a registered mark may be granted.

Common representative

When a patent application has more than one applicant the first named applicant is assumed to be the common representative. This is the case unless another applicant is clearly designated on the application as the common representative.

Competitive response

When entering a market with a new innovation, existing suppliers (competitors) will respond. The lack or strength of their response is considered an important barrier to entry.

Complete specification

This is the basis for patent protection. The complete specification must describe your invention completely, detail the best way of putting your invention into practice and include at least one claim.

Components

The various components of an invention. Typically they are defined by numeric sequences beginning with an even number in sequences of ten.

Composition of matter (patent)

Usually scientific by nature such as plastics and bio-engineering. However, it may include blended compositions used to give a particular product certain superior traits. For instance, the blending of plastic resins in a specific formula to give a product rigidity, flexibility, and durability.

Comprising

Interpreted to mean containing, embracing, covering, or including the following elements but not excluding others.  A claim using this term is an open claim that could be infringed even if the accused device has additional elements to those described in the claim.

Concept sketches

Usually the first sketches that are made illustrating an invention. Sometimes referred to as “napkin sketches”.

Conception

The initial formation in the inventor's mind of the essential elements of an invention. This must result in an “actual reduction to practice.”

Confidentiality agreement

A written agreement between the owner of an invention (discloser) and a third party (disclosee) requesting the third party to maintain confidentiality of the inventive subject matter, and usually includes a no-compete clause. Generally it is more restrictive than a non-disclosure agreement (NDA). See: non-disclosure agreement.

Conflict

Refers to a determining factor for acceptance to register a trademark, or validity of same. A mark must not cause conflict with other marks. See: confusion.

Conflict or confusion

The primary qualification to secure a valid trademark is that it must not be in conflict or cause confusion with existing marks.

Confusion

See: Conflict or confusion.

Confusion

Refers to a determining factor for acceptance to register a trademark, or validity of same. A mark must not cause conflict with other marks. See: conflict.

Consumer trials

Refers to actual tests of an innovation by consumers. Usually done in the later stages and may be actual sales generated in a retail store or internet environment. See also: in-house testing.

Contingency attorney

An attorney who works for a percentage of profits instead of an hourly rate. Commonly employed in patent infringement cases and particularly in those where there is a lot to gain.

Continuation

A second, yet distinct, continuing application which contains the same disclosure as that of a prior pending application (referred to as the "parent application"); in the U.S., a continuing application must claim subject matter first disclosed in another earlier application by the same inventor, or inventive entity. No new matter is added to application. See: continuation-in-part.

Continuation-in-part

When new matter is added to the parent application, or some portion of the parent application is deleted. This form of application may be used to add improvements that were developed after the filing of the parent application.  See: parent application

Continued Prosecution Application

A continuation or divisional application filed under 37 CFR 1.53(d) that continues the prosecution of the original patent application. A continued prosecution application cannot contain additional subject matter.

Contributory infringement

Infringement of intellectual property rights in which one person contributes to the direct act of infringement of another. For example, contributory infringement of a trademark occurs when a manufacturer aids or encourages its distributors to pass off its goods as those of another manufacturer. Another example is a company that sells a product that causes the infringement of a patented process owned by another entity.

Convention, Berne

See: Berne Convention.

Convention, PCT

Similar to the EPC, the PCT convention operates as a "holding pattern" to preserve rights in designated countries for a specified time. Comprised of different countries than the EPC except in such instances where a country belongs to both conventions.

Copyright

Covers any written material, designs, patterns, songs, video and sculptures. Copyrights are filed with the U.S. Copyright Office. Rights are usually established the moment they are created.

Copyright Office

See: Library of Congress

Cost to sell ratio

The ratio between the sell price paid by an end user and the cost to manufacture. With retail products it is usually about 4 to 1. Industrial/commercial products may be 3 to 1 or 2 to 1 for larger volumes. Innovations sold on TV are as great as 10 to 1.

Counterfeiting

The act of producing or selling a product containing a reproduction of a genuine trademark. Often, counterfeit goods are made to imitate a popular product in construction and appearance so as to deceive customers into thinking they are purchasing the genuine merchandise.

Counterpart

See: equivalent.

Court of Appeals

See: appeal.

Cover sheet

Usually refers to the informational form (cover sheet) that accompanies the filing of a provisional patent application.

Cross reference

A copy of a patent placed in an application's file to disclose subject matter pertinent to another technical field certification mark. This is done to vouch for a claim or statement included in the original application.

Crucial factor

When problem solving a particular feature of an invention, the crucial factor is the property of an invention that must be changed in order to achieve success.

Customer benefits

These benefits determine why a consumer will want to purchase a invention, not to be confused with invention’s features.

Customer Driven Innovation (CDI)

The concept of creating new inventions based on the needs of end user customers. The development philosophy used by Intuit and From Patent to Profit.

Customer pull through

Refers to whether or not customers choose to purchase a given product based on its merits. Usually refers to goods sold in retail outlets.

Date of application

The official date on which a duly executed patent application is received in the U.S. Patent and Trademark Office.

Date of original conception

The date in which an inventor can legally verify and prove the conception of an invention.

Date of patent

The effective date of the patent issuance. This date is also the date of printing of notice of the patent grant in the Official Gazette of the U.S. Patent and Trademark Office.

Davis Hilton case

The landmark case in 1996 that resulted in the present day definition of the Doctrine of Equivalents. See: Doctrine of Equivalents.

Dealer cost

The price a retailer pays to a distributor. May also be called the wholesale sell price. Usually expressed in a discount off of the retail price. Rarely expressed as a mark-up over cost.

Default clause

In the event of default on any element of an agreement, such as a license agreement, terms for notifying the party in default and provisions to repair the default is referred to as a default clause,

Defensive marketing strategy

Companies that dominate sales in a given category typically employ a defensive marketing strategy. In other words, they are protecting their sales base. They focus on market share. See: market share.

Defensive patent

Refers to a patent that is usually inferior to a patent owner’s superior commercialized patents. The defensive patent is used to prevent others from using the technology, albeit inferior.

Dependent claim

A claim in a patent that refers back to a previous claim. It defines an invention that is narrower in scope than that in the previous claim.

Description of Related Art

A subsection of the “Background of the Invention” and includes descriptions of pertinent art related to the invention disclosed in the application. See: background of the invention.

Design around

The term used to describe other inventions that do not include the patentable subject matter disclosed in a patent. Generally speaking the broader the claims in a patent, the more difficult it is to design around.

Design patent

A type of patent that covers the ornamental aspects of a design. Its functional aspects are covered by a utility patent. Both design and utility patents may be obtained on an article if it is inventive both in its utility and its appearance.  See: patent, plant patent, utility patent.

Detailed Description of the Invention

The section of a patent application that includes complete specifications and descriptions of the drawings used to illustrate an invention.

Device patents

A patent covering the physical form of an invention that defines the structure, apparatus, or composition of a product. Same as product, apparatus or structure patent. See: product patent.

Dictionary meaning

See: ordinary meaning.

Differentiation

A common term describing how an innovation is different (in a positive light) from existing products on the market.

Diligence

After recording the date of original conception an inventor must show diligence as it is reduced to practice. Without sufficient diligence, a claim of abandonment may result, thus the loss of the inventor’s priority date.

Disclaimer

Used to remove from consideration a certain claim, title or specification from a previously filed patent application thereby freeing prosecution of the remainder of the application.  In effect this action cancels that claim or portion and eliminates the invalidity.

Disclosee

In confidentiality agreements and non-disclosure agreements, the disclosee is the receiver of information. See also: discloser.

Discloser

In confidentiality agreements and non-disclosure agreements, the discloser is the provider of confidential information. See also: discloser.

Disclosure

A public dissemination of information about an invention, by publication or other mode. An adequate disclosure should enable reproduction of the device or process to actual reduction of practice through only the information disclosed.  See: invention disclosure.

Disclosure document program

Records information, for up to two years, with the purpose of establishing dates of conception, reduction to practice, progress, improvements, etc. Does not provide patent protection. See: invention disclosure.

Discovery

Pertaining to patents, a reader learns about the new discovery and its related technology.

Discovery

The finding of some improvement, substance, application or mechanical device that was not previously known. A discovery may not be a complete invention, and may be unexpected.

The finding of some improvement, substance, application or mechanical device that was not previously known. A discovery may not be a complete invention, and may be unexpected.

Divisional application

Only one invention may be claimed in a patent application. The examiner may impose a restriction requirement in which the applicant must chose which one invention will continue as the current application, following which the applicant may file a second patent application, called a divisional application.

Doctrine of Equivalents

By this doctrine, someone cannot circumvent prior art by the mere use of a similar process that essentially does the same thing as a prior claim that has been accepted. For example, a claim may say that the joist was nailed to the floor. Someone could not use screws and get around this claim. See: FESTO.

Domain name

The website address as seen on internet browsers. Good domain names are considered valuable and although they are not intellectual property per se; they may reflect a trademark or service mark and will convey value in a similar manner and are typically included in the same IP portfolio.

Dominant idea

When problem solving a particular aspect of an invention the dominant idea is the one characteristic that most likely cannot be changed. For example, changing a plastic material (the dominant idea) to leather would be cost prohibitive.

Dominant patent

Refers to a patent that has a broader scope than other related, narrower patents that may be considered improvements [on the dominant patent]. Usually it is a previously issued patent with a broader scope. See: basic patent.

Double patenting

The grant of two patents for one single invention to the inventor in the same country. Two patents cannot be granted to the same applicant for one invention in most countries in the world.

Double patenting

An attempt to obtain a second patent on the same invention. Double patenting is found when the claims of both patents, by their descriptions, cover essentially the same things. See: obvious double patenting.

Drawing

Figures that are filed as a part of a patent application. The drawings are to explain and describe the invention when necessary (which is almost always required).  Special rules and techniques are mandatory in preparation of patent drawings.

DRTV – Direct Response Television

Refers to the 60 - 90 second product advertisements that ask you to “call and order now”. Examples are Sham-wow®, Oxy-Clean®, the Perfect Push-up®. See: infomercial.

EAN

European Article Number is Europe's counterpart to the use of UPC in North America. See: UPC.

Early stage financing

In the formative stages of an innovation early stage financing, sometimes referred to as seed money, is used for research and development, prototyping, formation of the business and so on.

Ease of entry

When considering entering a market with a new product, one of the key considerations is the ease of entry. In other words, what will be the competitive response? How much will it cost to launch? Are raw materials available, etc.

Ease of use

A critical factor with new innovations is their ease of use. If they are complicated, different from the norm, then their introduction into the market may fail.

EDC loans

Economic Development Corporation loans are typically those from local municipalities such as counties. May be called by other names depending on the state.

Editorial coverage

This is when a manufacturer or distributor provides products to a television production company for inclusion into the editorial portion of a program. Placement may be free or in some cases producers charge a fee. Also may be referred to as product placement or product integration.

Effective date

That date when an application or patent takes effect and becomes enforceable, or the date by which a prior art reference (a publication or patent) can be applied against an application to act as a bar to the allowance or patentability of the application's claims.

Election

When a patent application that has more than one patentable subject matter is being reviewed, a a restriction is made by an examiner. The applicant may choose one or more related claims to prosecute first. The other related claims will be subsequently prosecuted.

Elicit emotion

An important factor when introducing an innovation. Buyers purchase products or change from one to the other based on the positive emotion it elicits. This is a key driving factor for product and package designers, identifying the best emotion to elicit.

Employee patent program

See: employee trade secret program.

Employee trade secret program

Most companies require employees to sign a document requiring them to maintain all trade secrets confidential and likewise to assign to the company all patent rights to inventions related to the company's business.

Enablement

An invention must be described in the specification of a patent or patent application with sufficient detail to enable someone with ordinary skill in that art to reproduce and utilize the invention without undue experimentation.  See: disclosure.

End view

See: Side view.

Engineer’s log

See: inventors journal.

EPO

European Patent Organization (sometimes referred to as the European Patent Office) The EPO is a cooperative group of European Countries for the purpose of establishing a system so that a patent application could be filed and examined just once for all countries involved. Any allowed patent in any country that is a part of the EPO is automatically allowed in all corresponding countries.

Equivalent

See: Doctrine of Equivalents.

Ergonomics

Also called "human engineering." This is the science of designing devices, systems and physical working components with the capacities and requirements of the worker in order to produce the best outcome. The primary objectives are improved productivity and user comfort and safety.

European Patent

Instead of obtaining patents in individual countries which are members of the European Patent Organization, one patent application may filed covering all member countries. Once the European Patent has been granted an applicant may designate up to 26 national patents in accordance with the designations chosen by the applicant.

European Patent Convention

See: EPO.

European Patent Office

See: EPO.

Examination

The study of a patent application in the governing patent and trademark office, by an examiner, to determine whether or not the invention described therein can be patented. The major consideration the examiner addresses is the novelty and utility of the invention, among other things.

Examiner

An officer of a patent office whose purpose is to evaluate the patentability of an invention claimed in a patent application.

Examiner's amendment

At the examiner’s prerogative, minor errors in an application may be corrected. This usually happens only after the examiner deems the application patentable.

Exclusive license

This type of license agreement may be used for exclusive sales through a single licensee, but may also be restricted to a given product line or use, a given field of sales, a territory, or a given time period. Usually an exclusive license is accompanied with some form of guaranteed sales performance.

Exclusive rights

When referring to the rights of a patent holder they include the rights to exclude others from manufacturing, using, and selling products and processes falling under the scope of the patent. May also refer to the exclusive rights granted under other forms of intellectual property such as trademarks, service marks, copyrights, trade dress, trade secrets, know how, and so on.

Exclusive rights (to a license)

The rights granted to a patent holder, or any other intellectual property rights granted to an owner, that are exclusively licensed (for consideration, usually monetary) to a third party (the licensee). Conveys exclusive rights to a license.

Execute

With respect to a patent application, the signing of an oath or declaration, and swearing to that oath as required by law. Also to complete or to carry out according to the required terms.

Expanded view

A drawing that shows the interrelation between two or more components.

Expected product

Companies that dominate sales in a given category typically focus on providing the more generic products and tend to focus on the "expected product." In other words, they tend not to be very innovative. See: defensive strategy.

Expert in the field

Typically refers to manufacturing or marketing companies presently making or selling products in a given field. See: field.

Expiry

The date when the invention is no longer protected and or when an invention's patent protection lapses. This may correspond with the end of the term of the patent.

Exploded view

A drawing that shows the individual parts of a mechanism separately, and indicates their proper relationship and corresponding position.

Fad

Any new product that has a limited sales window for any number of reasons, is considered a fad. These are typically not patented, but are exploited as fast as possible until the fad dies out.

Fair use

Refers to the use of a copyright with the author's consent in commentary, news reports, education, etc. The intention of the use must not be to damage the commercial value of the copyright or for purposes of profit.

Family of claims

The various patentable subject matters described and claimed in a patent application.

Favored nation status

When licensing several companies non-exclusively, the first licensee that is willing to invest its time and money gets a jump on the competition, which is referred to as "favored nation status." It typically carries a short-term start-up exclusive and may carry additional favorable provisions.

FDA

See: Food and Drug Administration.

Federal Circuit

U.S. Court of Appeals for the federal cases.

Federal Trade Commission (FTC)

Complaints against invention companies are frequently filed with the FTC. It also provides information warning against the use of invention companies and posts pending and concluded lawsuits.

Fee

Various fees are required during the life of a patent. Some of these fees include filing fee, issuance fee, maintenance fee and petition fee among others. Fees differ according to the country that governs.

FESTO

A 2002 court case that says that a claim in a patent application that was changed during prosecution should be interpreted more literally due to the change. It therefore may limit the interpretation of the Doctrine of Equivalents. See: Doctrine of Equivalents.

Field 

A common term describing the particular market in which a new innovation may be sold. For example, in the field of packaging, computer accessories, cosmetics and so on.

Field (as related to licensing)

A clause used in a license agreement may restrict the licensee to the sales and use in a certain field. For example, sales may be exclusive in the field of retail sales, but specifically prohibited in the field of industrial/commercial supply.

Field of the Invention

The definition of the specific field or art to which an invention pertains. See: Background of the Invention.

Fig. or figure

The proper designating term to use when references drawings in a patent application. For instance, “Fig. 1 is a perspective view”.

Figurative interpretation

The figurative interpretation of a patent claim is considered broader than a literal interpretation. For example, "a hole" may literally be a round aperture. However, it may figuratively mean any type of hole, round, rectangular, irregular, even a slit. See: Doctrine of Equivalents.

File wrapper

The entire file collected during the prosecution of a patent application, including all correspondence.

File wrapper

The term applied to the “entire folder” containing all correspondence between the examiner and inventor (or his/her attorney), as well as any models, photos, or other materials requested by the patent examiner. See: prosecution history.

Filing date

The date when a properly prepared application reaches the patent office in complete form.  In U.S. patent laws, this is the beginning of the 20-year term of patent protection.

Filing strategy

Strategies for writing patent applications may include when to write them, when to file them, whether to file the provisional or regular patent application first, and how many  applications should be filed covering the various subject matters.

Final rejection

When an examiner terminates further prosecution of an application.  An applicant then has a right to an appeal.  See: Board of Appeals

First article

A final stage, true working prototype manufactured by the actual molds, dies, etc., and in the actual manufacturing process.

First office action

The first response to a patent application from the patent examiner at the US Patent office.

First to invent

Synonymous with “first to conceive, last to reduce”. The U.S. recognizes an inventor's right to a patent based upon the date of actual invention, as opposed to the "first to file" system used by most other countries.  See: first to file.

First-stage VC

See: VC.

First-to-file

The filing date of a patent application, and not the date of conception (or reduction to practice), determines when an inventor's rights begin. Most countries other than the U.S. have "first to file" patent systems. See: first to invent

Fishbone chart

The breakdown of an innovation into the parts affecting its production process is typically done with a fishbone chart. The primary parts are design, materials, manufacturing process, machinery, measurement, people and environment,

Floating arrow line

In a patent drawing the line pointing to and identifying the "entire object" is a floating arrow. See also: lead line.

Flow chart

A type of chart used to illustrate the flow of a process, usually in the manufacturing environment. It is comprised of a series of shapes used to define various operations and arrow delineating the flow of activity.

FOB

Stands for "free on board" and refers to the shipping point to where goods will be delivered without charge to the buyer.

Food and Drug Administration

May have a bearing on the term of a patented drug as it usually takes 5 years to obtain FDA approval. Patent terms for such a case may be extended from 20 to 25 years with congressional approval.

Foreign filing license

A license that is required in order to file a foreign patent application, such as a PCT application. This must be accomplished within one year after filing a U.S. patent application.

Foreign patent time bar

A U.S. patent is barred if the applicant filed a patent application in a foreign country more than one year before the U.S. filing date, and the foreign application issued prior to the U.S. filing date.

Form follows emotion

The not-as-well known driving force governing invention design in recent years. See: form follows function, lifestyle.

Form follows function

The common governing belief driving the world of invention. However, this is considered old-fashioned by modern day innovators. See: form follows emotion.

Formal drawings

Once a patent has been approved for issuance, formal drawings must be submitted.  These drawings are the perfected ones made exactly according to U.S. Patent Office rules.  May or may not be submitted with the initial patent application.

From Patent to Profit®

Inventor education company, trainer and seminar provider to SBDCs (Small Business Development Centers, part of the SBA). Provides development and patenting assistance to small businesses and independent inventors and exposure to TV and on the internet. www.frompatenttoprofit.com.

Front view

The drawing type used to illustrate the one-dimensional frontal view of an invention.

FTC

See: Federal Trade Commission.

Functionality

The design aspect that requires that a product must work better for its intended purpose, as opposed to making the product look better or to identifying its commercial source.

Game inventions

A largely popular category of inventions and may be covered with patents, trademarks, copyrights and at times, trade dress.

Generic claim

Type of claim that relates to a whole group or class of inventions. A claim to a generic invention may include within its scope the subject matter of narrower claims.

Generic product

Refers to the basic product that can be produced at the lowest price. This market product group is usually dominated by the older, larger, low cost producers in a given field.

Governing law

In confidentiality and license agreements, any dispute with interpretation is settled by the governing law in a given state. Typically this is the state where the discloser's or licensor's business is located.

Grant of license

Upon the signing of a lawful license agreement the rights provided under the agreement are granted to the licensee.

Grant of patent

Upon acceptance of the patentable subject matter by a patent examiner, the inventor will receive a notice of acceptance. After it has been officially issued, it is confirmed as a grant of patent. See also: issue of a patent.

Grantor of license rights

The licensor is the grantor of license rights.

Guaranteed royalties

In a license agreement a licensor may request guaranteed royalties in the event a required sales level is not met. This is almost always an essential clause in an exclusive license.

Guaranteed sales

In a license agreement a licensor may request guaranteed sales, sometimes referred to as a performance clause, in order to keep a license in force. This is almost always essential in an exclusive license.

Guerilla warfare

Marketing an innovation is frequently considered "market creation." One of the commonly used sales approach is guerilla warfare, in other words, an aggressive local sales campaign.

Harmonization

Through one worldwide system of patent laws, all patent laws of all countries of the world would be adjusted or modified to produce harmony of the world patent system. This is only a proposed concept at this point.

Home based business

A small company that operates out of the home and typically has an internet presence and few, if any employees. See: virtual business.

Home shopping networks

These are essentially retail outlets that sell over television. The most successful networks are QVC, HSN, America’s store and so on.

Ideas (not patentable)

Ideas in and of themselves are not patentable. They must be turned into an actual invention that works in a specific way.

Improvement patent

Most patents today are improvement patents improving the performance of an existing product, process or system.

In the spirit of

A phrase used when citing an infringing product that falls under the Doctrine of Equivalents. For example, using a slit instead of a "hole" or an "aperture", would be considered infringing, since it is being used "in the spirit of'" a hole or aperture.

Incentives (in a license)

May include sliding scale royalties, a lower royalty when higher sales levels are achieved, exclusive start-up until other licenses are granted.

Indemnification (in a license)

A licensor will request indemnification from a licensee for its manufacture, sales and use of licensed products it produces.

Independent claim

When a patent claim has no dependency upon another claim within an application that claim is deemed an independent claim.

Independent inventor

An individual who develops his/her inventions on his/her own and not through a business or with an employer. May be a home based business.

Infomercial

Refers to the 30 minute ads that frequently run late at night. Products sold on infomercials tend to be higher priced and require more explanation than those sold via DRTV. See: DRTV.

Information disclosure statement

An IDS is filed in order to have information considered by the USPTO during the pendency of an application. It must be filed within three months of patent application filing date or before first office action.

Infringement

An invasion of an exclusive right of intellectual property. An unauthorized use of the invention described in a claim of a valid patent without proper license or consent of the owner of the patent rights. See: contributory infringement.

Infringement of a trademark

The unauthorized use or imitation of a mark that is the property of another in order to deceive, confuse, or mislead others. Infringement of a copyright involves reproducing, adapting, distributing, performing in public, or displaying in public the copyrighted work of someone else.

Infringement search

Is usually a more in depth patent and prior art search conducted in hopes of finding subject matter that will invalidate a patent. Sometimes referred to as a "dig deep search". Infringement searches may cost up to $10000 or more.

Infringement strategy

The statute of limitations on infringement is six years, so strategy may dictate when to sue. It may also elect to sue the infringing companies that are manufacturing, using or selling the infringing product.

Infringer

The company that is infringing upon the intellectual property rights of another.

In-house testing

The initial testing of a new product is considered "in-house" and is prior to test marketing in with consumers or in a region. See: test market.

Injunction

A court order prohibiting someone from a specified act.

Innovation

While an invention is usually considered the conception of a new products and ideas, an innovation is related to the development stage of taking those products and ideas to market. See also: invention.

Innovative Showcase(tm)

A website used for the public and password-protected exposure and exploitation of inventions and new products. www.innovativeshowcase.com

Innovator

The first person or group to adopt and develop a new product or idea.

INPADOC

The International Patent Documentation Center. Located in Vienna, Austria and is now a part of the EPO.

Insufficient disclosure

When an application or patent contains an incomplete description of an invention in its specifications. A disclosure is deemed insufficient when a person skilled in the art is unable to reduce the invention to practice with information and material disclosed in the application itself.  See: disclosure.

Insufficient improvement

A patent may not be granted if an examiner considers the inventive subject matter as being of insufficient improvement over prior art. It is also considered a liability to invest in and launch a new innovation that is of marginal improvement over existing products.

Intellectual property

Creative ideas and expressions of the human mind that have commercial value and receive the legal protection of a property right. Types of intellectual property include patents, trademarks, designs, confidential information/trade secrets, copyright, circuit layout rights, plant breeder's rights etc.

Intended use

Claim language that simply specifies the intended use or field of use for an invention but will generally not limit the scope of a claim, particularly when the intended use is presented only in the claim's preamble; the applicant must demonstrate to the Examiner why an intended use should be treated as a claim limitation to avoid non-analogous prior art.

Intent-for-use-application

An optional method of applying for federal registration of a trademark based on a declared intention to use the mark on specific goods or services. This was enacted in1989 in the United States.

Interference

Regarding patent law; a procedure to resolve a conflict that occurs when two or more patent applications have been filed on the same  invention. Decided by the Board of Patent Appeals and Interferences (BOPAI). Many factors are considered. Different companies use different methods and rules for determination.

International application

An International Application can be filed with the Patent Office of IP Australia under the PCT (Patent Co-operation Treaty). In your application, you should select or designate the countries in which you want a patent.

Interstate trademarks

Those marks used on products sold out of state (one or more states) are considered interstate marks.

Intrastate trademarks

Those marks used on products sold only within a state are called intrastate marks and are in force only within that state.

Invalid (invalidity)

After a patent is granted, it may be invalidated based on several criteria. The two most common reasons are that it doesn't work the way it says in the claims or it has been invalidated by a judge in a court action.

Invention

A valid invention is considered a new device, machine, process, system and so on, that has never been previously made or described as being possible.

Invention

The creation of a new technical idea and of the physical means or process to accomplish or embody it. The act of inventing through original conception and reducing the concept to practice. An invention described in a patent application must contain, at a minimum, every element found in the patent claim.

Invention assistance company

See: invention company.

Invention company

Any number of companies that promise to help inventors but rarely do. They are commonly seen on TV with their slick ads and free invention info. Their success rate is about 1/10th of 1%. They have been repeatedly cited for fraud with the FTC and the US Patent Office. Should be avoided at all costs.

Invention disclosure

The written disclosure of a novel, useful, unique invention. The first disclosure usually qualifies the date of original conception.

Invention marketing company

See: invention company.

Invention promotion company

See: invention company.

Inventive attributes

The inventive attributes of a new product, process or system usually become the patentable subject matter in a patent application.

Inventive matter

Commonly referred to as the “novel, useful, unobvious” subject matter that describes an invention in a patent application.  More specifically it may be called the “patentable subject matter” should it be considered patentable. See: patentable subject matter.

Inventor

Anyone whose involvement and contribution was essential to the development of the invention. The one who is first to conceive of a particular invention and who diligently works to convert this conception into a tangible physical property.

Inventor organizations

Generally speaking they are local groups of inventors who meet on a regular basis. Some inventor clubs and organizations fall under the category of an invention company. Much caution should be taken as most invention organizations have a very low rate of success.

Inventor’s journal

A journal used to establish ownership of an invention. Typically begins with an invention disclosure with a verified date and then subsequently includes dated log entries as an invention is reduced to practice. See: reduction to practice, invention disclosure, date of original conception, verify.

Inventorship

See: oath.

IP

See: Intellectual Property.

IPO

Intellectual Property Owners organization. An association of intellectual property owners, attorneys and tradesmen.

IPT Co.

Inventions, Patents and Trademarks Co. in Grass Valley, CA, USA is the founder of From Patent to Profit and creator of the IP/Innovation Dictionary.

ISA

International Searching Authority for the PCT is either a national Patent Office or an intergovernmental organization such as the EPO.

ISR

International Search Report.

Issue date

Not to be confused with the filing date, which is the date the patent application was physically received by the U.S. Patent and Trademark Office. This is the date on which the patent actually issues.

Issue fee

The fee paid by an inventor to have a patent issued.

Issue of a patent

After receiving a notice of acceptance, it generally takes about 60 days for a patent to officially issue. Patents always issue on Tuesdays.

JDA

A Joint Development Agreement is usually between 3 or more parties working together to bring and invention to market. For example it may include a raw materials supplier, manufacturer and a sales organization.

Joint Development Agreement

See: JDA.

Joint inventor

Two or more inventors of a single invention who work together in the inventive process. Mere assistance in developing an invention does not make one a joint inventor.

Junior party

When two patent applications are being prosecuted at the same time that cover the same or similar subject matter, the one with the later priority date is considered to be in the junior position. See: senior party.

Junior position

See: junior party.

Key words

Those words used to describe the benefits of an invention.

KISS

Keep It Simple Stupid. A common theme used to develop an invention.

Knock-off

A copy of a work or product that is protected by patent, trademark, trade dress, or copyright that is indistinguishably similar.

Know-how

Information that enables a person to accomplish a particular task or to operate a particular device or process.

Kokai

An unexamined Japanese patent application.

Large entity

Companies with over 500 employees.  They pay the full amount for all patent related fees. See: small entity.

Law labels

Articles made from fabric require law labels stating the material composition, washing instructions, special care requirements and origin of goods sold. See also: warning label.

Lead lines

The drawn lines that reference a particular attribute or element in a drawing in a patent application. The lead line should touch the specific attribute or element. All lead lines have a corresponding number, which is referenced in the body of the patent application.

Lead lines with arrows

A lead line with an arrow that is floating refers to the entire object (invention) in a drawing.  A lead line with an arrow that touches a certain part of a drawing refers to the “entire component”.  All lead lines with arrows have a corresponding number, which is referenced in the body of the patent application.

Learn

See: discovery.

Legal monopoly

The term commonly given to the rights endowed by a U.S. patent.  Thus, you can say the owner is given the right to exclude others from manufacturing, using and selling products based on the scope of the patent protection. Also commonly referred to as “negative rights”.

Letter of intent

The use of a letter of intent is usually to maintain the rights to enter into a license agreement at a future date, based on certain terms and conditions, while conducting feasibility studies, such as manufacturing and marketing.

Lettering

Commonly used in patent drawings to signify a force or physical property related to the invention. Are also commonly used in prior art drawings and applications to describe the various embodiments.

Lexicography

The art of "making up words" in order to describe inventive subject matter, usually in a patent application.

Library of Congress

Copyrights are registered at the Copyright Office in the Library of Congress in Washington, DC.

License (of invention, patent, trademark or any other IP)

A contractual agreement giving written permission to another party the right to use an invention, creative work or trademark. By licensing an invention or works to a licensee, compensation is usually in the form of royalties, thus allowing the licensee to use, produce and sell copies of your invention or works.

License fee

A payment made up front when entering into a license agreement. It may or may not be applied as a credit against royalties.

License in

When a company is licensing an invention from another party, usually to use and exploit on an existing product line, it is referred to as “licensing in”. The party licensing in is the “licensee”. See: licensee.

License out

When the owner of intellectual property is licensing it to another party, it is referred to as “licensing out”. See also: licensor.

License rights

Usually the rights to manufacture, use and sell. May also include the rights to sublicense and import.

License to use

Commonly used with software programs, this type of agreement provides only for the use of the intellectual property but not to manufacture or sell.

Licensee

This is the entity that is at the receiving end of a license agreement. In other words, it is licensing in an invention or technology developed by another party outside of the entity. See: license in.

Licensor

This is the entity that owns the intellectual property rights that is being licensed out to an entity that wishes to exploit the intellectual property, usually for profit. See: license out.

Life of a patent

20 years from the date of filing.  See: filing date.

Lifestyle

One of the most important driving forces behind the creation of successful inventions today is how it applies to, and affects our lifestyle.

Like a cheap suit

A phrase used when a product is blatantly infringing a patent is referred to “reading on the patent like a cheap suit.” See: reads on.

Literal interpretation

Patent claims interpreted literally tend to have narrow meanings. The literal meaning of a hole (or aperture) would not include a slit used for the same purpose. See: figurative interpretation.

Log book

See: inventor's journal.

Machine patent

A patent granted on an invention considered a machine. Machines typically consist of a group of various components that produce a desired outcome.  Frequently are accompanied by process patents.    

Magic words (four)

When a marketing expert reviews a new innovation and nodding in approval says, "I can sell that" (the four magic words).

Maintain records

Maintaining a paper trail during product development includes maintaining all records, signed documents, applications, prototypes, etc. See: inventor journal.

Maintenance (fees)

The patent fees needed to keep a utility or plant patent in force for its full life. Different patent offices charge different fees and have different intervals of payment.

Make, use and sell

Patent rights provide inventors with the rights to exclude others from making, using, and selling products or processes falling under the scope of a patent. Technically speaking, it also includes the right to "have made" and "to import" and includes the right to "exclude others from offering for sale".

Manufacturability

An innovation must be made with the right process that produces the right quality at the right price and can be delivered on time.

Manufacturing records

In a license agreement the licensor usually has the rights to audit the manufacturing records of the licensee to see if it is in conformance.

Market creation

Large companies seek to improve market share, whereas an innovative new company strives to create new niches through market creation.

Market demand

The market demand for any new product is ultimately generated by pull through from end users.

Market durability

Inventions that represent future trends tend to have much better market durability than a fad.

Market readiness

Factors determining market readiness include timing, available technology, raw materials, willing supply chain and competitive responses.

Market share

The percentage of sales sold in a given marketplace. For example, a company's sales representing 37% of all dollars spent is a 37% market share.

Market trends

Market trends change. For example the trend in the 1990s was to provide excellent service, in the 2000s quality became king. The emerging trend today is to create innovations for lifestyle and the workplace.

Marketability

The art of evaluating and determining the potential for the sales/marketing of an invention. This should be a first step with any new invention, but rarely is.

Marketing expert

When partnering the sales of a new innovation, this typically refers to national sales managers, or perhaps manufacturer's representatives. It never refers to an invention company. See: invention company.

Marketing partner

See: marketing expert.

Mask works

These rights are based on copyright law principles. Circuit layout rights automatically protect original layout designs for integrated circuits, and computer chips. These are a separate form of protection from conventional patent, trademark and copyright laws.

Mathematical formulae

Patentable subject matter based on a certain unique mathematical sequence that produces a desired result.  Commonly used in software and business methods patents.

Means

A term commonly used when writing patent applications in order to expand the breadth of scope of the inventive subject matter.  For instance, instead of saying, “Part A is affixed to Part B by glue or adhesive or nails or rivets or paste…”, you may say, “Part A is affixed to Part B by a ‘means of adjoinment’ such as glue, rivets and so on.”

Metamorphosis (of an invention)

During the process of developing an invention, changes and modifications made cause it to go through a natural metamorphosis.

Method of use

Also commonly referred to as a “systems patent”.  This illustrates a new, unique use of an invention.  May consist of one or more prior art components.

Michael Neustel, PA

Michael Neustel is a registered US Patent Attorney in Fargo, ND, and substantial contributor to the IP/Innovation Glossary.

Minimum quality

A provision in a license agreement licensing trademarked products that requires the licensee to maintain a certain minimum quality.

Minimum royalties

A clause in a license agreement may provide for minimum royalties in the event minimum sales volumes are not met. The payment of minimum royalties keeps the license in force. See: minimum sales.

Minimum sales

A common provision in a license agreement, especially if it is exclusive. Minimum sales shall be required in order to keep the license in force. See: minimum royalty.

Modeling

Writing the specification for a patent application may be modeled after an existing patent.  The process of using existing terminology described in other prior art patents.

Monopoly

See: legal monopoly.

More than one invention

In an office action to a patent application, an examiner may cite that the application contains "more than one invention." In such a case the different inventions will be listed and the applicant may select which invention he/she wants to prosecute first. See: divisional.

MPEP

Manual of Patent Examining Procedures describes the procedures used by examiners based on applying laws and rules defined in 35 USC.

Multiple inventions

See: more than one invention.

Mutual confidentiality agreement

This is a form of confidentiality agreement that requests both parties in a discussion to maintain each other's subject matter confidential. Typically used when both parties have confidential information relevant to the discussion and hopefully resulting in some form of mutual development.

Narrow claim

When the scope of a claim is specifically defined, it is referred to as being “narrow in scope”. Typically narrow claims are easier to design around. See: “broad claim”.

Narrow patent protection

A patent with claims that have a narrow scope has narrow protection, and is generally speaking considered a weak patent and easy to design around.

National Inventor Fraud Center

Information-based website warning inventors about invention companies and listing those companies that are credible. See: invention company.

National phase

The national phase of the PCT process is where you designate a specific country you want to prosecute you patent application. It should be noted that there is no “worldwide patent” and that you must prosecute a patent application in each country that you want patent protection.

NDA

See: non-disclosure agreement.

Negative limitation

The description of an invention describing what it will not do or does not contain, as opposed to a description of what the invention will do or contain.

Negative rights

See: legal monopoly.

Negative rules of patentability

These rules say a patent cannot be granted merely for such concepts as substitution of a materials, performing automatically what had been done manually, rearrangement of parts or a change in proportions. See: obviousness.

New

See: novelty.

New matter

Usually used with regards to an amendment to a pending application in order to change the body of application. No additional material may be added by amendment to a patent application after filing if it adds, deletes or changes the description of the invention, its embodiment or best mode of operation. However, amendments that clarify or further define originally disclosed material are acceptable.

New product summary

A concise written summary of an innovation that includes a brief background and focuses on product benefits.

New property or use

A patent cannot be obtained for a new property or use of a previously known composition or matter.

Niche product

A product that competes in a small segment of a much larger market. Typically niche products are dominant in their niche like the generic giant dominates the larger market segment.

NIH

Not Invented Here. A common attitude among larger companies that rely on their internal research and development department to innovate.

Non- essential material

Materials incorporated into an application that are not essential to the art being reduced to actual practice or has no bearing on the validity of the application itself.

Non-disclosure agreement

A written agreement requesting a disclosee to maintain confidentiality of the subject matter disclosed by the discloser. See also: confidentiality agreement.

Non-elected invention

An invention that is not selected for continued examination due to a restriction.  See: restriction

Non-exclusive license

Licensing intellectual property to all companies that wish to license it would be non-exclusive. See also: exclusive license.

Non-obvious

See: unobvious.

Non-publication request

The request by an inventor to not publish the filed patent application after the 18 month period. See: publication date.

Not anticipated

Relating to an invention claim. It is said that it is novel and passes the requirements of 35 USC 102 if the invention is not anticipated by prior art.

Not identically described

Relating to an invention claim. It is said that it is novel and passes the requirements of 35 USC 102 if the invention is not identically described by prior art.

Not shown

A term commonly used when describing certain components or elements in a patent drawing, which component may not be visible (or is hidden) from the drawing’s perspective.  Thus, the writer refers to the components as “not shown”.  When using this term, the component or element would be described in some other drawing, in another view, if the referenced component is essential to the invention.

Notarize (a disclosure)

See: verify a disclosure.

Notice of allowance

When a Patent Office officially notifies a patent applicant indicating a patent application's claims have been allowed and a patent will be granted. Normally an issuance fee must be paid within a preset time for the patent actually to issue.

Novelty (or novel)

A requirement for patentability.  A claimed invention is novel and passes the requirements of 35 USC 102 if the invention is not anticipated by prior art. If a claim is anticipated by any single reference in the prior art it then lacks novelty.  Many patent offices require that for a claim to have novelty it must not be revealed or publicly available anywhere in the world. See: absolute novelty.

Numbering sequence

Numbering patent drawings is generally done by using the multiples of the number 10 to define a figure or component, and multiples of even numbers to define the individual elements.

Oath

A U.S. patent application is required to include an oath or declaration stating the inventor's belief that they are the first and original inventor. This must be done for each inventor listed on application.  Commonly referred to as “Oath of Inventorship”.

Objections

When an Examiner takes exception to any matter in an application he may require correction. An application that is stalled in prosecution usually is because of an Examiner’s objection.

Obvious double patenting

If an application is obvious in view in claims of prior art, as may happen when an Examiner requires a restriction on an earlier application and the present application addresses subject matter not claimed in the first application. This may be remedied by a terminal disclaimer.

Obviousness

A condition in which an invention cannot receive a patent because a person with ordinary skill in that art can easily formulate it from publicly available information such as prior art.

Offensive

The sales strategy that typifies a broad based, aggressive sales approach.

Office action

Official action on a patent application is preceded by a written communication (office action) from a Patent Office.

On sale bar

A statutory bar in which an inventor cannot obtain a patent they wait for more than one year to file a patent application after a product embodying the invention, has been placed "on sale." This would include any public disclosure of the invention whether the product is offered for sale or not. Also commonly referred to as the “one year rule”.

One year rule

See: on sale bar.

Open claim

A claim that often has a word such as comprising in the preamble of a claim, just before the body of a claim. Could be infringed even if the accused device has additional elements to those described in the claim. See: comprising

Open for public inspection

Sometimes referred to as "laid open". The date when a patent or application is officially available for the public to view. Typically an application that is in pending status is closed to public view. As soon as the patent is issued then the patent application is then open for public inspection.

Operative word

When interpreting claims in patents, there will be words that describe the invention or how it functions. These operative words are keys to determining if infringement occurs.

Opposition

A third party may request an application be refused or a granted patent be revoked. This may be based on the grounds of discovery of impropriety of originality, novelty or prior public disclosure. See: new; novelty; on sale bar.

Order fulfillment

Order fulfillment centers are frequently used by companies advertising with DRTV and infomercials. These centers include everything necessary to get the product to the customer once an order has been placed. This includes warehousing, packing and shipping, processing returns, replacements and repairs, and processing warranty claims.

Ordinary meaning

In Phillips vs. AWH, 2005, the court ruled that the interpretation of a claim shall rely on its established, "ordinary meaning" unless it has been redefined to have some other meaning. Also referred to as "dictionary meaning."

Ordinary skill in the art

An engineer, scientist, or designer in a technology that is relevant to an invention that possesses an ordinary skill or level of technical knowledge, experience, and expertise is said to possess an ordinary skill in the art. This is used as a benchmark in evaluating skill level as it relates to intellectual property development.

Ornamental appearance

Refers to a design patent that covers only the ornamental appearance of an invention and not its utility.

Out clause

In the event a licensee does not meet performance requirements the licensee must have an out clause.

Paid up license

Instead of earning royalties in a license, the consideration is a one time fee. For example, this is typical with licenses for the use of software.

Paper trail

The maintenance of a log book and supporting documents during the development of an invention is the paper trail that proves diligence in reduction to practice.

Parent application

A primary patent application is referred to as a “parent” application. This is in order to differentiate it from a continuation or continuation

Patent

A legal monopoly, granted by a country’s Patent and Trademark Office (PTO), for the use, manufacture and sale of an invention for a specific period of time.  At the end of the term (in the U.S it is 20 years from filing date) the technology becomes public property. Patents do not protect ideas, only structures and methods that apply technological concepts. There are three kinds of patents in the United States: a utility patent on the functional aspects of products and processes; a design patent on the ornamental design of useful objects; and a plant patent on a new variety of a living plant.

Patent agent

As opposed to a patent attorney. A person with technical training and experience, and who demonstrates an understanding of patent law. They must pass a requisite examination and then may be certified to practice patent law and represent others before a patent office.

Patent and Trademark Depository Library

PTDLs are located in every state to help inventors research their intellectual property. However, with the internet their use has greatly diminished.

Patent and Trademark Office (PTO)

Charged with overseeing and implementing the federal patent and trademark laws. Its principal responsibility is to examine applications for patents, and registration of rights in trademarks, service marks, certification marks and collective marks. Also they issue all patents and trademarks in the United States. U.S. Department of Commerce originally established the PTO in 1836.

Patent application

Compilation of specific items that relate to a certain invention. These include a specification, a drawing (if appropriate) and an oath. Other required information and fees may be filed within a specified period after the filing date. See: Provisional Patent Application

Patent attorney

An attorney at law who has also met the requirements of training, experience and passing an examination, and been certified as a patent agent; a patent attorney may represent a client in civil, business and other interactions (such as licensing, sale of a patent, or other actions between individuals) in addition to those between an inventor and the USPTO. See: patent agent.

Patent centric

A company that focuses on developing and marketing patentable products.

Patent claim

See: claim.

Patent Cooperation Treaty

A united agreement between many countries. The PCT was created in 1978 to allow an inventor to file one international patent application in one member country while designating the application for one or more member countries. The benefit of this Treaty is a simplified process for obtaining international patents, reduced work and elimination of duplicate efforts on the part of member countries, the applicant and the PCT.

Patent deed

Similar to a deed to real estate. An official document sent to an inventor by the U.S. Patent and Trademark Office (USPTO) when that office has issued a patent for the inventor's creation.

Patent drawing

Visual diagrams of an invention that are included in a patent application for the purpose of conveying a more complete understanding of the device or method. They are also used to distinguish the new invention from prior art.  Patent drawings must be included in the application unless the nature of the invention precludes them.

Patent examiner

The US Patent Office hires engineers to review, accept and/or reject patent applications.

Patent family

The basic patent and all equivalent patents for the same invention in more than one country. The family relationship need not be ascertained through priority information in order to be included as part of a patent family.

Patent infringement

See: infringement.

Patent law

Title 35 of the United States Code; see U.S. Patent Act, As Amended or United States Code (USC).

Patent notice

In order to enforce a patent, constructive notice is required. This is usually accomplished by marking the patent number on the product.

Patent Office

See: US Patent and Trademark Office.

Patent pending

See: pending application.

Patent pending

A mark applied to any product to let the purchaser know that a patent application has been applied for some portion of that article or some process related to that article. Some countries do not permit the use of this form of mark. No actual patent protection is in force during pending status.

Patent protection

Based on the scope of the claims in a patent, protection is provided the owner of a patent.  The scope defines the degree of protection and the ability of the owner to exclude others from making, using and selling the invention. See: legal monopoly.

Patent Quality Management™

The management systems used to maximize the value and influence of a company’s patents and intellectual property now and in the future.

Patent requirements

An invention must be considered useful, unique and novel (new) in order to be patented. To fulfill this requirement it must not be considered obvious by those skilled in the art.

Patent rules

The Rules of Practice in Patent Cases are found Section 37 of the Code of Federal Regulations (CFR).

Patent search

See: search.

Patent types

Includes utility, plant and design patents. A reissue patent is a utility patent.

Patentability

An examination of the publications and patents in the U.S. Patent and Trademark Office to determine the probable patentability of the invention. The three basic requirements of utility, novelty and non-obviousness.  See: utility, novelty and unobvious.

Patentable subject matter

The U.S. allows patents in four primary categories of subject matter: machines, manufactures, compositions of matter, and processes; the first three categories address structural subject matter while the last covers operational subject matter. Abstract ideas, laws of nature and natural phenomena are not patentable subject matter.

Patentee

The inventor or one who has received rights to the patent (assignee). For the applicant to be considered a patentee the patent must have been issued.

PCT

See: Patent Cooperation Treaty.

PE

Primary Examiner.

Pending application

An application filed with a patent office that is pending issuance. The application must be actively being prosecuted or is in the process of an appeal.

People friendly

A product that is easy for an end user to use..

Performance clause

See: out clause.

Permanent patent

See: regular patent.

Perpetual motion

This type of invention is not considered possible by the Patent Office and is therefore not patentable.

Perspective view

A three-dimensional drawing type used to illustrate an invention. May also be referred to as “side perspective, front perspective, rear perspective, upper perspective” and so on.  The most commonly used drawing type.

Phantom

The term used to describe a component in a drawing in an invisible state characterized by the use of dashed lines.

Plan view

The drawing type used in a patent’s drawings of an invention taken from a flat view above. Typically this would be a view of an object that is rather flat.  See also: top view.

Plant patent

A patent issued for new strains of asexually reproducing plants. Plant patents last for 17 years from the date the patent issues. Tuber propagated plants or uncultivated (wild) plants may not be patented. Some countries may not allow plant patents.

Positioning

The unique market positioning of a new product usually based on quality and price.

Potential product

The potential product is the focus of the innovator.

PPA

See: provisional patent application.

PQM

Patent Quality Management.  See: Patent Quality Management.

Preferred embodiment

See: best mode.

Present invention

A term used to refer to the invention that is being revealed and described in a patent application.

Price elasticity

This is the amount of increase in a sell price that makes a product too expensive for its perceived value. Thus, it is said to fall outside the 99 percentile, making sales virtually non-existent. This may be as low as 1%-2% for commodity products.

Prime

A prime is like an apostrophe used after a number in a patent drawing and is normally used when designating a left side and right side or a top and bottom. One element will have a standard number, the second element is the same number with the prime, such as 38 and 38’.

Prior art

The total body of knowledge, which teaches or otherwise relates directly to an invention. This is the primary criteria in determining the patentability of a new invention. Establishes novelty and non-obviousness of the art that relates to the invention in question. Prior art references include documentary sources such as patents and publications from anywhere in the world, and non-documentary sources such as things known or used publicly.

Priority

In the United States and Philippines, this term used to designate the date an invention was first conceived and reduced to practice. In the case of two or more inventors making claims on the same invention simultaneously priority is used to decide to whom to give rights of ownership.

Priority date

Normally the priority date is the earliest date a patent application is filed. The priority data of a permanent patent that read on an earlier provisional patent application would be the date of filing of the provisional patent application.

Pro se

An inventor who files an application without the assistance of a licensed patent attorney, files pro se.

Process patent (or claim)

A patent that covers the process in which an invention is made or the process in which it performs, in contrast to a product or an apparatus patent, or method of use or systems patent. For example, computer software may claim the actual uniqueness of its formulae and the process it performs.

Product by process Claim

A style of patent claim writing in which a product is claimed by defining the process by which it is made. Since many new drugs, chemicals, and pharmaceuticals can be only defined be described by the process of making them.

Product centric

A company that focuses on its existing product line regardless of having patent protection.

Product integration

See: editorial coverage.

Product liability insurance

Provides protection in the event a consumer is injured by the use of a product.

Product patent (or claim)

A patent covering the physical form of an invention that defines the structure, apparatus, or composition of a product, in contrast to a process or a methods patent. Same as device, apparatus or structure patent.

Product placement

See: editorial coverage.

Proprietary property

Intellectual property ownership may include patents, trademarks, service marks, copyrights, trade dress, trade secrets, and know-how.

Prosecution

This sums up the entirety of proceedings and action by the patent attorney and the internal action of the Patent Office that is reviewing a patent application. The beginning of prosecution is when the Patent Office receives the application and the end of prosecution is when the Patent Office either issues the patent or terminates prosecution through examination or appeal.

Prosecution history

Comprises all documents relating to the application for and review of a patent, including other documents and letters generated with regard to the application.  See: file wrapper.

Prosecution history estoppel

An applicant is held to a restricted interpretation of his claim as a result of the applicant amending a claim to avoid a prior art rejection during the prosecution of the patent application.

Prospectus

A simplified form of business plan that provides an overview of the target market, market potential, competitive analysis, market readiness and a sales estimate pro forma.

Protected rights

In a license agreement that includes more than one type of proprietary property, the licensed rights are usually referred to as the protected rights.

Prototype

The pre-production model of how the eventual product may look and work. See: first article.

Provisional patent application (PPA)

An interim patent application that provides a one year period for product development. It provides the legal effect of an early filing date for an invention. The PPA is much less expensive, and much easier to prepare, than a regular patent application. It does not take the place of a regular patent application, but it does confer patent pending status on the underlying invention.

PTDL

See: Patent and Trademark Depository Library.

PTO

See: Patent and Trademark Office; also in common use is USPTO.

Public domain

When an invention, creative work, commercial symbol, or any other creation is not protected by some form of intellectual property laws. These items become public domain and are available for copying and use by anyone.

Public knowledge

Used in determining novelty. A patent is barred if an invention was previously known by anyone that is skilled in the art that pertains to the specific invention. This may be through prior art or publication.

Public use

An official bar that prohibits the issuance of a patent if anyone uses an invention in public more than one year prior to filing a U.S. patent application or in the case of use of an invention for profit, where the use is not purposely hidden. Most foreign countries will not award a patent if there is any public use of the invention prior to the application date.

Publication

The distribution or disclosure in a form, which is readily accessible or distributed to the public of copies, audio recordings or any creative work.

Publication date

The date that a patent application is published by a patent office. Patent applications are published in most foreign patent offices after a specified period of time. Patent applications in the United States are published after 18-months unless the applicant requests non-publication at the filing of the patent application. See: non-publication request.

Published patent application

Patent applications worldwide are published 18 months after the filing date. In the US it is an option to publish it after 18 months or keep it unpublished.

Put on notice

Usually refers to putting an infringer on notice. May also apply to putting a licensee on notice who may be in default.

R&D

Research and development. May refer to the act of researching and developing, or to a department in a company (R&D department).

Ramp up

The initial sales effort to launch an innovation into the marketplace is the "ramp up."

Reads on

For a product to infringe upon a patent claim, the infringing product must “read on” all of the elements of the claim. In other words, if Claim 1 has elements A, B, C and D, an infringing product must also have elements A, B, C and D. It therefore “reads on” Claim 1.

Rear view

The view in a drawing of the rear, or the back side, of an object.

Reconsideration

In due process of prosecution of an application either the appellant or the Examiner may request reconsideration.

Record keeping (during development)

Includes the written records in an inventor's journal, all documents accumulated, drawings, engineering specifications, correspondence and so on.

Record keeping (licensed sales)

Record keeping requirements for a license agreement subject to auditing: are 1) sales records and 2) manufacturing records.

Red flag

When developing an innovation, a red flag is an indicator that there is something wrong with the design. To experienced inventors, red flags represent excellent opportunities.

Reduce to practice

See: reduction to practice.

Reduction to practice

The actual implementation of the technology or process that is specified in a patent application. This is the physical part of the inventive process that completes and ends the process of invention. See: date of original conception.

Redundancy

In a patent application "redundancy" is preferred in order to clearly state inventive subject matter. In other words, describing an invention more than one way is considered desirable.

Reexamination

Any person or entity such as the patent owner or a competitor, etc., may request a statutory post-issuance reexamination of an issued patent.  This is done to reevaluate the patentability of the claims in light of newly discovered prior art or procedure.

Reference

A document or patent that an Examiner cites against an application's claim.

Referenced patents

Those patents cited in a patent application that may be relevant to the invention disclosed.

Registered trademarks

Applications for trademarks prosecuted with the USPTO and subsequently accepted are called registered trademarks and may use the ® insignia.

Regular patent application

The formal US patent application complete with claims, which is reviewed by the US Patent Office, and when granted, provides legal patent protection for 20 years.

Reissue

In case an error within a patent application that was committed without deceptive intent, a reissue of a patent may be applied for if the patent is deemed partially or wholly inoperative or invalid. A reissue must fall in the guidelines of no new changes other than those that remain within the scope of the original subject matter. See: amendment.

Reissue patent

After approval by the Patent Office of a reissue patent application, a reissue patent is granted.

Rejection

An office action by the Patent Examiner stating to the applicant or his attorney that a claim in the patent application does not comply with the requirements for patentability.

Renewal

The extension of a registration of a trademark or a copyright.

Request for examination

During the patent pending phase in many countries the application is not reviewed by the patent office until it has received a request for examination. Typically this occurs within a given time frame, for example, the first five years.

Request for quotation

The request for pricing and associated costs from an outsource supplier for the manufacture of a product or parts.

Research and development

See: R&D.

Restriction

An office action in which an Examiner may impose a restriction requirement if an application claims more than one independent and distinct invention.  See: divisional application.

Retail price

The cost normally paid by a consumer.

Reverse engineering

As it relates to protected methods or technology that is publicly available but is protected by a trade secret. This process is used to determine what it is made of, what makes it work, and how it was produced and is accomplished by reversing the normal steps of engineering. If done properly this method is entirely legitimate and legal.

RFQ

See: request for quotation.

RO

Receiving Office of the PCT; the national Patent Office of the state in which the applicant is a resident national.

ROI

Return on investment. The ROI, normally in the form of a percentage, usually determines whether or not a company will decide to pursue development of an innovation.

Royalty

The consideration for the granting of a license of intellectual property is in the form of royalties. May be paid as a percentage, per unit cost, or a paid up fee.

Royalty rate

The amount of royalty paid, usually in the form of a percentage. A typical royalty rate would be about 3%.

Royalty report

Royalty payments are normally paid on a quarterly or monthly basis and are covered by a royalty report listing applicable sales.

Sales agency agreement

Manufacturer's representatives are employed on a commission basis, which is formalized through the use of a sales agency agreement. It will include items such as sales commission rates, when paid, territory (or accounts) and cancellation clauses.

Sales driven

Applies to companies that focus their effort not on innovation but on sales promotions in one form or another.

Sales price

In a license agreement royalties are paid based on the sales price, defined as the price of goods sold on products that fall under the protected rights.

Sales records

See: record keeping (licensed sales).

Satellite media

Also referred to as Satellite Media Tours (SMT’s). They are live interactive interviews and demonstrations conducted with local newscasters via a satellite uplink. They typically originate from a remote location and can be set up with nearly any television station. See: video news release.

Savings

In an innovation, the most common savings (benefits to consumers) are money, time and space. May also refers to "steps saved".

SBA

The SBA is the Small Business Administration, a federally charted agency. The SBA provides assistance to small businesses and may include various facets including job training, loans, employee relations and issues, and expansion. Smaller companies that are in the founding stages are generally counseled by the SBDC. See: SBDC.

SBDC

An SBDC is the Small Business Development Center. It is part of the SBA, the Small Business Administration. An SBDC primarily provides assistance to start-up companies that are in the formative stage. They provide free counseling and may also sponsor some services for pay. There are about 1000 offices nationwide. See: SBA.

SBIR

Small Business Innovation Research are loans and grants primarily for innovations for the Department of Defense but also include a wide array of energy, medical and science related fields.

Scam companies

A label commonly applied to invention promotion companies that ask for money up front for their services. See: invention companies.

Scientific Journal

A legal inventor's journal provided by From Patent to Profit. See: inventor's journal.

Scientific Journal™

An attorney-approved inventor’s journal that includes instructions, an invention disclosure, and log pages for recording day-to-day activities. The journal is provided by From Patent to Profit, www.frompatenttoprofit.com. See: inventor’s journal.

Scope

Refers to the breadth of a claim in a patent. See: narrow claim; broad claim.

Search

A study of patent materials to locate patents and other literature that pertains to an invention for the purpose of determining if any prior discovery makes the subject invention incapable of being patented or, if patentable, whether it infringes a prior issued patent. Among the different types of search categories would be a state of art search, a patentability search, infringement search and a validity search.

Second-stage VC

See: VC.

Section 37 CFR 1.83

The federal regulations for drawings supplied in patent, trademark, and copyright applications.

Senior party

When two patent applications are being prosecuted at the same time, that cover the same or similar subject matter, the one with the earlier priority date is considered to be in the senior position. See: junior party.

Senior position

See: senior party.

Sense of urgency

Considered one of the most important characteristics of successful innovators and entrepreneurs.

Serial number

A number assigned by the Patent Office to an application on the date it is received or made complete in order to identify it. Serial numbers are given to all forms of patent applications including provisional, utility, design and plant.

Service mark

A mark that refers to services rather than goods. This could be in the form of a word, phrase, logo, symbol, color, sound or smell used by a business to identify a service and distinguish it from those of its competitors. If the business uses the mark to identify a product, such as a camera, it is called a trademark.

Shading

Shading is utilized within patent drawings to indicate surfaces, material types, shapes and contours.

Shop rights

A company's right to use an invention developed on company time by an employee, when it has no trade secret program. See: trade secret program.

Side view

The one-dimensional view of the side of an object. Is sometimes referred to as an end view.

Similar and same elements

In a drawing that has many similar elements, letters may be added to illustrate they are all essentially the same: For example teeth in a gear may be marked as 12a, 12b, 12c, 12n… The use of "n" refers to all the other unmarked teeth.

Similar and same elements

In a patent drawing similar and same elements may either have the same number as an element in a previous drawing or a corresponding multiple of ten.  Same elements in a single drawing, such as multiples of a tooth in a gear will be described with the same number, but with a small case letter attached, such as 38a, 38b, 38c and so on.

Skill in the art

A benchmark in evaluating obviousness as it relates to prior art or technology. An ordinary level of proficiency in the particular technology in which an invention is made. See: ordinary skill in the art; obviousness.

Sliding scale

In a license agreement, royalty rates may be lowered based on larger sales volumes. For example: up to $1 million in sales = 5%; $1 to $3 million = 4%; $3 million and up = 3%.

Small entity

According to the U.S Patent and Trademark Office (PTO), a for-profit company with 500 or fewer employees, a nonprofit organization or an independent inventor. The PTO charges small entities half the fees charged large entities for filing a patent application and for issuing and maintaining the patent.

Small entity status

As opposed to an application received by the USPTO by a corporation or large inventing entity. For the purpose of reducing fees to those that develop products on a smaller scale than heavily funded corporations. In the U.S., a 50% reduction in fees is allowed for those with small entity status.

Software patent

This tends to be a catchall phrase for patents related to software. It may overlap into internet based applications and even computer systems.

Solidworks™

Solidworks is the CAD drawing format most commonly used for engineering drawings and virtual prototyping.

SPE

Supervisory Primary Examiner.

Specific claim

A claim that sets forth the details of an invention. A specific claim usually describes only one form of the invention and may or may not be accompanied by a generic claim.  See: generic claim.

Specification

The written description of an invention describing the invention in sufficient detail that another person could reduce it to actual practice. The specification must describe "the best mode contemplated by the inventor for carrying out his invention." Drawings are included in the specification when required.

Specificity of claims

A narrow claim that is concise is clearly understood. Thus the specificity of the claim can be valuable if it covers an invention.

Split out

See: divisional application.

Staging

When licensing several companies non-exclusively, licensees may be staged in over a period of time. For example, every six months a new licensee is added.

Stand alone claim

See: independent claim.

Start-up company

A newly formed company usually formed for the exploitation of an emerging technology or market.

Start-up costs

Refers to those costs relevant to start-up a company, or the costs relevant to the start-up and launch of a new innovation.

Start-up exclusive

When licensing more than one company, it is not uncommon to grant a start-up exclusive for a given time period to the first licensee.

State of the art

Comprises of all available knowledge and understanding that exists in a given field of technology at the time an invention was made.

State-of-the-art

The present level of advancement of a technology.

Status

The official standing of a patent or application at any given time. The status of an application may be lapsed, pending, protected, or acted on.

Statutory bar

A specific law (or statute) may bar the issuance of a patent under certain circumstances. For example, if a publication anywhere before invention (or more than one year before a patent application in the U.S.) is discovered this would constitute a statutory bar and block an issue of patent. 

Statutory invention registration

An SIR is a non-examined application. It serves to establish prior art over another applicant. The abstract is published in the Official Gazette and the contents of the SIR are available to the public. With publication of an SIR the applicant waives the right to receive a patent in the U.S.

Statutory period

The Patent Office allows a specific period of time for an applicant to respond to a patent office. Failure to respond within the statutory period results in abandonment of the application.

Statutory subject matter

A utility patent requirement. In order to qualify, an invention must fit into at least one of five categories defined in 35 United States Code, Section 101. These categories include: compositions of matter, manufactures, machines, processes, and new and useful improvements of any of the above categories. All categories as a whole are called statutory subject matter.

Strategic Guide

The development chart for tracking the development and ramp-up of sales of an innovation.

Structures

The group of patents granted to physical structures.  Devices, apparatuses, articles and products typically fall under this category.

STTR

Small Business Technology Transfer loans and grants fall under the same category as SBIR loans. See: SBIR.

Subcontract

Refers to outsourcing the manufacturing of a product or service.

Subject matter

See: patentable subject matter.

Sublicense

Licensees may at times sublicense their rights in a license agreement to others. This right is granted in the original license agreement by the licensor who would share in the sublicensed income.

Summary of the invention

See: Brief Summary of the Invention.

Survey

The desirability of an innovation or qualification of its parts may be qualified by surveying retailers, end users, distributors, sales personnel, and so on.

SWOT analysis

A test given to an invention that is being licensed in. Refers to evaluating its strengths, weaknesses, opportunity and threats.

Systems patent

See: method of use.

Target market

The identification of the specific types of end users who will purchase an innovation. May be based on age, gender, ethnicity and any number of criteria.

Target price

The price that will be charged for a product. This is usually based on competitive products and not on mark-up over cost.

Team members

On an innovation development team, the four most primary members are an innovator, a patent attorney, a manufacturing expert and a marketing expert.

Term of a patent

The period of time that a granted patent is in force.  According to U.S. patent laws, this is 20 years from the date of filing the application.

Term sheet

Typically a one-page summary of the points that will be included in a license agreement. Usually includes: the parties to the agreement, the protected rights, a royalty rate and up front fee, a term, a territory, and a field.

Terminal disclaimer

An action on the behalf of a patent owner that disclaims the terminal portion of a patent's term to avoid double patenting objections. See: disclaimer.

Termination of a license

The clause that provides for termination based on the expiration of the licensed intellectual property, or upon default of a term in the agreement.

Termination of proceedings

Due to the failure of the assignee to pay fees or appeal an adverse decision by the Examiner or POBAI, termination of proceedings occur. This is considered a special form of abandonment.

Terminology in a field

This may be learned through experience or by reading related patents and publications.

Territory

In a license agreement, the territory in which the license is in effect may be described as regionally (for example by state lines), or broader (for example by countries or continents).

Test market

Prior to a large scale product launch, test markets are conducted, usually in selected stores or regions. See: In-house testing.

Title of invention

Refers to a descriptive title as required by US Patent laws.

Title of the invention

The title of an invention in a patent application must be descriptive and not a trademark or nickname.

Top view

The one-dimensional view of an object looking at it from the top. See: plan view.

Trade dress

Refers primarily to the unique package design or product configuration. Trade dress protection may be in the form of a trademark or a copyright and provides against unfair use by competitors.

Trade secret

Any formula, pattern, machine or process of manufacturing, or any device or compilation of information used in one's business, which is maintained in secrecy, and which may give the owner an advantage over competitors who do not know or use. Such confidential information is protected against those who gain access to it through improper methods or by a breach of confidence. A legitimate way of bypassing a trade secret in through reverse engineering. See: reverse engineering.

Trade secret program

See: employee trade secret program.

Trademark

Governed by the PTO. Any identifying symbol, including a word, design, or shape of a product or container, that qualifies for legal status as a trademark, service mark, collective mark, certification mark, trade name, or trade dress. Trademarks identify one seller's goods and distinguish them from goods sold by others.

Trademark searching

For the US, it is best conducted at the US Patent and Trademark Office database (for registered trademarks) and through search engines, such as Yahoo, Bing and Google (for unregistered trademarks).

Transferability of license

License agreements are normally transferable by the licensor (for example in the case of death), but not by the licensee, which usually requires the permission of the licensor.

Trends

Inventions that represent future trends tend to earn more money and create more value than those for short-term sales and fads. See: market durability.

UL approval

Underwriters Laboratories is a worldwide agency for product safety and certification. Primarily focuses on electrical products.

Unclear references

A cause of a patent claim being rejected by an examiner. Refers to the inventive subject matter not being clearly described or referenced in the  drawings.

Underwriters Laboratories

See: UL approval.

Unfair competition

Commercial conduct that the law views as unjust, giving a civil claim against a person who has been injured by the conduct. It covers such diverse activities as trademark infringement, false advertising and theft of trade secrets. If a court finds that an activity constitutes unfair competition, it will generally prevent that activity from occurring in the future and award damages to the entity damaged.

Unique

All invention must be considered unique in order to qualify for patent protection. Any inventive matter that is not considered unique—in other words, it is obvious to those skilled in the art, or considered as being anticipated by previous patents or existing products—is not considered unique.

Unique attributes

The basis of the granting of a patent is the unique attributes of an invention, which must be clearly described in the patent application.

Unique position

See: positioning.

Unique requirement (trademark)

Commonly used words may not be trademarked, they must be considered unique. See also: common language marks.

United States Patent Office

Owned by the US government and is primarily responsible for examining  patent applications and issuing patents based on US patent law.

Unity of invention

A basic principle that an application should relate to only one invention or, if there is more than one invention, the applicant may have the right to include in a single application only those inventions which are so linked as to form a single general inventive concept.

Unobvious (also referred to as non-obvious)

A requirement for obtaining a patent.  A patent is not permitted if the subject matter for which the patent is being sought would have been obvious to an ordinary person skilled in the art, as a whole, at the time the invention was made.  This would include someone attempting to patent an application in one field that had previously been obvious in an unrelated field. See: novelty.

Unpatentable

Usually due to novelty or first-use issues the Patent Office deems an application unpatentable. At this point the applicant may file an appeal, otherwise prosecution of an application ceases.

Unregistered trademarks

Trademarks that have not been registered with the USPTO but are being used in commerce are unregistered and identified by the use of the ™ indicia.

Up front fee

See: license fee.

UPC

Universal Product Codes are widely used in North America and identify specific products and the manufacturer. They include a 12 digit numerical ID and a series of bars (barcode).

URL

The Uniform Resource Locator is the unique internet address of a particular file (corresponding with a website and domain name).

USC

United States Code.

Useful (or usefulness)

A utility patent is required to have some purpose. In the case of design patents, usefulness may be ornamental. Not every invention has to be a groundbreaking feat like the light bulb.  The purpose can be solely for amusement or a minor improvement on an existing design.  See: design patent; utility patent.

USPTO

United States Patent and Trademark Office.

Utility

Defines usefulness of a patented invention. An absolute requirement in determining patentability for a utility patent application. The invention must contain one of the three basic conditions of patentability. A patent is not available for any invention that does not perform some useful function of positive benefit to society.

Utility patent

The largest group of patent type.  According to 35 USC 101; utility patents are subdivided into mechanical, electrical and chemical categories. See: design patent, patent, plant patent.

Validate (a disclosure)

An invention disclosure's date is usually legally established when signed by a person who understands the subject matter and does not stand to gain from the invention, or by a notary public.

Validity of a patent

The inventive subject matter in a patent must work the way it is stated and meet all other legal requirements in order to be valid. Validity may be challenged after a patent issues through federal court.

Value-added

The primary reason an innovation commands a higher price is from customer perception of its value-added features.

VC

See: venture capital.

Venture capital

Money made available for investment in innovative enterprises or research, especially in technology, in which both the risk of loss and the potential for profit are considerable. Sometimes referred to as risk capital.

Venture capitalists

See: venture capital.

Venture capitalists

Sometimes referred to as VCs, are funding entities that generally provide funds to exploit an innovation or technology. They are usually separated into first-stage VC and second-stage VC. First-stage VCs provide funding early on in development so a business may ramp up its initial sales. Second-stage VCs usually provide funds after the initial product launch so a business may make a major market push and exploit sales nationally or worldwide. See: angel.

Verification

When a new invention is recorded it is referred to as an invention disclosure. The disclosure establishes the date of original conception. An invention disclosure should have a form of verification, such as being notarized or signed and dated by a responsible party that does not stand to gain from the invention. See: date of original conception, invention disclosure.

Verify (a disclosure)

See: validate (a disclosure).

Video news release

Sometimes referred to as VNR’s, are similar to satellite media tours in content, but are pre-recorded and not interactive.

Virtual business

A business that conducts its commerce primarily online via the internet. May also refer to the underlying business structure that is computer-based.

Virtual prototype

Computer generated (or animated) drawings and simulations of an innovation and how it is used.

Waiver

In a license agreement refers to release of a right described within the agreement.

Warning label

Many products require legal notices advising users of potential dangers. For example with drugs, electrical devices, thin gauged plastic bags, and so on. See also: law labels.

Wholesale cost

Refers to the cost of goods sold by a manufacturer, paid by a distributor. See: wholesale sell price, retail price.

Wholesale sell price

Refers to the price of goods sold by a distributor to a retailer. See also: wholesale cost, retail price.

WIPO

World Intellectual Property Organization. The agency of the United Nations that promotes the development and protection of IP through its members.

Word search

The common methodology used to search both patents and trademarks.

World Intellectual Property Organization

See: WIPO.

World Intellectual Property Organization (WIPO)

A union of member countries formed by the Paris Convention for the Protection of Industrial Property; this organization is one of the16 specialized agencies of the United Nations system. WIPO, located in Geneva, Switzerland, was created in 1967 and is responsible for promoting the protection of intellectual property throughout the world.

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The Innovator's Almanac™ and Innovator’s Dictionary™ is copyright 2003-2010 IPT Co. with contributions from Michael Neustel & Associates.



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