Glossary of Patent Terms

This glossary includes the most common patent terms.  Knowing them will help you communicate more effectively as you secure your patent. You can access a more in-depth explanation by clicking on each term.  This knowledge will streamline your discussions and empower you to make informed decisions about your patent. See also Glossary of Trademark Terms.

A

• Abstract – A brief summary of the patent application.  It has to be 150 words or less.
• Actual Reduction to Practice – Building a physical working prototype.  It doesn’t need to be the final product.  All that it needs to be is the minimally viable product.
• Advisory Action – An examiner’s response after a final rejection.
• Allowance Rate – Percentage of patents allowed by an examiner.
• Amendment – Changes made to the application after filing.  The amendments may be to the inventorship, the claims, the drawings and the specification.
• Anticipation Rejection – A rejection based on lack of novelty (35 U.S.C. § 102).
• Apparatus Claim – Protects a physical device.
• Appeal – A process for challenging rejections to the Patent and Trademark Appeal Board (PTAB).
• Applicant – The person or entity that owns and seeks the patent. In contrast, who is an inventor?
• Assignee – The entity receiving the patent rights.
• Assignment – Transfer of patent ownership.
• Assignor – The entity transferring the patent rights.

B

• Background of the Invention – Provides the background that leads up to the invention.  See how to write the background section.
• Best Mode Requirement – Disclosing the best way to practice the invention and the optimal ingredients, ranges, etc.
• Broadening Reissue – Expanding the scope of claims after issuance.

C

• Cease and Desist letter – A letter to an infringer demanding that they stop infringing activities.
• Certificate of Correction – Correction of errors in issued patents.
• Claim – The part of a patent defining the scope of the invention being sought in a patent application.
• Claim Construction – Interpretation of the language in a claim.
• Claim Differentiation – Reading a dependent claim to broaden an independent claim.
• Claims Drafting – The process of writing patent claims.
• Constructive Reduction to Practice – Filing an application without building the invention.  In contrast, Actual Reduction to Practice is where you build a physical working model of your invention.
• Continuation Application – An application related to a prior, pending application that does not need include any additional subject matter.
• Continuation-in-Part (CIP) – An application adding new matter to a prior pending application.
• Covered Business Method (CBM) – A review process for certain business-related patents.

D

• Declaration – Statement by the inventor(s) or applicant.
• Dependent Claim – A claim referring to another claim.  In contrast, an independent claim is one that does not refer to another claim.
• Design Patent – Protects an ornamental design. See LKQ v. GM and the looser design-patent obviousness standard (2024).
• Detailed Description – In-depth explanation of the invention.
• Divisional Application – An application based on a prior application.
• Doctrine of Equivalents – Infringement under the Doctrine of Equivalents expands claim coverage beyond literal terms.  See also Literal Infringement.
• Double Patenting Rejection – When claims are too similar to those in another patent.
• Drawings – Visual representations required in both utility and design patent applications, serving to clarify the claimed invention. In utility patents, the drawings must illustrate all claimed features as required by 37 C.F.R. § 1.83(a), while in design patents, the drawings define the claimed ornamentation.
• Duty of Disclosure – An obligation of a patent applicant and anyone involved in preparing the application to disclose all material information, including known prior art, to the USPTO to ensure a fair and thorough examination. Failure to comply can result in a patent being invalidated for inequitable conduct.

E

• Enablement – The description must enable someone skilled in the art to make and use the invention.
• EPO (European Patent Office) – The European patent authority.
• EPO Search Report – A search report generated by the European Patent Office for prior art on the invention described in the patent application.
• Ex Parte Reexamination – A reexamination of a patent by the USPTO.  All communications is between the USPTO and the patent owner.
• Examination Request – A request to reexamine a patent.
• Examiner Interview – A meeting with the examiner to discuss the application.  The meeting may be telephonic or via a web conference.
• Examiner’s Amendment – Amendments made by the examiner.
• Expedited Examination (Track One) – A request filed by an Applicant to expedite examination of the patent application.  Typically, you can think of it as your application being moved to the front of the line with all other applications that also filed a request for expedited examination.

F

• Field of Invention – At the beginning of a patent application, the first line is typically a sentence that describes the broad area related to the invention to be described in the application.
• File Wrapper – The official record of a patent application. Typically when we refer to the file wrapper, it is in reference to the old way of archiving the communication between the examiner / patent office and the Applicant. Documents were kept in a wrapper.  This wrapper was referred to as the File Wrapper. Nowadays, the communications and all other information communicated to the Patent Office and back to the Applicant is maintained on line.  We refer to this information as the Prosecution File History.
• Filing Date – The date an application is officially submitted. If this is the first filed application, then the filing date is the priority date of the application. If this is a continuing application then the filing date is not the priority date. The priority date is the filing date of the first filed application.
• Final Rejection – The first office action is typically an initial rejection and is a non-final rejection. Typically, when you respond to the office action, the next office action will be made final. This rejection is called a final rejection. When you respond to the final rejection, the examiner does not need to spend a significant amount of time researching your arguments. If you want to continue the examination process, you have to file a request for a continued examination or file a continuation application.
• Freedom to Operate (FTO) – A freedom to operate opinion is an in-depth study of a number of patents related to a client’s product. A comprehensive search is done for all patents related to a particular field. All patents that are of interest in that particular field are identified and the claims reviewed to ensure that the client’s product does not infringe any of those patterns. A freedom to operate opinion is only as good as the search that you conduct as well as the patents that you properly identify. A freedom to operate opinion does not guarantee that you’re not infringing any patents that might exist. Rather, a freedom to operate opinion only opines on whether you are infringing those patents that use identified.

H

I

• IDS (Information Disclosure Statement) – An information disclosure statement is a form listing all known prior art which satisfies your duty of disclosure under 37 CFR 1.97.
• Independent Claim – A stand-alone claim.  An independent claim does not refer to any other claim.
• Inequitable Conduct – An action taken by the applicant with an intent to deceive the patent office . For example, misrepresenting information to an examiner or not disclosing all of the prior art information that you know of can be considered inequitable conduct. An alleged infringer will use any information that appears to be inequitable conduct and raise it as a defense during litigation. If successful, the patent will be unenforceable.
• International Search Report (ISR) – Report on prior art for PCT applications.
• Intervening Rights – Defense to patent infringement due to public’s reliance of an expired patent or abandoned application that is later revived.
• Invention – A new, useful, and non-obvious idea or creation.
• Inventive Step – Another term for non-obviousness.  Frequently used by foreign patent offices.
• Inventor – The person or persons that conceived of the invention.
• Issue Fee – Fee paid before patent grant.

J

• Jepson Claim – A claim format that emphasizes the improvement over prior art.  Typically, the European Patent Office requires that claims identify the improvement over the prior art by rephrasing the claims as a Jepson claim.

K

L

• Licensing – Granting rights to a third party to use the patent, typically for a royalty.
• Literal Infringement – Infringement when an accused product matches claim terms exactly.  See also Doctrine of Equivalents.

M

• Maintenance Fees – Fees to maintain the patent active.  For utility patents, maintenance fees must be paid 3 1/2, 7 1/2 and 11 1/2 years after the patent grant. There are no maintenance fees for design patents.
• Markush Group – A claim format for listing alternative elements.  For example, a material selected from the group consisting of A, B, and C or wherein the material is A, B, or C.
• Means-Plus-Function Claim – Claims that define structure by the function performed.  For example, a means for fastening.  Memes plus function claims are not as broad as you might think. Means plus function claims are limited to the structure disclosed in the patent application and linked to the function.
• Method Claim – Protects a process or method.  Typically, it is recited as a series of steps.

N

• Negative Limitation – A claim feature defined by what it is not and not what it is (e.g., hole).
• Non-Final Office Action – Initial examination from the examiner on the merits of the claimed invention.
• Non-Obviousness – The requirement that an invention is not obvious to someone skilled in the field based on the prior art.
• Non-Provisional Application – A formal patent application which will be examined.  See also Provisional Patent Application.
• Notice of Allowance – Formal notice that the claims are allowed.  To receive a patent grant, you must pay an Issue Fee.
• Notice of Appeal – Filing a document with the PTAB to initiate an appeal of a rejection.
• Notice to File Missing Parts – USPTO notice requesting missing parts of an application.  For example, if you don’t pay all of the fees for the filing of the application, the USPTO will ask that you pay the difference. This request is made in a letter from the patent office identified as a Notice to File Missing Parts.
• Novelty – The requirement that an invention is new in relation to the prior art.

O

• Objection – Non-compliance with formal requirements.  In contrast, see Rejection.
• Obviousness Rejection – A rejection based on obviousness (35 U.S.C. § 103).
• Obviousness-Type Double Patenting – Rejection for overlapping claims across commonly owned patents.
• Office Action – A formal response from the patent office.

P

• Paris Convention – International treaty for IP rights.
• Patent – A legal right granting the right to exclude others from making, using, selling and importing the invention in the United States.
• Patent Agent – A registered professional authorized to file patent applications who is not an attorney.
• Patent Application – A request for a patent grant submitted to a patent office. The patent application typically includes a description of the invention, drawings and claim.
• Patent Attorney – A licensed attorney who has passed the patent bar exam of the USPTO specializing in patent law.
• Patent Cooperation Treaty (PCT) – An international patent application process.
• Patent Examiner – A USPTO official who reviews patent applications to determine if it has satisfied all of the requirements.
• Patent Expiration – The end of a patent’s life.
• Patent Grant – Issuance of the patent.
• Patent Infringement – A product or method that is covered by one or more claims of a patent and such use is unauthorized by the patent owner.
• Patent Landscape – A report on the patents in a specific technology area.
• Patent Marking – Labeling products to indicate that it is patented.
• Patent Portfolio – A collection of patents held by an entity.
• Patent Prosecution Highway (PPH) – An agreement between the patent offices of various countries that agree to allow certain claims if those claims are allowed in a different country. Typically, this will speeds up examination if claims were allowed in another jurisdiction.
• Patent Search – Research to find prior art to determine if the invention is new.
• Patent Term – The duration of a patent’s protection. 20 years from the first filed nonprovisional application for a utility patent.  15 years from the grant date for a design patent.
• Patent Term Adjustment (PTA) – Adjustment to the patent term for USPTO delays.
• Patent Term Extension (PTE) – Extension for regulatory delays.
• Patent Trial and Appeal Board (PTAB) – A board that handles appeals and post-grant proceedings.
• Patentability Opinion – Legal opinion on the patentability of an invention.
• Patentability Requirements – Criteria for obtaining a patent.  The basic criteria is that the invention must be novel and non-obvious in light of the prior art.
• PCT Application – A patent application filed under the Patent Cooperation Treaty.
• PCT National Phase – Entering individual countries from a PCT application.
• Petition – A formal request to the Director of the USPTO.
• Post-Grant Review (PGR) – A proceeding to challenge a patent within nine months of issuance.
• Power of Attorney – Authorization for legal representation.
• Preissuance Submission – Third-party submission of prior art before patent issuance.
• Preliminary Amendment – An amendment submitted before examination on the merits.
• Prior Art – Existing knowledge that may affect a patent’s validity.
• Priority Date – The earliest date of an invention’s filing.
• Prosecution File History or Prosecution History – The record of an application’s examination.  This typically refers to the communication between the applicant and the examiner.
• Patent Protest – A submission to the USPTO by a third party arguing against grant of a patent.
• Provisional Patent Application – A patent application that does not require formal drawings or claims. The Provisional Patent Application (PPA) expires after 12 months from the filing date and is never examined. Patent attorneys advertised this type of application as a low cost option compared to a non provisional application.

Q

• QPIDS (Quick Path Information Disclosure Statement) – A process to add prior art after final allowance and that does not require withdrawal from allowance.

R

• RCE (Request for Continued Examination) – Request to continue examination after final rejection.
• Rejection – When claims are denied by the examiner.  In contrast, see objection.
• Response to Office Action – Reply to an Office Action.
• Restriction Requirement – A request to narrow the scope of the application or to elect one of the multiple inventions disclosed in the application.
• Right to Exclude or Exclusionary Right – Rights preventing others from making, using, selling or importing the invention into the United States.

S

• Specification – The written description of the invention.
• Summary of the Invention – High-level overview of the invention.
• Supplemental Examination – Allows patent owners to request additional examination to address issues.
• System Claim – A claim directed to multiple components that cooperate with each other.  A simple example of a system is a pen and a cap.

T

• Terminal Disclaimer – Limits the patent term to avoid double patenting.
• Trade Secret – Confidential information with commercial value.

U

• United States Patent and Trademark Office – The federal agency responsible for trademark registrations.
• Issue Notification – Notification that a patent will be issued on a particular date.  It also provides the patent number.
• Utility Patent – Protects functional aspects of ideas or inventions.

V

W

• Written Description – Sufficient detail must be provided to support the claims.

X

Y

Z