Glossary of Patent Terms


A

Abandonment: The process of disclaiming a patent even after the patent is issued. Usually occurring during the prosecution process, such as when the applicant is unable to convince the patent office to withdraw a rejection of the patent application or as when the applicant fails to respond within a certain period of time to an office action issued by the patent office or as when the applicant specifically expresses intention to abandon the application.

Abstract: Part of a patent application or specification. Contains a brief summary of the invention.

AC: Administrative Council. One of the two organs of the European Patent Organization, the other being the European Patent Office. The Council acts as the Office's supervisory body and is composed of representatives of the Organization’s member states.

Administrative Council (AC): One of the two organs of the European Patent Organization, the other being the European Patent Office. The Council acts as the Office's supervisory body and is composed of representatives of the Organization’s member states.

Appeal: Process by which a party challenges a decision taken by the European Patent Office, such as a decision to refuse a patent application. Decisions on appeals are taken by the EPO's independent boards of appeal. Parties may also challenge a decision to grant a patent by filing an opposition.

Application: Request for patent protection for an invention filed with the EPO or other patent office.

B

Biotechnology: The use of biological systems, living organisms or their components or products to perform specific industrial or manufacturing processes.

BoA: Boards of appeal. The boards of appeal are responsible for examining appeals against decisions taken by the Office. Integrated into the organizational structure of the Office yet independent from it in their decisions, they are bound only by the European Patent Convention.  There are currently 27 technical boards of appeal, plus the Legal Board of Appeal, the Enlarged Board of Appeal and the Disciplinary Board of Appeal.

Boards of Appeal: The boards of appeal are responsible for examining appeals against decisions taken by the Office. Integrated into the organizational structure of the Office yet independent from it in their decisions, they are bound only by the European Patent Convention. There are currently 27 technical boards of appeal, plus the Legal Board of Appeal, the Enlarged Board of Appeal and the Disciplinary Board of Appeal.

C

CII: Computer-implemented inventions. Inventions that work by using a computer, a computer network or other programmable apparatus. To be patentable, they must have technical character and solve a technical problem, be new and involve an inventive technical contribution to the prior art.

Claim: Part of a patent application or specification. Defines the matter for which protection is sought in terms of technical features.

Competitive Intelligence Alert: An early warning system devised to continually monitor your patent search terms and discover new patents and patent documents as soon as they are published.

Computer-Implemented Inventions (CII): Inventions that work by using a computer, a computer network or other programmable apparatus. To be patentable, they must have technical character and solve a technical problem, be new and involve an inventive technical contribution to the prior art.

Contracting States: Countries that have ratified the European Patent Convention and are thus member states of the European Patent Organization.

Copyright: Intellectual property right given to creators of literary or artistic works.

D

Decision Support System: A decision support system (DSS) is a computer-based information system that supports business or organizational decision-making activities.

Description: Part of a patent application or specification. Discloses the invention as claimed, specifies the technical field to which the invention relates and indicates any prior art the applicant is aware of. 

Designated States: The contracting states in which protection is sought for the invention.

DG: Directorate-General. The EPO is divided into five Directorates-General: DG 1 Operations, DG 2 Operational Support, DG 3 Appeals, DG 4 Administration and DG 5 Legal/International Affairs.

Directorate-General (DG): The EPO is divided into five Directorates-General: DG 1 Operations, DG 2 Operational Support, DG 3 Appeals, DG 4 Administration and DG 5 Legal/International Affairs.

Drawing: Pictorial representation of the invention in a patent application or specification.

Due Diligence: A number of concepts involving investigation with a certain standard of care, most commonly related to evaluation of assets prior to acquisition.

E  

EBoA: Enlarged Board of Appeal. Clarifies, interprets and ensures uniform application of important points of law relating to the EPC.

ECLA: European Classification. Patent classification system based on the International Patent Classification (IPC) but adapted by the EPO.

Enlarged Board of Appeal: Clarifies, interprets and ensures uniform application of important points of law relating to the EPC.

EPLA: European Patent Litigation Agreement. Proposal for a unified patent litigation system in Europe which would include uniform rules of procedure and a common appeal court.

EPODOC: EPO documentation database. Contains references to the patent documents in the EPO's systematically classified search documentation.

EPOQUE: EPO query service. A system enabling EPO examiners to interrogate over 120 databases, including the EPO's own internal databases, the Derwent WPI and WPIL databases and the US and Japan Patent Office databases.

EQE: European qualifying examination. An exam designed to establish whether candidates have the aptitude and knowledge to represent applicants before the EPO.

Espacenet: Free online service allowing users to search the EPO's patent data collection.

Euro-PCT Application: European patent application that has entered the European procedure via a PCT international application. Such an application is equivalent to a regular European patent application. 

European Classification (ECLA): Patent classification system based on the International Patent Classification (IPC) but adapted by the EPO.

European Patent: A patent that can be obtained for all the EPC contracting states by filing a single application with the EPO in one of the three official languages (English, French or German). European patents granted by the EPO have the same legal rights and are subject to the same conditions as national patents granted by the respective national patent office. A granted European patent is a "bundle" of national patents which must be validated at the national patent offices of the countries selected by the applicant for it to be effective.

European Patent Attorney: Qualified professional representative appointed to act on behalf of an applicant to draft a patent application and/or to accompany the application through the various stages of the patent grant procedure.

European Patent Bulletin: Contains bibliographic data as well as data on the legal situation of European patent applications and patents. It is sold on subscription as a weekly PDF file. The corresponding data is also available via the European Patent Register, the ESPACE BULLETIN search and retrieval tool or as raw data via Open Patent Services.

European Patent Convention (EPC): International treaty signed by the member states of the European Patent Organization which provides a unified legal system under which European patents are granted.

European Patent Litigation Agreement (EPLA): Proposal for a unified patent litigation system in Europe which would include uniform rules of procedure and a common appeal court.

European Patent Office: Provides a uniform application procedure which enables inventors to seek patent protection in up to 40 European countries. The executive arm of the European Patent Organization. 

European Patent Organization: Intergovernmental organization that was set up on the basis of the European Patent Convention. It has two bodies: the European Patent Office and the Administrative Council, which supervises the Office's activities.

European Qualifying Examination (EQE): An exam designed to establish whether candidates have the aptitude and knowledge to represent applicants before the EPO.  

European Search: Search carried out by the EPO on a direct European application.

Examination: The study of a patent application by a patent office examiner to determine whether or not an invention can be patented and whether the application complies with all the legal requirements (including formal requirements). Depending on issues raised in the resulting examination report, amendment of the patent application may be required.

Examiner: Specialist patent office staff whose job it is to evaluate the patentability of inventions claimed in patent applications.

Extension States: Countries that are not member states but which have extension agreements with the EPO, allowing applicants to request the extension of a European patent or patent application to these countries.

F

Filing Date: Date accorded to an application if the filing requirements of the EPC are fulfilled. According to the EPC, applications must include an indication that a European patent is sought, information identifying the applicant and a description or a reference to a previously filed application.

First To File: A legal concept that defines who has the right to a patent.

G

Global Patent Data Coverage: Report providing regular updates on the data coverage in the EPO's worldwide patent databases.

Glossary of Patent Terms: That which describes what you may or may not already know as a means of reference to the specialty field of Intellectual Property.

H

No entries at this time.

Industrial Property: Types of intellectual property that have an industrial application, such as patents, trade marks, designs, mask works and plant breeders' rights.

Infringement: Violation of an exclusive intellectual property right. Infringement includes making, using or selling a patented product or process without the permission of the patent holder.

INPADOC: International Patent Documentation Center. Previously used to describe the bibliographic and legal status databases (international patent collection) that forms the basis of the EPO's raw data resources containing patent families and legal status information. No longer widely in use. In February 2008 the bibliographic data included about 60 million bibliographic data sets from almost 80 different countries. The legal status database contains a collection of more than 50 million legal events from 48 countries.

Intellectual property (IP): Creations of the mind or intellect. Intellectual property is divided into two categories: industrial property, which includes patents, trademarks, industrial designs, and copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs.

International Patent Application: Patent application filed under the Patent Cooperation Treaty (PCT).

International Patent Classification (IPC): All patent applications are classified in this internationally recognized classification system. 

International Patent Documentation Center (INPADOC): Previously used to describe the EPOs international patent collection containing patent families and legal status information. No longer widely in use. 

International Search Report (ISR): Report produced by the International Searching Authority (ISA) containing the prior art documents most relevant to the subject-matter claimed in a patent application.

Invention: New product, process or apparatus or any new use thereof. To be patentable, an invention must be novel, involve an inventive step (i.e. not be obvious to those having ordinary skill in the particular art of the invention) and be susceptible of industrial application.

Inventive step: A condition for patentability.  According to the European Patent Convention (EPC), an invention is considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

IP: Intellectual property. Creation of the mind or intellect. Intellectual property is divided into two categories: industrial property, which includes patents, trademarks, industrial designs, and copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs.

IPC: International Patent Classification. All patent applications are classified in this internationally recognized classification system.

IPRs: Intellectual property rights.

ISR: International Search Report. Report produced by the International Searching Authority (ISA) containing the prior art documents most relevant to the subject-matter claimed in a patent application.

 K

No entries at this time.

L

Lapsed: Term used to describe when a patent no longer has legal effect in a country or system due to the failure of the patent owner to meet specific legal requirements, e.g. the payment of renewal fees.

Latent Semantic Analysis (LSA): is a technique in natural language processing, in particular in vectorial semantics, of analyzing relationships between a set of documents and the terms they contain by producing a set of concepts related to the documents and terms.

License: Contractual agreement that gives written permission to another party to use an intellectual property right belonging to another person or company and defines the terms of use. A patent license does not amount to an assignment of the patent.

M

Maintenance Fees: See Renewal fees.

Manual of Patent Examining Procedure (MPEP): The rules and laws governing patent prosecution laid out in manuals released by the Patent Offices of the United States.

Manual of Patent Office Practice (MOPOP): The rules and laws governing patent prosecution laid out in manuals released by the Patent Offices of the United States.

N

Nanotechnology: The science of designing, producing and using structures and devices that have one or more dimensions of 100 nanometers (one millionth of a millimeter) or less.

National Application: Patent application filed with a national patent office in accordance with national procedure.

Novelty: A condition for patentability. An invention is novel (new) if it does not form part of the state of the art, i.e. it was not available to the public in written or oral form, by use, or in any other way, before the filing of the patent application.

NPO: National Patent Office.

O

Obviousness: If an invention is obvious, that is, if a person with ordinary skill in the relevant field of technology can readily deduce it from publicly available information (prior art), then it does not meet the conditions for patentability.

OFI: Online file inspection.

Offensive Patent Strategies: Key tactical plans to protect or defend against infringement or marketplace competition. See Offensive Protection of Marketplace.

Offensive Protection of Marketplace: Patent enforcement strategy with the purpose of shielding product market share by writing patents that cover key elements of a company’s business designed to increase difficulty for a competitor to develop a product; used primarily as roadblocks for potential competitors in the marketplace.

Office Action: Document written by an examiner in patent or trademark examination procedures and mailed to an applicant. Expression is used in many jurisdictions. Used formally, the “O” is capitalized.

Official Journal (OJ): The Official Journal of the EPO contains decisions of the President, notices from the EPO and other related information.

OJ: Official Journal of the EPO. Contains decisions of the President, notices from the EPO and other related information.
Opposition: Within nine months from the publication of the mention of the grant of a European patent in the European Patent Bulletin, any person may file a notice of opposition to the patent with the EPO. The opposition can be based on lack of patentability, e.g. lack of novelty or inventive step, or lack of sufficiently clear and complete disclosure of the invention, or the fact that the granted patent extends beyond the application as filed.

P

Paris Convention: International treaty governing patents, trademarks and unfair competition. Administered by the World Intellectual Property Organization (WIPO).

Patent: Legal title that gives inventors the right, for a limited period (usually 20 years), to prevent others from making, using or selling their invention without their permission in the countries for which the patent has been granted.

Patentability: Patent applications must meet certain requirements for a patent to be granted. If these requirements are satisfied, the invention is said to be patentable.

Patent Application: Request for patent protection for an invention filed with the EPO or other patent office.

Patent Cooperation Treaty (PCT): International treaty under which a single international patent application can be filed for patent protection in up to 144 countries.

Patent Family: Set of interrelated patent applications filed in one or more countries to protect the same or a similar invention by a common inventor and linked by a common priority (or priorities).

Patent Pending: Notice given that an application for a patent has been filed, and that legal protection (including retroactive rights) may be forthcoming.

Patent Prosecution: describes interaction between applicants and their representatives, and a patent office concerning a patent, or an application for a patent.

Patent Register Service (PRS): One of the largest patent databases in the world in terms of both the countries and the time span covered. The PRS is the EPO's legal database: It covers the legal status of patents.

Patent Specification: Document describing the invention and establishing the scope of protection. Includes description, claims and drawings.

PCT: Patent Cooperation Treaty. International treaty under which a single international patent application can be filed for patent protection in up to 144 countries.

PCT application: International application filed under the Patent Cooperation Treaty (PCT).

Pendency: The quality or state of being undecided, or in continuance; suspense such as the pendency of a patent lawsuit or the pendency of a patent application, whether intentional or unintentional as in such cases where selecting business method claims in an application is restricted and forces the patent to expire an extra 3 to 20 years later than originally assigned.

Person skilled in the art: Someone with knowledge and experience in the technical field of the invention.

Portfolio: A collection of work that supports a business segment, product, or product line.

Portfolio DSS: The IP industry's first decision support system for patent discovery and next generation digitalized analytics. Read more, HERE.

Prior art (state of the art): Existing technological information which is used to determine if an invention is novel and involves an inventive step. Includes documentary sources such as patents and publications, and non-documentary sources such as things known or used publicly.

Priority: Right to file subsequent applications for the same invention at other offices. Valid for a period of 12 months from the date of first filing of a patent application. The first filing date is known as the priority date.

Priority date: Date of filing of a previous application for the same invention.

Professional representative: Person who is qualified to represent applicants or other parties before the EPO. The person must be a national of and have their place of business or employment in an EPO member state and must have either passed the European qualifying examination or, in the case of new member states, be entitled to represent persons before their national industrial property office.

Proprietary Rights: Rights established in relation to a trademark through actual use in the marketplace or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction.

ProSearch: Named "Google on Steroids" by Businessweek. See a comprehensive summary HERE.

PRS: Patent Register Service. One of the largest patent databases in the world in terms of both the countries and the time span covered. The PRS is the EPO's legal database. It covers the legal status of patents.

Publication: A European patent application is published as soon as possible after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, from the date of priority.

Q

Queue: A sequence of patent applications awaiting examination at the patent office.

R

Refusal: Decision to not grant a patent because it does not fulfill the necessary requirements. 

Renewal fees: Must be paid to keep a patent in force. For European patents, they are payable to the national patent offices where the European patent has been validated.

S

Search report: Report on the results of the search on the prior art which the EPO may take into consideration when deciding whether the invention to which the application relates is new and involves an inventive step.
SMEs: Small and medium-sized enterprises.

Specification: Document that describes the invention and sets out the scope of protection. Includes the description, claims and any drawings.

State of the art (prior art): Existing technological information which is used to determine if an invention is novel and involves an inventive step. Includes documentary sources such as patents and publications, and non-documentary sources such as things known or used publicly.

Supplementary European search: Search carried out by the EPO on a Euro-PCT application entering the regional phase for which the International Searching Authority (ISA) was not the EPO.

T

Term: Maximum period for which a patent can be kept in force. For European patents, the term is set by Article 63 EPC at twenty years.

Trademark Examiner:  Attorney employed by a government entity such as the USPTO to determine whether an applicant should be permitted to receive a trademark registration, thus affording legal protection to the applicant’s trademark. The Trademark Examiner also examines marks to determine any prohibitions on registration infringements on marks or generic names of goods.

Trademark Registration: Conference of a bundle of exclusive rights upon the registered owner including the right to exclusive use of the mark in relation to the products or services for which it is registered.

U

Utility Model (UM): Intellectual property right available in some countries for technical innovations which might not qualify for a patent.

UM: Utility model. Intellectual property right available in some countries for technical innovations which might not qualify for a patent.  

V

No entries at this time.

W

WIPO: World Intellectual Property Organization. Agency of the United Nations responsible for promoting the protection of intellectual property throughout the world by encouraging co-operation between nations.

World Intellectual Property Organization (WIPO): Agency of the United Nations responsible for promoting the protection of intellectual property throughout the world by encouraging co-operation between nations.

X – Y – Z

No entries at this time.

 

If you find a phrase or word that does not appear in our Glossary, please advise us HERE as we are continuously adding to our knowledgebase.