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.
|Patent||Continuing application (continuation, divisional and continuation-in-part applications)|
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).
|Patent||Office Action||The official stance of the patent office on whether your application for patent has been denied or accepted. If the office action discusses novelty and obviousness, then the office action is on the merits of your application. If the office action becomes final, then the examiner need not consider extensive arguments for patentability. You must file a Request for Continued Examination or a Continuation patent application to have the examiner consider your amendments and arguments.|
|Patent||Abandonment||A patent application becomes abandoned when the applicant fails to respond to an office action.|
|Patent||Provisional patent application v. nonprovisional patent application|
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 a disclosure of the invention and drawings if necessary to understand the invention. Provisional patent applications are automatically abandoned 12 months after filing and cannot be extended. They are never examined by the Patent Office.
A non provisional patent application must include a disclosure of the invention, a claim and at least one drawing if necessary. Formally, the non provisional patent application also includes an abstract, background section, brief summary of the invention section, brief description of the drawing section, and a full claim set. The non provisional patent application enters the queue for examination on a first come first served basis.
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.
Provisional utility patent applications start around 62/xxx,xxx series
Design patent applications start around 29/xxx,xxx series.
|Patent||Patent or Invention Assignment||A transfer of right from one entity to another. In patent matters, an invention vests with the person that conceives of the idea. For a corporation or the employer to own the invention, the invention must be assigned to the entity. Otherwise, the employee or inventor owns the invention. The entity could own or use the invention through other doctrines such as the hired-to-invent or shop rights.|
|Patent and Trademark||Assignee||The entity which receives the (patent and/or trademark) rights.|
|Patent and Trademark||Assignor||The entity which gives the (patent and/or trademark) rights.|