Definition of Intellectual Property Terms

A restriction requirement is a request by the patent examiner to elect one invention for examination during prosecution of the patent application.  A patent application may describe two or more inventions.  However, the claim set may have claims that are directed to two or more inventions.  The examiner will request the applicant to limit the claims to or select (i.e., elect or election) one of the inventions for examination due to the burden of examining two or more inventions.

If you elect one of the inventions for examination, you are not foregoing the non-elected inventions.  You may always pursue the non elected inventions through the filing of a continuing application.

A continuation, divisional or continuation-in-part application.
A continuation patent application is a second patent application containing claims directed to the same invention as a first filed patent application.  Also, the second patent application must be filed while the first patent application is still pending (i.e., before patenting or abandonment).

A divisional patent application is a second patent application containing claims directed to a different invention as a first filed patent application.  Also, the second patent application must be filed while the first patent application is still pending (i.e., before patenting or abandonment).

A continuation in part application is a second patent application disclosing at least some of the same subject matter as a first filed patent application and also adding subject matter to the patent application.  Also, the second patent application must be filed while the first patent application is still pending (i.e., before patenting or abandonment).

An office action is a written explanation by an examiner at the United States Patent and Trademark Office (USPTO) of the reasons for rejecting a patent application.  The office action summarizes the examiner’s review of the patent application and search of the prior art to see if the invention meets the legal requirements to get a patent.  If the patent application is rejected, then the office action will list out the reasons for the rejection and the basis for the reasons.  Typically, a response to the office action must be made within three months of the mail date of the office action.  The response to the office action may be made by after the initial three month period with the payment of progressively higher extension of time fee.

I’ve written an extensive article on how to respond to an office action.  Click on the following link.  How to respond to an office action?

A provisional patent application is a lower cost option compared to a non provisional patent application.  At a minimum, the provisional patent application must contain an explanation of the invention and drawings if necessary to understand how to make and use the invention.  Provisional patent applications are automatically abandoned 12 months after filing and cannot be extended.  They are never examined by the Patent Office.

Compare to nonprovisional patent application.

Patent protection is used in two different ways by patent attorneys.  Patent attorneys say that you are patent protected when you file a patent application.  This is incorrect because you do not have a patent when you file an application for patent.  It is merely an application at that point without any enforceable patent rights.

If and when the patent application matures into a patent, you have enforceable patent rights.  You are patent protected.

A patent application serial number is a two digit number followed by 6 digits.

The 6 digits increase sequentially until reaching 999,999 at which time the first two digits increase and the 6 digits resets to 000,000.

Xx/xxx,xxx

Provisional utility patent applications start around 62/xxx,xxx series

Nonprovisional utility patent applications start around 15/xxx,xxx series.

Design patent applications start around 29/xxx,xxx series.

The Patent Cooperation Treaty (PCT) is a multilateral treaty that creates an international filing procedure. The procedure consists of two stages, both of which are handled by the International Bureau in Geneva. The first stage consists of filing an international application that places the applicant under no obligations to pursue the matter further (although the application will be published). During the second stage, several national and regional patent offices have the opportunity to review the merits of the application and issue patents if they so choose.