Patent – the governmental grant of a right, privilege, or authority to exclude others from making, using, marketing, selling, offering for sale, or importing an invention for a specified period (20 years from the date of filing); also the name for the official document so granting)

    This page is continued from Property >>>> Intellectual Property >>>> Hard Intellectual Property:

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patent:
n. (14c)

l. The governmental grant of a right, privilege, or authority.

2. The official document so granting. — aka public grant.  See LETTERS PATENT.

call patent:
(18c)

1. A land patent in which the corners have been staked but the boundary lines have not been run out at the time of the grant.

escheat patent See escheat grant under GRANT (4).

land patent: (1821) An instrument by which the government conveys a grant of public land to a private person.

lapse patent: (18c) A land patent substituting for an earlier patent to the same land that lapsed because the previous patentee did not claim it.

3. The right to exclude others from making, using, marketing, selling, offering for sale, or importing an invention for a specified period (20 years from the date of filing), granted by the federal government to the inventor if the device or process is novel, useful, and nonobvious. 35 USCA §§ 101-103.  *  The holding of a patent alone does not by itself grant any right to make, use, or sell anything if that activity would infringe another’s blocking patent. — aka patent of invention; patent right; patent grant.

     “The franchise which the patent grants consists altogether in the right to exclude everyone from making, using or vending the patented article, without the permission of the patentee. This is all he obtains by the patent.” Bloomer v. McQuewan, 55 U.S. 539, 549 (1852).

     “What, exactly, is a patent and how does it operate to foster the ‘progress of the useful arts’? In its simplest terms a patent is an agreement between an inventor and the public, represented by the federal government: in return for a full public disclosure of the invention the inventor is granted the right for a tixed period of time to exclude others from making, using, or selling the denned invention in the United States. it is a limited monopoly, designed not primarily to reward the inventor (this may or may not follow), but to encourage a public disclosure of inventions so that after the monopoly expires, the public is free to take unrestricted advantage of the invention.” Earl W. Kintner & Jack L. Lahr, An Intellectual Property Law Primer 7-11 (2d ed. 1982).

> basic patent. See pioneer patent.

b blocking patent. (1964) One of two patents, neither of which can be effectively practiced without infringing the other. 0 For example, if A patents an improvement of B’s patented invention, A cannot practice the improve ment without infringing B’s patent. Nor can B use the improvement without infringing A’s patent. Owners of blocking patents often cross-license each other. See

fencing patent; DOMINATION.

b broadened reissue patent. (1939) Patents. A patent that is issued again, having broader claims than the original, surrendered patent. 0 Under 35 USCA § 251, a patent

. may be reissued, under certain circumstances, with broader claims than the original patent if the reissue application is filed within two years of the grant of the original patent. See INTERVENING RIGHTS.

v business-method patent. (1998) A U.S. patent that describes and claims a series of process steps that, as a Whole, constitutes a method of doing business. 0 Until 1998, methods for doing business were not expressly recognized as being patentable. In that year, the Federal Circuit Court of Appeals held in State Street Bank a Trust Co.-v. Signature Pin. Group, Inc., 140 F.3d 1368 (Fed. Cir. 1998), that business methods are subject to the same legal requirements for patentability as any other process or method. -Abbr. BMP. .Also termed cyberv

patent. ’

> combination patent. (1868) A patent granted for an invention that unites existing components in a novel and nonobvious way.

> Community patent. (1966) An international patent issued by the European Patent Office. 0 Community patents are good for 20 years from the application date. They may be registered in any country in the European Union and other EPC signatories.

capending patent. (1908) A patent whose applica~ tion is being prosecuted at or near the same time as another, similar patent. 0 Continuing applications must be copending with an existing patent application. A copending patent may affect another patent’s validity if it discloses the same invention, or discloses some part of the invention that, combined with other prior art, results in anticipation (esp. if the copending patent is issued before the affected patent). A copending patent may be shown to be an unpatentable improvement on another copending patent’s invention. 35 USCA § 102(e). See COPENDING.

> cyberpatent. 1. See business-method patent. 2. See Internet patent.

> design patent. (1875) A patent granted for a new, original, and ornamental design for an article of manufacture; a patent that protects a product’s appearance or nonfunctional aspects. 0 Design patents ~which, unlike utility patents, have a term of only 14 years from the date the patent is granted -are similar to copy’

rights. 36 USCA § 171.

v dominating patent. See fencing patent.

r fencing patent. (1944) A patent procured for some aspect of an invention that the inventor does not intend

to produce but that the inventor wants to prevent com~ petitors from usin in making improvements. 0 By making a claim w iose only purpose is to protect other claims, the inventor seeks to ‘ fence in” any such competing improvements. Courts disfavor fencing claims. -Also termed dominating patent.
 
,improvement patent. (1910) A patent having claims directed to an improvement on a preexisting invention. 0 If the preexisting invention is patented by another, the owner of the improvement patent may need a license to practice the invention covered by the claims of the improvement patent. Similarly, the oWner of the preexisting invention’s patent may need a license to practice the invention in the improvement patent. Cf. pioneer patent. ‘
 
v in-force patent. (1996) A patent that has not expired or been ruled invalid.
 
> Internet patent. A type of utility patent granted on an invention that combines business methods and software programs for Internet applications. -Also termed
 
cyberpatent.
 
rmethod patent. (1920) A patent having method or process claims that deline a series of actions leading to
 
a tangible physical result. -Also termed process patent.
 
> paper patent. (1907) A patent granted for a discovery or invention that has never been used commercially. O A paper patent may receive less protection under the law than a patent granted for a device that is actually used in industry. As a prior-art reference, a paper patent may carry less weight with examiners than one for an invention that has been commercially exploited, because it may suggest that the invention did not work as claimed.
 
pioneer patent. (1889) A patent covering a function or a major technological advance never before performed, a wholly novel device, or subject matter of such novelty and importance as to mark a distinct step in the progress of the art, as distinguished from a mere improvement or
 
perfection of what had gone before. 0 Under U.S. law, the claims of a pioneer patent are entitled to broader interpretation and to be given a broader range of equiva~ lents. A pioneer patent is usu. the first one documented by a patent-tracking service, although it may not be the first patent published by a national registry, such as the
 
PTO. Cf. improvement patent.
 
“To what liberality of construction these claims are entitled depends to a certain extent upon the character of the invention, and whether it is what is termed on ordinary parlance a ‘pioneer.’ This word, although used somewhat loosely, is commonly understood to denote a patent covering a function never before performed, a wholly novel device, or one of such novelty and importance as to mark a distinct step in the progress of the art, distinguished from a mere improvement or perfection of what had gone before.” Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 561-62, 18 S.Ct. 707, 718 (1898).
 
> plant patent. (1931) A patent granted for the invention
 
or discovery of a ne and distinct variety of asexually reproducing plant. 3 USCA § 161.
 
> process patent. (1878) A patent for a method of treating specified materials to produce a certain result; a patent outlining a means of producing a physical result independently of the producing mechanism. 0 The result might be brought about by chemical action, by applying some element or power of nature, by mixing certain
 
substances together, or by heating a substance to a certain temperature. See method patent.
 
> reissue patent. (1877) A patent that is issued to correct unintentional or unavoidable errors in an ori inal patent, such as to revise the specification or to x an invalid claim. 0 A reissue may correct patent defects that might call the validity of the patent into question. It is also used, although rarely, to make the claims broader or narrower. ‘Ihe patentee risks the possibility that previously allowed claims may be rejected. It does not change the term of the patent. 35 USCA § 251. Sometimes shortened to reissue.
 
> submarine patent. (1994) Slang. A patent that is delayed in prosecution by the applicant in order to let an infringing user continue to develop its business, with the intention of taking in later-invented technology once the patent finally “surfaces” from the U.S. Patent and Trademark Office. 0 Typically, the patent applicant is aware of the developments and consciously delays the PTO’s issuance of a patent, so that the invention’s unwitting users will be forced to pay license fees. As of 29 November 2000, most patent applications must be published within 18 months of filing, so submarine patents are. relatively rare now. See CONTINUATIONAPPLICATION LACHES DOCTRINE.
 
v utility-model patent. See UTILITY MODEL.
 
p utility patent. (1883) A patent granted for one of the following types of inventions: a process, a machine, a manufacture, or a composition of matter (such as a new chemical). 0 Utility patents are the most commonly
 
issued patents. 35 USCA§ 101. patentability Opinion. See OPINION (2).
 
patentability search. (1919) An inventor’s research into a field’s state of the art to determine whether an inven
 
tion will qualify for patent protection. Cf. INFRINGEMENT SEARCH; VALIDITY SEARCH.
substances together, or by heating a substance to a certain temperature. See method patent.
 
> reissue patent. (1877) A patent that is issued to correct unintentional or unavoidable errors in an ori inal patent, such as to revise the specification or to x an invalid claim. 0 A reissue may correct patent defects that might call the validity of the patent into question. It is also used, although rarely, to make the claims broader or narrower. ‘Ihe patentee risks the possibility that previously allowed claims may be rejected. It does not change the term of the patent. 35 USCA § 251. Sometimes shortened to reissue.
 
> submarine patent. (1994) Slang. A patent that is delayed in prosecution by the applicant in order to let an infringing user continue to develop its business, with the intention of taking in later-invented technology once the patent finally “surfaces” from the U.S. Patent and Trademark Office. 0 Typically, the patent applicant is aware of the developments and consciously delays the PTO’s issuance of a patent, so that the invention’s unwitting users will be forced to pay license fees. As of 29 November 2000, most patent applications must be published within 18 months of filing, so submarine patents are. relatively rare now. See CONTINUATIONAPPLICATION LACHES DOCTRINE.
 
v utility-model patent. See UTILITY MODEL.
 
p utility patent. (1883) A patent granted for one of the following types of inventions: a process, a machine, a manufacture, or a composition of matter (such as a new chemical). 0 Utility patents are the most commonly
 
issued patents. 35 USCA§ 101. patentability Opinion. See OPINION (2).
 
patentability search. (1919) An inventor’s research into a field’s state of the art to determine whether an inven
 
tion will qualify for patent protection. Cf. INFRINGEMENT SEARCH; VALIDITY SEARCH.
 
patentable, adj. (1817) Capable of being patented <‘patentable processes>.
 
patentable combination. (1849) A series of process steps, mechanical elements, or a mixture of materials that produce a desirable result or effect that is not obvious from the qualities of the individual components or steps.
 
patentable subject matter. (1871) Things that by law can be patented; any machine, process, manufacture, or material composition, or an improvement to such things, that (1) is discovered or invented, (2) is new and useful, and (3) meets the statutory conditions and requirements to qualify for a patent. 0 Patents may be issued for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 USCA § 101. Patents may not be issued for laws of nature, naturally occurring materials, physical phenomena, or abstract ideas and formulas. But if a natu
 
rally occurring material is processed in a way that gives it a new use, that process may be patentable. –Often shortened to subject matter. —Also termed statutory subject matter.
 
Patent Act. Pa tents. The current federal statute govern~ ing patent registrations and rights, enacted in 1952. 35 USCA §§ 1 et seq. 0 The Act reversed several Supreme Court doctrines of patentability by eliminating the syner’ gism and “flash of genius” requirements for combination

patents (§ 103), making “means-plus-function” claims valid once again (§ 112), and narrowing the patent-misuse doctrine of contributory infringement (§ 271). –Also termed Patent Act of 1952.

Patent Act of 1790. Hist. The first US. patent statute, establishing a board to examine patent applications, specifications, and drawings to determine w ether the invention is “sufficiently useful and important” to justify the granting of a patent. 0 The examining board, comprising the Secretary of State, the Secretary of War, and the Attorney General, was abolished three years later in favor of a

simple registration system.

Patent Act of 1793. Hist. An early U.S. patent statute that (1) abandoned the examination process in favor of simple registration (2) established the infringement defenses of invalidity for lack of novelty or public use; and (3) articulated the four categories of patentable subject matter as machine, manufacture, composition of matter, and art (now called process). 0 The State Department handled the registration of patents, and their question of their validity was left up to the courts.

Patent Act of 1836. Hist. The U.S. statute that charged the Patent Office with examining patent applications for novelty and utility, and that iirst required claims in patent

applications.

Patent Act of 1870. A US. statute that shifted the burden of disclosing the exact nature of an invention to the patent applicant by requiring a rigorous listing of distinct claims. 0 Before the Act was passed, patent claims were less important than the description and drawings, and the scope of the patent grant was often ambiguous.

Patent Act of 1952. See PATENT ACT. patent agent. See AGENT. patent ambiguity. See AMBIGUITY (1).

patent agent. See AGENT. patent ambiguity. See AMBIGUITY (1).

Patent and Copyright Clause. (1929) Constitutional law. The constitutional provision granting Congress the authority to promote the advancement of science and the arts by establishing a national system for patents and

copyrights. US. Const. art. I, § 8, cl. 8.

Patent and Trademark Depository Library. A library that has been designated by the US. Patent and Trademark Ofiice as an ofhcial repository for information to aid in a patent or trademark search. -Abbr. PTDL.

Patent and Trademark Law Amendments Act. See BAYHDOLE ACT.

Patent and Trademark Office. The Department of Commerce agency that examines patent and trademark applications, issues patents, registers trademarks, and furnishes patent and trademark information and services to

the public. –Abbr. PTO.

patent application. (1893) Patents. An inventor’s request for a patent, filed with the US. Patent and Trademark Office and accompanied by a specification (ending with at least one claim), drawings, the filing fee, and (except for a provisional patent application) an oath or a declaration.

p allowed application. (1897) A patent application for which the U.S. Patent and Trademark Office examiner has determined that at least one pending claim meets the conditions for patentability. 0 W hen an application is allowed, the PTO notifies the applicant through

a Notice of Allowability and a Notice of Allowance.

ane a patent application is allowed, a patent normally Issues after the applicant has paid the required issue fee.

5 application for a reissue patent. (1901) An application by a patentee to change the scope of a atent that has already been issued, or to correct clerica or technologi. cal errors in the issued patent; O The scope of the claims can be broadened only if the application is made within two years of the date the patent was issued. See reissue patent under PATENT (3). Cf. certificate of correction

tinder CERTIFICATE.

> child application. (1973) A later-filed application in a chain of continuing applications filed during the pendency of an earlier application and sharing common subject matter. 0 The iirst-filed application is called the parent application. Cf. parent application.

> continued-prosecution application. (2000) A request to abandon a patent application after iinal rejection and reopen a new case with the same file wrapper as the parent application. 0 CPAs are authorized in 37 CFR

§ 1.53. Abbr. CPA. -Also termed Rule 1.53 applica~ tion. Cf. REQUEST FOR CONTINUED EXAMINATION.

> continuing application. (1870) A patent application that is iiled While the parent application is pending and that carries on’ prosecution of some or all of the original application. 0 Continuation, continuation-impart, divisional, and reissue applications are all forms of continuing applications. ’

> Convention application. (1927) A patent application filed in” accordance with the terms of an international patent treaty such as the Paris Convention or the Patent Cooperation Treaty.

h divisional application. (1889) A patent application based on the same disclosure as the original application but claiming a different invention. 0 If an examiner finds that a disclosure reveals two or more distinct inventions, the applicant must restrict the original application to claiming one of the inventions. A divisional application can then be filed on any nonelected invention, and it will keep the same filing date as the parent application. –Often shortened to divisional. –‘ Also termed restriction application.

file-wrapper continuation application. 1. See CONTINUATION. 2. See CONTINUATIONeIN-PART.

> grandparent application. (1968) The first-filed application in a chain of at least three continuation or contin~ uation-in-part patent applications.

> informal application. (1876) A patent application that is not in the correct form as required by the US. Patent and Trademark Office. 0 According to the Manual of Patent Examining Procedure, an application is informal if it is printed on both sides of the paper, or is not permanent, legible, or reproducible. An informal application may be corrected and still retain the original filing date.

> international application. (1967) An application under the Patent Cooperation Treaty for patent protection in specified member countries. 0 A PCT filing may be added as long as 31 months after the initial filing in a national patent office. It allows for simultaneous patent searches and examinations in multiple countries. –

Also termed PCT application; PCT filing. See PATENT COOPERATION TREATY.

international application designating the United States. (1971) An international-patent app ication that is filed in accordance with the Patent Cooperation Treaty and specifically seeks patent protection in the United States. 0 The application ma be filed in any country, including the United States, t at is a party to the treaty.

y international application originating in the United States. (1971) An international-patent application that is filed in the U.S. Patent and Trademark Office in accor’ dance with the Patent Cooperation Treaty. 0 Under the treaty, the PTO acts as a receiving office for interna’ tional applications. The applicant may or may not be seeking patent protection in the United States.

v parent application. (1905) The first-filed application in a chain of later-filed continuation or continuation-inpart applications. 0 An application becomes the parent application When another type of application (such as continuation, divisional, or substitute) is filed. The term “parent” is generally not used to refer to a provisional application. Cf. child application.

> provisional application. (1891) An application that can be filed up to a year before the patent application itself, in order to establish a date for prior art and constructive reduction to practice. 0 The PPA must include a full description of the invention, but claims, drawings and prior-art disclosures are not required. Also termed provisional patent application. -Abbr. PPA.

> restriction application. See divisional application.

> Rule 1.53 application. See continued-prosecution application.

> substitute application. (1885) A duplicate application filed after the response period for a first OH’lCC action has expired and the first application has been deemed abandoned. 0 A substitute application carries some danger for the applicant: the original filing date is lost, and any developments since that date become prior art that the examiner must consider before granting the patent.

gent-application amendment. (1971) Patents. A modifi

Pcan’on to a patent application, usu. narrowing or eliminating some claims in response to an examiner’s rejection.

, amendment after allowance. (1959) An amendment submitted to the US. Patent and Trademark Office after the PTO has mailed notice of a patent application’s approval. 0 Once a notice of allowance has been mailed,

prosecution of the application is closed on the merits, and the entry of any amendment is within the discretion of the patent examiner. Amendments after allowance commonly address such matters as an amendment to the specification or claims, a change in the drawings or the list of inventors, and the submission of prior art. Amendments that merely correct formal matters in the specification or drawings, change the claims without changing their scope, or cancel a claim are typically approved by the Office. Amendments of greater significance require approval of the supervisory examiner under policies established by the group director. CFR § 1.312. -Also termed 312 amendment; Rule 312

amendment. See amendment after payment of issue fee.

> amendment after appeal. (1909) An amendment made after an appeal is taken from a patent application’s final rejection. 0 Such an amendment is not made as a matter of right but is frequently allowed if it puts the case in

better form for consideration on appeal or helps implement an examiner’s recommendation.

> amendment after final action. (1964) An amendment made after final rejection of the patent application. 0 The amendment may dro claims but not add them. To be entered, it may make changes in form, but may not raise new issues for the examiner. CFR § 1.116. -Also termed Rule 116 amendment.

b amendment after payment of issue fee. (1984) An amendment made by the applicant after the application has been allowed and the issue fee paid. 0 Such an amendment is not made as a matter of right but is governed by 37 CFR § 1.312. It must be accompanied by a petition to the Commissioner showing good and sufhcient reasons why the amendment was not presented earlier. See amendment after allowance.

> amendment before first action. See preliminary amendment. v’ ‘ ‘

r amendment, in excess of filing fee. An amendment to a patent application that increases the number of claims in the original application and requires payment of an

additional fee.

> preliminary amendment. (1936) An amendment filed before the US. Patent and Trademark Office issues an office action on a patent application. 0 Amendments that are not filed with the original application are not considered part of the original disclosure. –Also termed amendment before first action.

> Rule 116 amendment. See amendment after final action. > Rule 312 amendment. See amendment after allowance. , 312 amendment. See amendment after allowance.

patent attorney. (1870) Patents. A lawyer who drafts and prosecutes patent applications, and who represents inventors in infringement suits and interference hearings; esp., a member of the Patent Bar. 0 In addition to a law license, a patent attorney must have a scientific or technical back

ground, pass the patent bar examination, and be licensed by the US. Patent and Trademark Oflice. Cf. AGENT.

patent claim. (1832) Patents. A formal statement describing the novel features of an invention and defining the sc0pe of the patent’s protection <claim #3 of the patent describes an electrical means for driving a metal pin>. Cf. SPECIFICATION (3).

“[The Patent] application concludes with one or more ‘claims,’ which are summaries of the points of novelty of the invention disclosed by the specification, said claims also following certain fixed forms. If they are broad and in general terms, the patentee will be well protected, and will be the possessor of a worth while patent; but if, on the other hand, the claims are limited in scope, if they recite a multiplicity of exactly stated and unimportant elements, or if they are bad in any one of a number of other ways, the chances of success are small, the patent will be full of loopholes of which infringers will be prompt to take advantage, the inventor will not have received all he is entitled to, nor all he has paid for, and, if the claims are very limited, it is more than likely that he will have obtained a patent not worth the paper upon which it is printed.” Richard B. Owen, Patents, Trademarks, Copyrights, Departmental Practice 14

(1925).

“The claims of a patent application are the ‘legal heart’ of the application and are the single most important part of the entire application. The claims define the scope of legal protection granted by the patent which eventually issues from the patent application. The claims define, in technical

terms, the extent of the proteCtion conferred by a patent, or the protection sought in a patent application. The claims are of the utmost importance both during prosecution and litigation, since well over 95 percent of the proseCution will be directed to defining the invention, via the claims, to overcome the prior art, and since the claims of the issued patent will determine whether or not a product infringes on the patent.” Morgan D. Rosenberg, Patent Application

Drafting: A Practical Guide 1 (2012).

> apparatus claim. (1919) A patent claim on a mechanical device, explaining how the components are connected and function together. 0 The preamble of an apparatus claim typically states the function of the machine; the body explains its elements and how they work together.

> appendant claim. See dependent claim.

> closed-ended claim. (1991) A patent claim that expressly limits its scope to a list of elements, typically introduced by the phrase .‘5 consisting of.” Cf. nearly closed-ended claim; open-ended claim. ‘

r coined-name claim. A chemical-patent claim consisting only of the name of the new material. 0 A coinedname claim is allowed by the US: Patent and Trademark Office only on the rare occasion when the name is established in the field before the patent is applied for. The chemical composition, its physical properties, and the process for making it must ‘still be disclosed in the speci‘ flcation.

I i . a i . r dependent claim. (1930) A patent claim that refers to and further limits another claim or set of claims in the

same patent application. ~Also termed appendant claim.

,. design claim. (1938) The single claim allowed in an application for a design patent, incorporating by reference the drawing and other specifications. 0 The brief claim typically starts with “an ornamental design for” and ends with “as shown” or “as shown and described.” Cf. omnibus claim.

fingerprint claim. (1992) A chemical-patent claim that differentiates the material from prior art in terms of some physical feature, such as melting point or spectrum, rather than its chemical composition. 0 Pingerprint claims are allowed only when the chemical composition cannot be determined or cannot be dis

tinguished from prior art.

> generic claim. (1879) A claim that encompasses a class of elements, any of which could function as equivalents. O For a generic claim to be valid, the specific elements it encompasses must have a definable feature in common that makes them lit for the purpose. –Also termed genus claim. Cf. species claim.

p improvement claim. See Iepson claim.

v independent claim. (1877) A patent claim that does not refer to any other claim.

> Iepson claim. (1943) An improvement-patent claim characterized by a preamble setting forth the current state of the art, followed by the phrase “the improvement comprising” and a description of the claimed patentable improvement. 0 The name comes from Ex parte Iepson, 1917 CD. 62, 243 O.G. 526 (Ass’t Comm’r Pat.

1917), in which this type of claim was first approved and sanctioned by the Commissioner of Patents. -Also

termed improvement claim.

Markush claim. (1933) A patent claim that includes elements listing alternative chemicals, materials, or steps in a process. 0 A Markush claim typically has language such as “selected from the group consisting of.” The alternatives must all give the same result, rather than patentably distinct products. The name derives from Ex parte Markush, 1925 Dec. Comm’r Pat. 126,

See MARKUSH DOCTRINE.

b means-combination claim. (1967) A type of claim in a patent application that includes multiple limitations, at least one of which is in means-plus-function or stepplus-function form. 0 Means-combination claims are

acceptable to examiners.

b means-plus-function claim. See MEANS-PLUS-FUNC~ TION CLAUSE.

> method claim. (1895) A patent claim that describes what is done to a workpiece in order to achieve the useful result claimed. 0 A method claim is the same thing as a process claim, but “method” is used more often in applications for mechanical and electrical

devices.

‘ . > multiple-dependent claim. (1970) A dependent claim that refers to more than one other preceding claim.

> nearly closed-ended claim. (2004) A patent claim that limits its scope to a list of elements but does not expressly exclude close analogues. The claim is typically introduced by a phrase such as “consisting essentially of.” Cf. closed-ended claim; open-ended claim.

> new-use claim. (1976) A method claim for a new way of using an existing invention.

r nonelected claim. (1960) A claim that has been withdrawn from consideration based on the examiner’s finding that the application claims more than one invention. 0 The applicant must elect to prosecute one invention. Other claims may either be abandoned or else be prosecuted separately under a divisional application. See RESTRICTION (4).

p nonstatutory claim. See omnibus claim.

omnibus claim. (1922) A claim in a patent application that does not distinctly narrate a means to carry out a function but rather refers to the drawings or descrip~ tion with phrases such as “as described and shown.” 0 Omnibus claims are rejected in the United States but are accepted elsewhere. -Also termed nonstatutory claim. Cf. design claim.

> open-ended claim. (1991) A patent claim that contains a nonexclusive list of elements, typically introduced by the phrase‘ ‘consisting of. ’ 0 A later patent applicant cannot avoid infringement by merely adding an analogue to the list. Cf. closed-ended claim; nearly closed-ended claim.

v plant-patent claim. (1933) The single claim in a plantpatent application, describing the principal distinguish~ ing characteristics of the plant.

p process claim. (1879) A patent claim that describes by steps what 18 done to the subject matter, usu. a sub stance, in order to achieve a useful result 0 A process claim 18 the same thing as a method claim, but“ process” is used more often in applications for chemical patents

> product-by-process claim. (1946) A patent claim defining a product through the process by which it is

made. 0 The product-by-process claim is most often used to define new chemical compounds, such as drugs.

y product claim. (1919) A patent claim that covers the structure, apparatus, or composition of a product.

p single-means claim. (1930) A type of claim in a patent application that indicates a process, result, or function but does not describe the method of reaching that end <a method of curing cancer>. 0 Where no other method is obvious, such an assertion claims rights to all possible ways of achieving the result -« ways not specifled in the application and even ways that have not yet been invented. Single-means claims are rejected as too broad. -Also termed single-element means claim. Cf. MEANS-PLUS-FUNCTION CLAUSE.

> species claim. (1928) A claim that is limited to a single apparatus, process, composition of matter, or article of manufacture, rather than to a range of similar and related items. Cf. generic claim.

r Squires claim. (2009) A utility-patent claim that incorporates a drawing or table by reference. 0 This claim is allowed by the U.S. Patent and Trademark Oflice only if there is no practical way to define the invention in words, but the invention is simple to illustrate with the drawing or table. See SQUIRES DOCTRINE.

> subcombination claim. (1918) A patent claim, usu. on a device, describing a subsystem of a larger combination. 0 A subcombination may be patented separately if it has its own utility.

Patent Cooperation Treaty. Patents. A 1970 treaty that streamlined the process of securing patents in multiple countries by establishing a single filing date and provid~ ing for a single preliminary patent search. 0 An inventor who wants to qualify for patents from several member countries files a standard application in one country, thus preserving the priority date, then submits a PCT filing that designates which other countries’ patents are being applied for. WIPO, the United Nations’ World Intellectual Property Organization, administers the treaty. Often

shortened to PCT. See international application under PATENT APPLICATION.

patent danger. See apparent danger (1) under DANGER. patent deed. See LETTERS PATENT. ~

patent defect. See DEFECT. patent defect in title. See DEFECT IN TITLE (1). patent deposit. See DEPOSIT (6).

patent disclaimer. See statutory disclaimer under DISCLAIMER.

patentee (pat-an-tee). (17c) Patents. Someone who either has been granted a patent or has succeeded in title to a patent. 0 Although it might seem helpful to distinguish a patentee as a person to whom a patent is issued and a patent-holder as the owner of a patent, including the original grantee’s assigns, the Patent Act explicitly includes all title-holders under the term “patentee.” 35 USCA § 100(d). -Also termed patent-holder; patent

owner.

patent-exhaustion doctrine. (1977) Patents. The rule that the unconditioned sale of a patented article ends the patentee’s monopoly right to control its use. 0 That control may still be exercised by limitations in a contract

or license, as long as it does not amount to anticom etitive patent misuse. Adams v. Burke, 84 U.S. (17 Wall. 453

(1874). See FIRST-SALE DOCTRINE.

patent grant. See PATENT ( 3). patent-holder. See PATENTEE. patent infringement. See INFRINGEMENT.

patent in suit. (1846) Patents. The patent currently being litigated; the patent at issue in the present lawsuit. -Also written patent-in-suit.

patent insurance. See INSURANCE.

patent marking. (1929) Patents. The incorporation or affixation of a patent number to a patented article’s surface or surrounding packaging. o Aflixing the patent number to a product gives constructive notice of patent rights to infringers. Without the number in place, a patentee can not recover losses that occur before the infringer has actual notice of the patent. 35 USCA § 287. See PATENT NUMBER.

> false patent marking. See false marking under MARKING.

patent medicine. (18c) A packaged drug that is protected by trademark and is available Without prescription.

patent-misuse doctrine. *( 1950) Patents. An equitable rule that patentees should not be allowed to use their patent to effectively broaden the scope of their monopoly in restraint of trade or otherwise against the public interest. 0 Two common examples of anticompetitive broadening are (1) using a patent to restrain competition from an unpatented product or process, and (2) employing the patent beyond its lifespan to exclude others from gaining commercial advantages b using the product or process. The practical effect of finding patent misuse is the loss of patent protection. The doctrine operates independently of antitrust law but overlaps it in many ways and arose in the same era, at the turn of the 20th century. It has been described as an application of the equitable rule of “unclean hands.” See nonmetered license under LICENSE.

patent number. (1868) Patents. The unique eight-character number that the US. Patent and Trademark Oflice assigns to a patent upon issuance. See PATENT MARKING.

Patent Office. See UNITED STATES PATENT AND TRADEMARK OFFICE.

Patent Otiice Reports. Hist. The former ochial publication of the US. Patent and Trademark Oflice. 0 It was replaced

in 1872 by the Official Gazette of the United States Patent and Trademark OHice.

patent of invention. See PATENT (3).

patent of precedence. (18c) Hist. A royal grant to someone by letters patent of a higher social or professional rank than the person would ordinarily hold or be entitled to. 0 In the 19th and early 20th centuries, the patent was most often used to give certain barristers more rights and privileges. For example, 3 King’s Counsel could not represent a party against the Crown without a patent of

precedence. See PREAUDIENCE.

patentor (pat-an-tar or pat-an-tor). (1890) Someone who grants a patent.

patent-owner. See PATENTEE.

patent pending. (1917) Patents. The designation given to an invention while the Patent and Trademark Oflice


is processing the patent application. 0 The phrase warns others that a patent may issue and that if it does, copiers might become infringers. No protection against infringement exists, however, unless an actual patent is granted. -Abbr. pat. pend.

patent pool. Patents. 1. An agreement between two or more patentees to license one or more of their patents to each other or to some other party. 2. The aggregation of intellectual-property rights that are the subject of cross~ licensing, whether they are transferred directly by the patentee to a licensee or to some vehicle specifically established to administer the aggregated interests, such as a joint venture.

patent pooling. (1930) Patents. The cross-licensing of patents among patentees. 0 Patent pooling does not violate antitrust laws unless it is done to suppress competition or control an industry.

patent-prosecution process. See PROSECUTION (4). patent right. 1. See PATENT (3). 2. See RIGHT.

patent-right dealer. (1868) Someone who buys and sells or brokers the sale or purchase of patent rights.

Patent Roll. Hist. English law. A list of the letters patent issued in the United Kingdom in any given year. 0 The first Patent Roll was issued in England in 1201. The Rolls were originally used to grant oflices, lands, licenses,

peeragés, and pensions. In later centuries, they included grants of patents for inventions.

patent search. 1. See INFRINGEMENT SEARCH. 2. See PATENTABILITY SEARCH. 3. See VALIDITY SEARCH.

patent solicitor. See patent agent under AGENT.

patent suppression. (1923) Patents. The deliberate nonuse of a patent, esp. in order to deny the public or competitors the benefit of the invention. 0 Patent suppression is a rich source of urban legend, such as the rumor of oil companies sitting on inventions that would greatly improve gas mileage, or pantyhose companies suppressing a patent on no-run nylon. But the stories are not always fictional: in 1942 Standard Oil admitted trying to delay synthetic-rubber technology in order to protect its market in natural rubber.

patent term. (18c) Patents. The period during which a patent is in force. See 35 USCA § 154.

patent-term adjustment. (2000) Patents. The time enlargement that may be given to a utility or plant patent term if the issue of the original patent is delayed because of the US. Patent and Trademark Office’s failure to pros~ ecute the patent application. 0 Upon application by the patentee, the director of USPTO determines the period of any adjustment. The patent-term-adjustment provi~ sions of the American Inventors Protection Act of 1999, as amended by the Intellectual Property and High Technology Technical Amendments Act of 2002, became effective on May 29, 2000 and apply to utilityor plant-patent applications tiled on or after that date. 35 USCA § 154. –Abbr. PTA. Cf. PATENT-TERM EXTENSION.

patent-term extension. (1978) Patents. A lengthening of the time a patent remains in force, given to compensate inventors for time lost because of administrative delays such as interferences, secrecy orders, or appeals. 0 The extension applies to original utility and plant patents issued after June 7, 1995 and before May 29, 2000. Its

or license, as long as it does not amount to anticom etitive patent misuse. Adams v. Burke, 84 U.S. (17 Wall. 453

(1874). See FIRST-SALE DOCTRINE.

patent grant. See PATENT ( 3). patent-holder. See PATENTEE. patent infringement. See INFRINGEMENT.

patent in suit. (1846) Patents. The patent currently being litigated; the patent at issue in the present lawsuit. -Also written patent-in-suit.

patent insurance. See INSURANCE.

patent marking. (1929) Patents. The incorporation or affixation of a patent number to a patented article’s surface or surrounding packaging. o Aflixing the patent number to a product gives constructive notice of patent rights to infringers. Without the number in place, a patentee can not recover losses that occur before the infringer has actual notice of the patent. 35 USCA § 287. See PATENT NUMBER.

> false patent marking. See false marking under MARKING.

patent medicine. (18c) A packaged drug that is protected by trademark and is available Without prescription.

patent-misuse doctrine. *( 1950) Patents. An equitable rule that patentees should not be allowed to use their patent to effectively broaden the scope of their monopoly in restraint of trade or otherwise against the public interest. 0 Two common examples of anticompetitive broadening are (1) using a patent to restrain competition from an unpatented product or process, and (2) employing the patent beyond its lifespan to exclude others from gaining commercial advantages b using the product or process. The practical effect of finding patent misuse is the loss of patent protection. The doctrine operates independently of antitrust law but overlaps it in many ways and arose in the same era, at the turn of the 20th century. It has been described as an application of the equitable rule of “unclean hands.” See nonmetered license under LICENSE.

patent number. (1868) Patents. The unique eight-character number that the US. Patent and Trademark Oflice assigns to a patent upon issuance. See PATENT MARKING.

Patent Office. See UNITED STATES PATENT AND TRADEMARK OFFICE.

Patent Otiice Reports. Hist. The former ochial publication of the US. Patent and Trademark Oflice. 0 It was replaced

in 1872 by the Official Gazette of the United States Patent and Trademark OHice.

patent of invention. See PATENT (3).

patent of precedence. (18c) Hist. A royal grant to someone by letters patent of a higher social or professional rank than the person would ordinarily hold or be entitled to. 0 In the 19th and early 20th centuries, the patent was most often used to give certain barristers more rights and privileges. For example, 3 King’s Counsel could not represent a party against the Crown without a patent of

precedence. See PREAUDIENCE.

patentor (pat-an-tar or pat-an-tor). (1890) Someone who grants a patent.

patent-owner. See PATENTEE.

patent pending. (1917) Patents. The designation given to an invention while the Patent and Trademark Oflice


is processing the patent application. 0 The phrase warns others that a patent may issue and that if it does, copiers might become infringers. No protection against infringement exists, however, unless an actual patent is granted. -Abbr. pat. pend.

patent pool. Patents. 1. An agreement between two or more patentees to license one or more of their patents to each other or to some other party. 2. The aggregation of intellectual-property rights that are the subject of cross~ licensing, whether they are transferred directly by the patentee to a licensee or to some vehicle specifically established to administer the aggregated interests, such as a joint venture.

patent pooling. (1930) Patents. The cross-licensing of patents among patentees. 0 Patent pooling does not violate antitrust laws unless it is done to suppress competition or control an industry.

patent-prosecution process. See PROSECUTION (4). patent right. 1. See PATENT (3). 2. See RIGHT.

patent-right dealer. (1868) Someone who buys and sells or brokers the sale or purchase of patent rights.

Patent Roll. Hist. English law. A list of the letters patent issued in the United Kingdom in any given year. 0 The first Patent Roll was issued in England in 1201. The Rolls were originally used to grant oflices, lands, licenses,

peeragés, and pensions. In later centuries, they included grants of patents for inventions.

patent search. 1. See INFRINGEMENT SEARCH. 2. See PATENTABILITY SEARCH. 3. See VALIDITY SEARCH.

patent solicitor. See patent agent under AGENT.

patent suppression. (1923) Patents. The deliberate nonuse of a patent, esp. in order to deny the public or competitors the benefit of the invention. 0 Patent suppression is a rich source of urban legend, such as the rumor of oil companies sitting on inventions that would greatly improve gas mileage, or pantyhose companies suppressing a patent on no-run nylon. But the stories are not always fictional: in 1942 Standard Oil admitted trying to delay synthetic-rubber technology in order to protect its market in natural rubber.

patent term. (18c) Patents. The period during which a patent is in force. See 35 USCA § 154.

patent-term adjustment. (2000) Patents. The time enlargement that may be given to a utility or plant patent term if the issue of the original patent is delayed because of the US. Patent and Trademark Office’s failure to pros~ ecute the patent application. 0 Upon application by the patentee, the director of USPTO determines the period of any adjustment. The patent-term-adjustment provi~ sions of the American Inventors Protection Act of 1999, as amended by the Intellectual Property and High Technology Technical Amendments Act of 2002, became effective on May 29, 2000 and apply to utilityor plant-patent applications tiled on or after that date. 35 USCA § 154. –Abbr. PTA. Cf. PATENT-TERM EXTENSION.

patent-term extension. (1978) Patents. A lengthening of the time a patent remains in force, given to compensate inventors for time lost because of administrative delays such as interferences, secrecy orders, or appeals. 0 The extension applies to original utility and plant patents issued after June 7, 1995 and before May 29, 2000. Its

maximum length is five years. ~Abbr. PTE. Cf. PATENT? TERM ADJUSTMENT.

patent-term guarantee. (1994) Patents. An inventor’s statu tory right to extend the term of a patent if the application was delayed by the U.S. Patent and Trademark Office. 0 The term can be extended u to five years if the appli. cation was delayed because ofP an interference proceed~ ing or appellate review, or if the PTO missed a statutory deadline for certain steps in the prosecution, or failed to grant the patent within three years of the filing date. The

guarantee took effect May 29, 2000. patent troll. See NONPRACTICING ENTITY.

patent watch. (1976) Patents. A system for continually monitoring published patent applications and newly issued patents in a particular scientific or technological field to detect or ensure against infringements.

patent writ. See WRIT.

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