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Patent Bar Glossary

Glossary Terms

___ applications are those that are no longer involved in the patent prosecution process. They will not go on to issue and the owner will not gain a patent. This may happen formally or accidentally. Abandoned
___: A quick, clear, concise statement relating to the technical disclosure of a patent. The subject matter should pertain to the invention and provide a short overview to the reader. Abstract
___: Only certain files are open to the public. The rest are kept under the lock and key of the Patent and Trademark Office. Pending patents are never viewable by the public except by those with a special security clearance. Access
Once an inventor ___ to something related to his or her disclosed invention, that info may never be retracted. If an inventor lists a specific reference as prior art in the application, that specific reference will always be noted as prior art. admits
An “___” application or an application “___ ___” is one that has been examined and is deemed worthy of a patent. Once the issue fee is paid, the application will issue as a patent. allowed, in issue
___ expressions include the terms “or” and “optionally”. Multiple dependent claims must refer back to preceding claims in the ___. They may never refer back in the cumulative “and”. Alternative, alternative
An “___” nonprovisional application is one that has been acted upon by the applicant in response to an examiner's action. amended
___ to the application are acceptable responses to an Office action. However, the Patent Office always gets the final word in deciding whether or not the particular ___ is appropriate. These may not ever include new material. Amendments, amendment
The ___ ___ ___ became law on September 16, 2011 and it's goal is to modernize the U.S. patent system. One of its main provisions is the conversion from a first-inventor-to-file system from a first-to-invent system on March 16, 2013. America Invents Act
If the inventors listed on one patent are not exactly the same as those listed on another patent, the two patents (as well as both inventions) were by “___”. another
When a previous invention is similar enough to a new invention that it is not thought of as novel, the new invention is considered ___ as based on the prior art. An ___ invention is never patentable. anticipated, anticipated
When the claim(s) of an application have been rejected by the examiner and the applicant believes the rejection(s) are unfair, he or she may ___ to the Patent Trial and Appeal Board. appeal
An ___ is only acceptable when: the claims of an application have been rejected twice, when a final rejection in a reexamination proceeding has been given and after the final decision of the administrative patent judge in an inter partes proceeding. appeal
The ___ ___ is a declaration filed by the applicant stating why he or she believes the claims should be allowed. It must be filed 2 months from the date the Notice of Appeal is filed by the applicant. appeal brief
The ___ is the group or individual who is appealing the decision of the Patent and Trademark Office to the Board of Patent Appeals and Interferences. appellant
The ___ is the individual applying for the invention. applicant
The ___ is the official set of documents filed by an applicant to indicate that he or she desires a patent on the claimed subject matter. There are many different types; nonprovisional and provisional are two of the most common. application
An ___ ___ ___ is a sheet(s) that may be voluntarily submitted in either provisional or nonprovisional applications. They contain bibliographic data that is arranged in a format specified by the Office. application data sheet
The Patent Office refers to invented subject matter as the “___”. art
The person or group of persons (even a corporation) that the assignment is made to is referred to as the ___. An assignment transfers all property rights. assignee
The ___ indicates who the ownership of the patent actually belongs to (an individual, a group of individuals or a corporation). ___ are a transfer by a party of all or part of its rights, title and interest in a patent or patent application. assignment, Assignments
___ ___ ___ ___: The part of the specification that provides the basis of the invention. Previously invented subject matter should be woven into this section. Background of the invention
A ___ will prevent a patent from being granted. bar
The ___ ___ indicates the best method or set of conditions that the invention should be operated, made or used under. The inventor must always describe the invention in its entirety; he or she is not allowed to hide the ___ ___ from the public. best mode, best mode
The use of biological processes to solve problems or make useful products is termed ___. biotechnology
The Board of Patent Appeals and Interferences has been changed to the ___ ___ and ___ ___. Patent Trial, Appeal Board
___ ___ ___ ___: The part of the specification that provides an overview of the invented subject matter. Brief summary of invention
Since no new matter may be added to an application, expanding the scope of the claims by ___ them is not allowed. The one exception to this rule is when filing a reissue application. An applicant may ___ the claims of the original application when filing broadening, broaden
An applicant may use a ___ ___ ___ for an issued patent containing an error that was not previously realized. This must have occurred without any deceptive intent on the applicant's part and the changes may not involve the addition of any new matter. Certificate of correction
A ___ ___ ___ is a method for delivering paperwork to the PTO. The date correspondence is based upon is the date it is sent, never on the date it is received by the PTO. It must include a signed and dated ___ ___ ___ with each piece of paperwork listed. certificate of mailing, certificate of mailing
A ___ ___ ___ must accompany all facsimiles to provide proof of when the fax was received at the PTO. The date-in is the date listed. Faxes cannot be used for anything that will be used to obtain an application filing date. certificate of transmission
___: These statements describe the structure of an invention and specifically point out what the invention “___” to do. They encompass the scope of the patent, and they consist of single sentence statements. Claims, claims
___ ___ ___ ___ (C.F.R.): the codification of the rules published by the Federal government. This code is divided into 50 titles that represent the broad area of Federal law. C.F.R. number 37 discusses patents, trademarks and copyrights. Code of Federal Regulations
If a patent is declared invalid, the PTO will not review any other matter related to it and will thus create a ‘___ ___' a barrier against any further litigation pertaining to it. collateral estoppel
___ ___ ___ ___ ___: one of the top authorities at the PTO. Commissioner of Patents and Trademarks
___ ___ ___: A composition of two or more substances or a composite article. These may be the result of a chemical union or a mechanical mixture. Composition of matter
The term ___ is typically used in the claims and is taken to mean “including”. The use of “___” suggests that it includes what follows, but is not limited to it (more may be included). comprising, comprising
___ refers to “hiding away” important components of an invention. In order for a patent to be granted, active ___ of any portion of the invention may not occur. The best mode must be disclosed. Concealing, concealment
___ has occurred when the inventor has completed the mental part of the invention. At ___, he or she has completely thought through the details and can thereafter attempt to reduce the invention to practice (produce a prototype). Conception, conception
___ ___: A second application for the same invention claimed in a previous nonprovisional application that is filed while the first application is still pending (must be filed before the previous application is patented or abandoned). Continuation application
___-___-___ ___: These applications may be filed if an inventor makes improvements after he or she has filed the original application. Continuation-in-part applications
___ ___ ___: These applications have the same serial number as the parent application, but no reference to the parent is made in the specification. These are being phased out for utility and plant applications. Instead you may file an RCE. Continued prosecution applications
___ ___ are those with enough overlap in their filing dates that they are both considered pending at the same time. If the first application is abandoned, the second application will not be considered copending with it. Copending applications
If the inventorship of an application needs to be ___, certain procedures must be followed. 37 C.F.R. 1.48 is used as a guideline. It discusses all applications, except for reissues. corrected
___ will always be held with the listed attorney or agent. In addition, an application number must be used to identify a patent application in all ___. Correspondence, correspondence
___ define the interfering subject matter between an application and/or a patent in an interference proceeding. Counts
___ of ___ for the ___ ___: established in 1982 to provide uniformity. It hears all patent appeals from the different U.S. district courts (each state has at least one). Court, Appeals, Federal Circuit
___ ___: The part of an application that references general information; such as the type of application, the name of inventor(s), and the patent identification number. It must go along with each document submitted to the Office for recording. Cover sheet
The ___ ___ for ___ ___ ___ patents is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. transitional program, covered business method
___ ___: Claims that rely on another previous claim (either an independent claim or another ___ claim). A series of singular ___ claims is allowed where a ___ claim refers to a preceding claim, which in turn, refers to another preceding claim. Dependent claims, dependent, dependent, dependent
___ ___ were created to ensure that the first person to file is a true inventor. It ensures that a person will not obtain a patent for an invention that he did not invent. If a dispute arises, it will be resolved through a ___ ___ conducted by the Board. Derivation proceedings, derivation proceeding
___ Patents: usually consist of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Design
___: When filing, a PCT application must indicate which countries he or she is seeking protection in. Designation
___: In exchange for knowledge on how to make and use the invented subject matter, an inventor receives a patent on his or her invention. Disclosure
___ ___ are no longer allowed. These used to be alternatives to filing patent applications. Previously, inventors were able to file these to serve as proof of the invention. Disclosure documents
___ of ___: A claimed invention must have a specific and substantial utility made clear in the specification. The invention has utility if a person of ordinary skill in the art appreciates the utility. Disclosure, utility
___: Ascertaining or finding out something that was previously unknown. Discovery
___ ___ are those with a disclosed relationship between two or more subjects in question, but are capable of separate manufacture, use or sale as claimed. They are patentable over each other. Distinct inventions
If an inventor tries to patent an invention that is two or more separate inventions, they will be required to cut out some of the claims. If they still want to patent the omitted invention(s), a separate application called a ___ ___ should be filed. divisional application
___ of ___: attempts to differentiate between two different, but similar inventions. Questions such as, “does the newly claimed invention accomplish the same task in a similar manner?” are asked. Doctrine, equivalents
One patent or application may “___” a second patent or patent application. This occurs when the first patent or application has a broad or generic claim which fully encompasses the narrower or more specific claim in the second patent or application. dominate
Commonly owned applications of different inventive entities may be rejected on the grounds of ___ ___. These types of rejections keep one from obtaining two or more patents with different expiration dates that cover nearly identical subject matter. double patenting
___ must show all of the claimed features. However, they are only necessary when they are needed to understand the claimed subject matter. Drawings
___ to ___: All the information to the patentability of the subject matter contained within an application must be disclosed to the Office with candor and good faith. The duty exists until the application is abandoned and after the patent is issued. Duty, disclose
___ of ___: In instances where more than one invention is disclosed in a single application, the PTO will force the applicant to choose one invention for the original application. The others may be claimed in separate, divisional applications. Election, species
___ ___: A specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. Enabling disclosure
___ ___ is any that is necessary to describe the claimed invention and its best mode. It may be incorporated by reference from a U.S. patent, a pending U.S. application or an abandoned application. Essential material
___: A legal term relating to instances where a second argument is barred if it is inconsistent with the first argument. It bars the inventor from admitting something and then later contradicting the admission. Estoppel
An ___ is an individual employed by the PTO who reviews patent applications and determines whether or not they qualify for a patent. examiner
Proceedings that may be initiated by third parties, but, that the third party may not participate in are ___ ___ in nature. They include situations where only one party (and not the adversary) appear before a judge. ex parte
___ ___: This procedure expedites the time for design application processing. Note that it is also possible to file a petition to make special for design applications. Expedited examination
___ ___: This form of abandonment is intentional. It is also known as formal abandonment. It is effective if it identifies the application to be abandoned and it is signed by the applicant, assigns or an attorney or agent of record. Express abandonment
___ ___: a method for delivering paperwork to the PTO. The date it's considered filed is the date of deposit. It must be clearly labeled, “___ ___ Post Office to Addressee”. The service must be provided by USPS and the “date in” must be entered by them. Express mail, Express Mail
___ of ___ ___: the total automatic extension cannot be greater than five months. The total statutory time limit for all responses to Official Actions cannot be extended more than six months. Extension, due dates
___ may be used to send in certain types of correspondence. However, there are many types of correspondence that may not, such as any document attempting to obtain a filing date. The date-in of will be the date stated on the Certificate of Transmission. Facsimile
The ___ ___ is the date the application or other document is considered filed to the PTO. It is an official date that may prove important in instances where more than one individual is attempting to patent the same invention. filing date
The ___ ___ is the amount required by the PTO for the particular type of application filed. filing fee
The examiner sends a ___ ___ ___ near the end of the patents prosecution. Usually sent out after a first or second Office action, but may be sent earlier when warranted. The examiner will make rejections on a claim by claim basis. final office action
During the prosecution, the patent examiner will send the applicant a ___ ___ ___ after examination. It states which claims were rejected and provides reasons. The applicant will have 3 months to correct the claims or pay a fee for a 3 month extension. first office action
The ___ ___ to ___ provisions transition the U.S. to a from a first-to-invent system and includes a 1-year grace period. Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome. First Inventor, File
___ ___ ___: These give the inventor of a U.S. application the right to immediately file for a patent in a foreign country. Without it, an inventor must wait 6 months before filing in any additional countries. Foreign filing licenses
___ ___ ___: Material that is statutory (patentable). Includes items such as data structures and computer programs that have a function when used as a computer component. When it is recorded on a computer readable medium, it will usually be statutory. Functionally descriptive material
___ ___ are the six month time interval where the maintenance fees and a surcharge may be paid to keep the patent from expiring. If this time period expires before the fee is paid, the patent will be abandoned. Grace periods
If you happen to be in the neighborhood, the PTO will actually allow you to ___ ___ correspondence to them. However, it is only available during Office hours, and a receipt will be necessary for papers that require proof of their delivery. hand deliver
An application is ___ when it is missing any part(s) of the required sections. These applications will become abandoned unless the missing forms are sent in. Generally, an applicant will receive a two month extendible Notice of Missing Parts. incomplete
When there is no disclosed relationship between the two or more subjects in question (they are unconnected in design, operation or effect) they are considered to be ___. independent
A claim that describes an aspect of the invention without relying on or referring to another claim is an ___ ___. independent claim
___ ___ are those having no disclosed relationship between the two or more subjects in question (they are not connected in design, operation or effect). independent inventions
___ ___ ___: These documents should include all prior art references disclosing subject matter similar to the invention. The applicant may file at any point during the prosecution provided he or she includes the appropriate fee or petition as needed. Information Disclosure Statement
___ ___: A lawsuit that is brought about because someone has made, used or sold an invention protected by a patent without permission. These actions must be filed no later than six years from the date of the improper act. Infringement action
Under the principles of ___, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. inherency
___ ___ encompasses all things created by any given individual or corporation that may have a commercial value. Intellectual property
___ will be held for applications and patents having an effective filing date before March 16, 2013. Held when the filing dates are so close together that there is a possibility that the first to file may not be the first inventor. Intereferences
___ ___: A patent application filed under the Patent Cooperation Treaty that has not yet entered the national processing stage at the Designated Office. International application
The ___ ___ maintains the master file of all international applications and acts as the publisher and central coordinating body under the Patent Cooperation Treaty (PCT). The World Intellectual Property Organization in Geneva performs the duties. International Bureau
___ ___ ___: This agency conducts a prior art search of the inventions claimed in international applications. International Searching Authority
___ ___ ___: a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on the basis of prior art consisting of patents or printed publications. Inter partes review
___ may be granted to the applicant, the attorney or agent of record with the examiner at the PTO's discretion. These may be in the form of a personal meeting, telephone conversation, video conference or emails. Interviews
___: A new and useful machine, article of manufacture, composition of matter or process. Invention
The ___ ___ is the exact individual or group of individuals who were responsible for the conception of the invention. X, Y, Z is a different ___ ___ than X and Y. inventive entity, inventive entity
___: The individual or group of individuals who developed a new and useful machine, article of manufacture, composition of matter or process. Inventor
___: The legal definition of the true inventors of a patent. ___ must be given to a person or a group of persons, never a corporation. It may never be changed or transferred over to anyone else. Inventorship, Inventorship
Some countries grant an ___ ___ instead of a patent. They usually grant the same rights as a patent. Inventor's Certificate
The applicant must pay an ___ ___ in order to have an application issue into a patent. Due 3 months after Notice of Allowance. Cannot be extended, but it may be paid late. The application will have be abandoned during this time, but it may be revived. issue fee
A ___ ___ consists of a preamble (introduction) that defines what is old, a body defining what is new and a transition phrase such as “the improvement comprising of”. Jepson claim
___ ___: Inventors that apply for a patent together even if they did not physically work together on the invention or they did not work at the same time on the invention. Joint inventors
Unless otherwise stated in a written agreement, ___ ___ of a patent may make, use, offer to sell or sell the patented invention within the U.S. or import the patented invention to the U.S. without the consent of and without accounting to the other owners. joint owners
___ ___: A for-profit company with over 500 employees. Fees are never reduced for these. Large entity
___ ___ may be patentable if it is manufactured by man. For instance, a DNA sequence may be patentable due to the fact that it was isolated, purified and characterized. In addition, genetically altered microorganisms, plants and even animals. Living matter
___: A concrete thing, consisting of parts or of certain devices and combinations of devices. Machine
In order to keep a patent from expiring, ___ ___ must be paid over the duration of the patent term. None is required for a design or plant patent, but owners of utility patents must pay to keep their patent from expiring. maintenance fees
The Office has no duty to notify patentees when their maintenance fees are due, however, they do try to send out a ___ ___ during the grace period. reminder notice
___ of ___ ___ ___: This manual contains all the laws and rules relating to patents and descriptions on what they mean. It is the authoritative source for patent law. Manual, Patent Examination Procedure
___ include the production of new articles for use from raw or prepared materials by giving to these materials unique forms, qualities, properties or combinations, whether by hand labor or by machinery. Manufactures
___ ___: A phrase used to define a claim limitation where there is no generic term to describe a group of things. Always have the conjunctive “and” and the phrase “consisting of”. Markush Claim
An element in a claim for a combination may be expressed as a ___ or ___ ___ performing a specified ___ without the recital of structure, material, or acts in support thereof. means, step for, function
Patentability laws state that living material resulting from human intervention can be patented. Therefore, ___ produced through genetic engineering will most certainly qualify for a patent if they have a specific utility or benefit to mankind. microorganisms
___ are scaled down versions of the invented subject matter. They are generally not admitted as part of a patent application. Very rarely, the PTO may request one, or the inventor may be allowed to admit one if it is filed along with a petition. Models
___ ___: An assignment is a transfer by a party of a patent to another party. In some instances, the transfer may be made to more than one assignee multiple assignments
___ ___ ___: The claims describe what has been invented. An application may contain a string of a series of claims written using the alternative, “or” that refer back to more than one preceding independent or dependent claim. Multiple dependent claims
___ refers to the unnecessary repetition of claims that provide no new information. Applications should not contain repetitive claims. Multiplicity
___ ___ include U.S. patent applications filed under 35 U.S.C. 111(a) or (b) or international applications that have entered the national stage. The date the national phase begins is treated as the filing date of the application. National applications
___ ___: International applications that have entered the national stage. National stage
A ___ ___ includes the description of an invention which focuses on leaving out a component of a previous invention. These are currently an acceptable means for describing an invention negative limitation
A “___” application is a nonprovisional one that has not yet received an action by the examiner, i.e. it has just arrived at the PTO. If the applicant files an amendment prior to the first Office action, the application will still be considered. new
___ ___: Matter that is not present in the original specification, claims or drawings and therefore is not usually allowed. New matter
___-___ ___: An application may be rejected because it consists of more than one invention. So a divisional application may be filed which contains the claims for the “extra” invention. These are the claims that were not chosen for the parent. Non-elected invention
___-___ ___ ___ is never patentable. Some examples are music, literary works and a compilation or mere arrangement of data. Even when it is recorded on a computer-readable medium it is not patentable. Non-functional descriptive material
Patentable inventions must not be ___ to a person skilled in the available art. An invention must produce unexpected results. obvious
___ application: This is the normal application that is filed for either a utility, plant or design invention. An applicant will file an application of this type when he or she is ready to present the claims for the subject matter to the PTO. Nonprovisional
Statutory refers to an item or process that is patentable, whereas ___ refers to an unpatentable item or process. A process is ___ if it merely manipulates an abstract idea or performs a purely mathematical algorithm even if it has some usefulness. nonstatutory, nonstatutory
When an examiner decides that a patent will be granted, a ___ of ___ will be sent out to the correspondence address as notification. It will state that the claims have been “allowed” and a patent will be granted on the subject matter if the fee is paid. Notice, Allowance
If an application is rejected, the applicant must file a ___ of ___to the Board of Patent Appeals and Interferences to initiate an appeal. Then the applicant will have two months to file an Appeal Brief stating the specific nature of the appeal. Notice, Appeal
When an applicant receives a Notice of ___ ___, they must take further action for it to be accorded a filing date. incomplete application
Notice of ___ ___: Notices of this sort are sent out regarding applications that will receive a filing date, but are missing the oath, translation or fee. Missing Parts
A Notice of ___ ___ will be sent out if an application is missing a critical page. If a Notice of this type is received, the applications filing date may change to the date the missing page is finally sent in. Omitted Items
___: Defines the new traits possessed by an invention. It is a requirement for the granting of a patent. It is one that is different in some respect from similar invention. Novelty
___/___: provides for the making of an application by a person to whom the inventor has assigned, or is under an obligation to assign, the invention. Oath, Declaration
If the form of the claim, specification, or drawing is improper, it is ___ to. An applicant may contest it by asking the examiner to reconsider or by filing a petition to the Commissioner. objected
If an individual skilled in the prior art finds the subject matter to be ___ based on the prior art itself, the claim or claims of the application may be rejected. obvious
An ___ to ___ is made when the inventor makes it clear that he or she is willing to give or allow another individual access to the invented subject matter in exchange for money. offer, sell
An ___ ___ is the official term used to describe the action an examiner takes concerning an application after he or she has sufficiently reviewed it. An examiner can choose to object, reject or allow any or all claims during an ___ ___. office action, office action
___ ___: A newsletter published every Tuesday by the PTO which discusses new policies, patent rules and information on all patents issued that week. Official Gazette
An ___ ___ is one that is vague and does not provide enough information to be considered a valid claim. omnibus claim
The subject matter of an invention was ___ ___ if there was a definite sale or even an offer to sell it to an individual or corporation. on sale
A patent application for a particular invention must be filed within ___ ___ of a specific set of circumstances. Otherwise, the invention has passed into the public domain and it is not eligible for a patent. one year
___: An invention must perform a useful function to be patentable. However, even an invention that performs crudely, or is not commercially successful, does not accomplish all of its intended functions or only has partial success may still be useful. Operability
An ___ ___ may be requested within two months from the date the examiner's answer was sent out in appeals. It may be requested if the applicant believes it may help clear any remaining issues/concerns with the application. oral hearing
___: The person who has the controlling interest in a patent or a patent application. It may be given to a person, a group of persons and even a corporation. Ownership
___ application: An earlier application by an inventor that discloses the same information. The subsequent application may have some additional information, or even less information for the earlier application to be considered the parent. Parent
___: A right provided by the government giving sole ownership of an invention to the inventor. The owner of a patent is granted the right to exclude others from making, using, offering for sale or selling the invention in the U.S. or importing it. Patent
A ___ ___ is an individual who may practice patent law before the PTO, meaning they may help an inventor with the writing and prosecution of his or her invention. They will be trained in an area of technology and must pass the patent bar. patent agent
The ___ and ___ ___ (also known as the ___) is located in Arlington, Virginia. It houses old patents, patent applications, examiners and is where the patent prosecution will take place. Patent, Trademark Office, PTO
The standards for an acceptable ___ ___ have been determined by the Patent and Trademark Office. An inventor must submit this to get the ball rolling in order to protect his or her invention. patent application
A ___ ___ is one who may practice patent law before the PTO. They are trained in an area of technology, have a law degree and have passed the patent bar. They help in legal proceedings like infringements to help uphold patent rights. patent attorney
___ ___ ___: an international agreement which helps inventors obtain patents within countries that are members. Need to file one application to the U.S. PTO international bureau and then a national application in every country they seek protection in. Patent Cooperation Treaty
In order to identify a particular patent or patent application, a ___ ___ is used. patent number
___ ___: The interim period between the filing of the patent application and its issuance. Although in some cases, it never issues and is rejected and abandoned instead. Patent pending
___ ___: Patents are not in effect forever; the timeline begins on the date the patent was filed and ends 20 years from the issue date for utility and plant patents. They expire 14 years from the issue date for design patents. Patent term
___ ___ ___: The term of the patent may be lengthened under specific conditions. One such condition is if a regulatory process holds up the release of the invention after it is patented (i.e., a requirement of the Food and Drug Administration). Patent term extension
___ ___ and ___ ___: Post issuance matters include proceedings such as appeals, inter partes review, post-grant review, the transitional post-grant review for covered business method patents, and derivation proceedings. Patent Trial, Appeal Board
___ ___ ___: Determining what qualifies as a patentable invention is a highly difficult and complicated task. “Anything under the sun, that was invented by man qualifies as patentable”, but there are hundreds of exceptions and details. Patentable Subject Matter
The ___ is the individual desiring to gain a patent. They may be the actual inventor, or the assignee of the subject matter. patentee
If the applicant fails to file a response by midnight of the date the ___ for ___ was due, the application will be regarded as abandoned and may lose all rights to his or her invention. period, reply
Person of ___ ___ in the art The PTO uses this definition to determine whether an invention is obvious. Ordinary, Skill
A ___ is a means of attempting to overcome a decision made by the Patent and Trademark Office. petition
A “___” application is considered by the patent office as a priority, therefore the examination process will be considerably sped up. These applications will be examined as quickly as possible. special
The patent office will accept ___ to fulfill the drawing requirement of a patent application. photographs
A ___ patent may be granted for a new and distinct variety of flora that is asexually reproduced. plant
___ ___ ___ is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review
The ___ of ___ may be given to individuals who have been granted the legal right to aid an inventor in filing a patent application. These individuals include a single representative inventor and all registered patent attorneys or agents in good standing. power, attorney
___: The part of the claims that describe and set forth the elements or steps and limitations of the claims (serves as an introduction). Preamble
___ ___: An indication made by an applicant for a filing under the PCT that specifies the countries protection for the invention is sought. An applicant will have 15 months from the priority date to convert this to an active form. Precautionary designation
___ ___: A mechanism for third parties to submit anything of potential relevance to the examination of a patent application with a concise explanation of the asserted relevance of each document submitted. Preissuance submissions
___ ___: An amendment made after or at the time of filing, but before an Office action is issued. Typically filed along with an application, and they are limited to a cancellation of claims. Prelimianry amendment
Obvious ___ ___ evidence is that which is sufficient to raise a presumption of fact or to establish the fact in question unless rebutted. Meaning ‘at first view' or ‘on the face of it'. Prima facie
___ ___ include items that are provided in easily reproducible form. Printed publications
___ ___ art includes all references that relate to the subject matter. It may include, but is not limited to; patents, printed publications, and material presented at forums and trade shows. Prior Art
___ ___ has been implemented for utility and plant patent applications. If granted, the application will be accorded special status during prosecution before the patent examiner. Prioritized examination
___: Under certain conditions, an application or patent filed in the U.S. may be entitled to the benefit of the filing date of a prior application filed in a foreign country. This may be done to overcome an intervening reference or for similar purposes. Priority
Instances where an applicant files and prosecutes his or her own application as opposed to hiring an agent or attorney are termed “___ ___”. pro se
___: When the article itself is preexisting, one may still secure protection for the method of using the article. Processes
The ___ is the article itself. product
___ by ___: A product claim that defines the product, device, apparatus, manufacture or composition of matter in terms of the method by which it is made. Product, process
The ___ includes the procedures that follow after a regular patent application is filed. It includes the first, second and final Office actions and consists of the period between the filing of the application and its issuance or abandonment. prosecution
The PTO will consider information supplied in writing with reasons a patent should not issue. Any member of the public may submit a ___, and an attorney may file without naming their client. protest
___ application: an interim patent application; it provides patent pending status without having to file a regular patent application with claims and such. If it sufficiently describes the invention, his or her idea will be protected for one year. Provisional
A patent, copyright or trademark that is known about, used or sold by members of the public is considered to be in the ___ ___. public domain
An invention will not be patentable if it has been in ___ ___ for more than one year. One use by one person constitutes ___ ___; also if the invention is merely displayed or sold even though the invention itself was completely hidden from view. public use, public use
A printed publication has been made ___ ___ when persons interested and ordinarily skilled in the subject matter or art, can locate it by exercising reasonable diligence. publicly accessible
___ ___: The physical location where an applicant might file the international application. Receiving Office
___ assignments to the PTO is voluntary, but it will serve as proof in case of problems in the future. Recording
The process of inventing the subject matter is ended when it is finally ___ to ___. At this point, the invention has been physically created it, is fully operational and complete, and its full utility is known. reduced, practice
A ___ is a request for the PTO to re-open the examination of a patent. This is done if there is reason to believe that the patentability of the subject matter is questionable. Any member of the public may suggest one by citing prior art. reexamination
___: A document cited by an examiner used to evaluate the novelty of the claims in the disclosed invention. May include a patent, a patent application, a thesis, or any other printed publication. Reference
___ are rarely ever granted by the PTO. It is possible for an applicant to receive one if he or she has a valid reason to do so, however, an applicant desiring to withdraw an application will never receive one for the fees he or she already paid. Refunds
A ___ ___ ___ is an individual who has passed an exam which evaluates their knowledge of the patent prosecution process. Patent agents and patent attorneys are both considered to be this registered patent practitioner
A ___ replaces an unexpired patent that is defective in one or more areas, (i.e., it will attempt to correct the original patent). Only the patent owner may file a ___ application, and any prior art will be re-considered. reissue, reissue
If the subject matter is said to be unpatentable, it is ___ by the examiner. It will continue to have that status until the applicant replies satisfactorily to the examiner's action or until the application becomes abandoned. rejected
In the case of appeals, the appellant may file a ___ ___ after receiving the examiner's answer. The examiner may choose whether or not to act on it. It does not require a fee. reply brief
A ___ for ___ ___ provides a means for the applicant to continue with the prosecution of his or her application if it should become closed. request, continued examination
Any request for ___ may be filed in an attempt to revive an abandoned application, a terminated reexamination proceeding, or a lapsed patent. Must be filed within 2 months of the decision which refuses the application. reconsideration
An examiner may require more details from the applicant to continue with the prosecution of the application. The examiner will then issue a requirement for ___ and the applicant will have to send it in within the time period specified. information
___ ___ is taken to mean a matter already decided, a case already settled. It may constitute a proper ground for rejection. Applied only when the earlier decision was one of the Board or any one of the reviewing courts and when there is no opportunity for Res judicata
A ___ occurs when a single application discloses more than one independent and distinct invention. This is the practice of requiring an election between the two or more distinct inventions. restriction
___ of ___: Under certain conditions, an application or patent filed in the U.S. may be entitled to the benefit of the filing date of a prior application filed in a foreign country. Right, priority
A ___ is a contract between parties where the seller agrees to give and to pass the rights of the property in return for the buyer's payment or promise to pay the seller for things bought or sold. sale
___: Before filing an application, the applicant, agent or attorney should study all relevant materials including issued patents and publications such as printed articles and scientific journals. Search
___ ___: Those circumstances that the US Supreme Court identified in Graham v. John Deere that can be used to rebut a prima facie showing of obviousness. Secondary considerations
If a patent application contains issues that are sensitive to national security it will be placed under a ___ ___ for one year after the date of its issuance. No member of the public will have access to it during this time period. secrecy order
If an application is found to contain issues that could threaten national security, the PTO will place a secrecy order on it. Therefore, a ___ ___ will be completed for all applications before a Notice of Allowance is mailed to the applicant. security review
___ ___ pertain to inventions involving complex DNA or amino acid sequences. Sequence rules
The PTO assigns an application a ___ ___ on the date a complete application is received. serial number
The purpose of ___ the ___ is to give the applicant or patent owner a chance to decide if a petitioner seeking access to the owner's application should only be granted access to a portion of the file instead of gaining access to the entire file. servicing, applicant
The proper ___ must be on any given form sent into the PTO. For some documents, the agent or attorney of record will suffice; for others, the inventor(s) must ___ and for others still, both are required. signature, sign
___ Inventions: Inventions that are similar or exact in disclosure and were applied for at the same or nearly the same dates. Simultaneous
A claim that recites only a ___ ___ and nothing more is subject to an undue breadth rejection under 35 USC 112, first paragraph. single means
___ ___ status is determined based on the size of the group that invented the subject matter. For-profit companies with less than 500 employees, nonprofit organizations or independent inventors will qualify. Small entity
The ___ describes the invention itself. It must include a brief summary of the invention, its background, a description of the related art, the advantages of the invention and the claims. specification
When the invention relates to a composition of matter such as a biotechnological development, the applicant may be required to furnish ___ of the composition, or of its ingredients or intermediates, for the purpose of inspection or experiment. specimens
___ involves whether the application is pending, abandoned or issued, as well as whether or not it has been published. Status
___ ___ are those that are patentable. A computer process is if the measurements of physical objects or activities are to be transformed outside of the computer into computer data. Statutory processes
A___ ___ will block an application from qualifying for a patent. statutory bar
If a patent application gained ___ ___ ___ it would be placed in the public domain, published in the Official Gazette and become a prior art reference. The SIR only served as a printed notice of the disclosed invention. No one can ever gain a patent on it statutory invention registration
___ ___ ___: These are the types of inventions the PTO considers patentable for utility patents. The four general classes of patentable subject matter are compositions of matter, manufactures, machines, and processes. Statutory subject matter
A ___ ___ ___ of patentability must be raised in order for a request for a reexamination to be considered valid. substantial new question
A ___ application is an entirely new application filed after the original application was abandoned, it is never considered a copending application. It will not receive the original filing date. substitute
___ ___: These may be filed as long as no new matter is presented. It may be submitted up until the time the issue fee is paid. Substitute specifications
After an interview has taken place, the applicant must ___ what was discussed and what was decided. summarize
___ of ___: A component of the specification that must include the subject matter of the invention and should be summarized in one or more clear, concise sentences or paragraphs. Summary, invention
___ ___ of an issued patent: A request must be filed by the patent owner, and must request that the Office “consider, reconsider, or correct information believed to be relevant to the patent." Supplemental examination
The oath or declaration presented in a patent application must match the specification within that same application. If claims have been altered in prosecution, the inventor(s) will have to send in a ___ ___ that pertains to the finally allowed claims. supplemental declaration
___: Where an invention is hidden or concealed without the intent to patent the subject matter. Suppression
___ ___, (also called an affidavit or declaration under 37 C.F.R. 1.131) may be used to overcome rejections where the prior art used to establish the rejection was not by “another”, but filed by the same inventor. Swearing back
___ ___: The process of making intellectual property marketable and licensable for the benefit of society. Technology transfer
___ ___ may be used to overcome double patenting rejections. They are statements filed by an owner of a patent or application that will shorten a portion of the patent term for all the claims of a patent. Terminal disclaimers
A ___ ___ may include a drug, the result it generally has in the patient and how it works, if known. therapeutic utility
The ___ of the invention should be provided so a reader can quickly determine what was invented. title
___: An identifying symbol used to distinguish one seller's product from the product offered by another. The symbols may consist of a word, design, shape or pattern or a combination of these images. Trademark
The applicant must attempt to overcome (or ___) the rejection. traverse
___ ___ plants are not patentable. This is the short, thickened portion of an underground branch. Examples of plants that fall into this category include the Irish potato and the Jerusalem artichoke. Tuber propagated
The information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant art how to both make and use the claimed invention without any ___ ___. undue experimentation
The U.S. ___ is a set of laws developed by the House of Representatives. 35 establishes the laws dealing with patents. Code
___ of ___: The concept that an international application must only include one invention or a group of inventions so linked as to form a single general inventive concept. Unity, invention
A claimed invention must have a specific and substantial ___ in order to be patentable. Patents are never granted on subject matter that is without a valid, useful function. utility
The three basic types of patents include ___, design and plant patents. ___ patents are those relating to mechanical inventions with function. utility, Utility
The ___ is where the oath was signed. venue
An appellant who sent in an appeal may chose to ___ that appeal at any time. However, unless the application contains at least one allowed claim, this will result in the abandonment of the application. withdraw
The ___ ___ must convey that as of the filing date sought, the inventor was in possession of the invention and was not still trying to figure it out. written description
During international patent prosecution proceedings, a ___ ___ by the examiner may be sent to the applicant in instances where the subject matter is unclear or inadequately supported or the subject matter lacks novelty or industrial applicability. written opinion
___ ___ ___ ___: The organization responsible for regulating the protection of intellectual property around the world; located in Geneva, Switzerland. World Intellectual Property Organization
Created by: ldixon1071
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