Dictionary

337 action A type of administrative litigation which occurs before the U.S. International Trade Commission (ITC).  Under Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), the ITC is empowered to prohibit the importation of products that infringe a valid and enforceable U.S. patent.  337 actions can be invoked by any domestic industry, including firms that merely license patents.
abstract idea Abstract ideas are not patent-eligible subject matter.  This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010.
[patent] agent A non-attorney authorized to act for or on behalf of a patent applicant.  Patent agents must be registered with the USPTO.
aggregator An entity that acquires patents for strategic purposes as distinct from protecting a line of business.  Aggregators often license patents nonexclusively to shareholders or other insiders, and then sell the patents to patent assertion entities (PAEs) to monetize.
AIA America Invents Act of 2011.  AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.
AIPA American Inventors Protection Act of 1999.  The AIPA made minor changes to patent law, including requiring publication of most patent applications after 18 months and promoting the USPTO Director to Under Secretary of Commerce for Intellectual Property.
AIPLA American Intellectual Property Law Association, formerly the American Patent Law Association.  DC-based professional organization that represents the interests of the intellectual property community, including the patent bar.
assign To permanently transfer rights to a patent application or patent, as distinguished from a license.  Unlike licenses, assignments may be recorded with the USPTO, although approximately one half of all assignments go unrecorded in practice, which has fueled opacity problems in the patent system.
best mode A rule that the patentee must disclose to the public the best known mode of implementing the invention.  After the America Invents Act of 2011 (AIA), the failure to disclose the ‘best mode’ is no longer grounds for invalidating a patent, so the requirement is viewed as toothless.
BPAI See PTAB
business method patent While not formally defined, “methods of doing business” were excluded from patentability by judicial rule prior to the 1998 State Street decision.  Business method patents have been subject to extensive criticism and have been subject to special scrutiny by the USPTO (through a so-called “second pair of eyes” review) and now under a transitional review procedure established by the AIA.  Business methods remain unpatentable in most of the world on the grounds that they are not technology.
CAFC The U.S. Court of Appeals for the Federal Circuit, commonly referred to as ‘the Federal Circuit.’  The appellate court that has exclusive jurisdiction over patent appeals from district courts as well as the USPTO.  The Federal Circuit was established in 1982 to regularize patent law across the country but has often been criticized for what many perceive as an applicant/patentee friendly bias — especially during its first two decades when its decisions were rarely reviewed by the Supreme Court.  (Also, “Fed Cir”)
carrot licensing Ex ante licensing.  See ex post licensing.
CFR Code of Federal Regulations.  Unlike most federal agencies, the USPTO lacks the power to promulgate substantive regulations (interpretations of basic patent law); however, it issues regulations on its administrative procedures.
claim The section of a patent that describes the legal scope of the invention.  Patent claims are supposed to establish the boundaries of the patentee’s entitlement to exclude.  Under peripheral claiming as practiced in the U.S., claims establish the outer bounds of the patentee’s privilege to exclude others.  For further reading, see Burk and Lemley, Signposts or Fence Posts.
claims construction See Markman hearing
classification All patents are categorized into areas of technology with a system of classes and subclasses established by the USPTO.
combination patent A patent for an claimed invention whose contribution to the art is to combine two existing, possible known components in a new way.  The Supreme Court decision in KSR Int’l v. Teleflex concerned the standard needed to show that a combination was obvious.
continuation A second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or granted.  Continuations are unique to the U.S. and are criticized for giving applicants endless opportunity to wear down patent examiners.  See Lemley and Moore, Ending the Abuse of Continuation Practice.
defensive publication Publication of an invention done to ensure that no one can patent it, since it becomes prior art when it becomes public.  Also called “defensive disclosure.”
dependent claim A claim that refers back to (depends on) and further limits a preceding dependent or independent claim.  A patent typically only states a few independent claims, but many dependent claims which are narrower than the independent claim that they reference.  The narrower the claim, the more likely it is to be valid against prior art, but the less likely it is to be infringed.
design patent As distinct from a utility patent.  A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features.  An ‘article of manufacture’ is a broad term which may extend even to computer icons.  Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs.
direct infringement As distinct from indirect infringement.  A person directly infringes a patent if she actually performs all of the steps of at least one method claim of the patent; or sells, manufacture, uses, or imports a product that contains all of the elements of at least one system or apparatus claim of the patent. The direct infringer is the one who actually infringes a patent.
disclosure One of the primary objectives of the patent system.  In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought.  Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection.
divisional application A later application for an independent or distinct invention disclosing and claiming (only a portion of and) only subject matter disclosed in the earlier or parent application.
DOC Department of Commerce.  The parent agency of the USPTO.
doctrine of equivalents The principle that patent infringement occurs even when the allegedly infringing activity falls outside the literal scope of the patent claims, but its elements are identical or equivalent to each claimed element of the patented invention.
EPO European Patent Office, which is the operating arm of the European Patent Organisation (also EPO), which is an independent treaty organisation that is not part of the European Union, although there is a substantial overlap in membership.
ex parte A Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public.  This term characterizes the patent examination process.
ex post licensing Licensing demanded after the technology has been independently developed and implemented, also known as stick licensing since it is entered under threat of patent litigation.  Distinguished from ex ante or carrot licensing where the technology is knowingly and voluntarily licensed in advance.
exclusion order An order issued by the U.S. ITC as a result of a 337 action, excluding from entry into the United States goods found to infringe a U.S. patent.
Fed. Reg. The Federal Register.  The chronologically ordered gazette of the United States, cataloguing public notices and advisories, proposed and final rules and regulations, and requests for information and comment by the various organs of the Federal Government.  Also abbreviated “FR.”
Federal Circuit See CAFC
file wrapper The actual USPTO folder into which documents pertaining to the prosecution of a particular patent application are deposited, including correspondence between the applicant and the USPTO, bibliographic information, paper filings, and office actions.  The USPTO file wrapper system has transitioned to electronic form, and much of this information is now available electronically through the USPTO’s public PAIR.
final office action (rejection) An Office action on the second or any subsequent examination or consideration by an examiner that is intended to close the prosecution of a patent application.  However, in practice, a rejection is not conclusive; see continuation.
FR Federal Register.  See Fed. Reg.
FRAND “Fair, Reasonable, and Non-Discriminatory” licensing.  A licensing commitment made for standard-essential patents in the context of technology standard setting activities.  See also RAND.
FTC U.S. Federal Trade Commission.  An independent regulatory agency charged with consumer protection and competition policy, which conducted several influential studies on how patents work in practice.  Authored several key studies: 2003’s To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy [PDF] and 2011’s The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition [PDF].
Holdup An attempt by a patent owner, by threatening litigation, disproportionate damages, or injunction/exclusion of a product, to extract payment from a producing company greater than the value of the patented technology.
ICT Information and Communications Technology.  Similar to “IT” (information technology) but explicitly includes telecommunications technologies as well as computing.
IFW Image File Wrapper.  The electronic version of a patent application’s file wrapper.
independent claim A claim that does not refer back to or depend on another claim.  See dependent claim.
indirect infringement As distinct from direct infringement.  A person indirectly infringes a patent if she either contributes to or induces someone else to directly infringe the patent. Contributory infringement means that the indirect infringer knew about the patent and essentially provided some key piece of the infringing product that doesn’t have any other purpose. Induced infringement means that the indirect infringer induced someone to infringe the patent and knew that the actions she induced would be direct infringement.
Intellectual Ventures The largest patent aggregator, currently holding around 40,000 patents.  Closely associated with co-founder Nathan Myhrvold.  IV is often viewed as a patent assertion entity, although much of its activities are conducted through spinoffs, and the company is at least nominally in the business of producing inventions in-house.  See Ewing and Feldman, Giants Among Us.
inter partes reexamination See reexamination.
interference A proceeding, formerly conducted before the USPTO Board of Patent Appeals and Interferences, to determine priority of invention between applications that appear to cover the same invention.  Interferences occurred under the first-to-invent system that was changed to first-inventor-to-file by the America Invents Act of 2011.
international application An application filed under the Patent Cooperation Treaty (PCT).  This establishes global priority among applications, but there is no such thing as an international patent.
IPEC Intellectual Property Enforcement Coordinator.  Sometimes referred to as the “IP Czar”, the IPEC is a position in the Office of Management and Budget (OMB).
IPO Intellectual Property Owners Association, an association that represents the patent interests of major companies.
IPR Intellectual Property Rights.  Usually associated with formal legal rights such as patent, trademark, and copyright.  Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.
ITC International Trade Commission
JPO Japan Patent Office
MAD Mutually Assured Destruction.  A Cold War-era metaphor used in the context of patent practice to refer to the possibility that any assertion of patents by one business entity against another will be countered with assertions of patents held by the original defendant.
maintenance fees Fees for maintaining in force a patent based on an application filed on or after December 12, 1980.  See MPEP 2500 for more.
Markman hearing A hearing before the judge early in the course of litigation to determine the meaning of words in the patent claims, known as “claims construction.”  This is critical to defining the scope of a patent, so that issues of validity and infringement can be determined.  However, district court claims construction is notoriously indeterminate since it is reversed by the Federal Circuit 30-40% of the time.
MPEP USPTO’s Manual of Patent Examining Procedure.
non-obviousness The standard by which an invention must differ from prior art to be patentable.  The difference must not be obvious to a “person having ordinary skill in the art” (PHOSITA).  Also known as an “inventive step” outside the United States.
novelty A requirement for patentability, grounded in the United States in 35 U.S.C. 101, which states that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
NPE Non-Practicing Entity.  A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it.
PAE Patent Assertion Entity.  A narrower term for trolls that focuses on the core business model rather than whether the entity is actually making use of the patented technology (“working the patent”).
PAIR Patent Application Information Retrieval System.  The USPTO’s electronic system for storing and accessing information regarding a patent.
parent application The term “parent” is applied to an earlier application of the inventor disclosing a given invention.  See continuation.
patent family A patent family is the same invention disclosed by a common inventor(s) and patented in more than one country.
patent pending A phrase that often appears on manufactured items. It means that someone has applied for a patent on an invention that is contained in the manufactured item. It serves as a warning that a patent may issue that would cover the item.
patentable Eligible to be patented.  Under U.S. law, the substantive requirements of patentability are novelty, utility, and non-obviousness.
payday mugging A slang term referring to the phenomenon of small start-up companies being targeted with litigation by patent plaintiffs immediately after receiving venture capital investment.
PCT Patent Cooperation Treaty, a treaty administered by WIPO.  See international application.
PHOSITA “Person Having Ordinary Skill in the Art”.  See non-obviousness.
PME Patent Monetization Entity. An alternative term for “troll”, “patent assertion entity” (PAE), and “non-practicing entity” (NPE), proposed by authors Feldman et al. in The America Invents Act 500: Effects of Patent Monetization Entities on US Litigation.  The term it proffers as a label that the authors posit more captures the phenomena surrounding the monetizing patents in current practice.
post-grant review A procedure by which a third-party may contest issuance of a patent within a short period (usually 9 months) after issuance.  Used before the EPO; introduced to the U.S. by the AIA.
PPAC Patent Public Advisory Committee.  A small advisory committee (exempt from the provisions of the Federal Advisory Committee Act) that oversees the operations of the patent operation of the USPTO.
primary examiner A patent examiner who is fully authorized to sign office actions (signatory authority) regarding patentability.  Some applications may have secondary examiners.
prior art Technology that is either publicly available or for which there is priority patent application.  Prior art normally defeats any subsequent patenting.
privateer A patent assertion entity (PAE) used indirectly by a producing entity to assert patents against rivals. The privateer is better positioned to damage the rival because it is not vulnerable to counterassertions (as a non-producing entity it cannot be liable for patent infringement) and need not be concerned with adverse publicity.  The producing company may spin off the privateer, sell it patents, or support it in other ways.  See Ewing, Indirect Exploitation of Intellectual Property  Rights By Corporations and Investors: IP Privateering and Modern Letters of Marque and Reprisal.
pro se Latin term used to refer to an individual who represents himself in a legal matter.  Patent applicants do not have to use a patent agent or attorney but can prosecute a patent application on their own.
prosecution Patent prosecution is the process of applying for a patent, along with any further proceedings before the USPTO.
provisional patent application An application for patent filed in the USPTO under 35 U.S.C. § 111(b) that allows filing without a formal patent claim or any information disclosure (prior art) statement.  It establishes an early effective filing date in a regular application and automatically becomes abandoned after one year.
PTAB Patent Trial and Appeal Board.  Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews.  The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.
PTO Patent and Trademark Office, informally used interchangeably with USPTO.
publication The term applied when a patent application or issued patent is made public.  Normally required 18 months after filing.  A feature unique to the U.S. patent system allows patent applicants who limit their application solely to the United States to delay publication until the patent is issued by the USPTO.
RAND Reasonable and Non-Discriminatory.  See FRAND.
RCE Request for Continued Examination. First established by the AIPA, RCEs enable a patent applicant to extend his or her efforts to obtain the patent even after final rejection of the application by the examiner.  Like continuations, RCEs have been criticized for allowing applicants to wear down examiners, and for creating backlog at the USPTO.  Notably, the patent bar resisted efforts by the USPTO to reform continuation and RCE abuse between 2007 and 2009.
reexamination The process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, also known as the reasonable likelihood of prevailing standard.  The pre-AIA standard was that there be “substantial new questions of patentability”  presented as to the previously issued patent.  Sometimes abbreviated “RE.”
RF Royalty-Free.  A standard that can be implemented without payment of any kind, or commitment to license a patent for implementation in a standard with no payment required.
SEP Standard-Essential Patent.  A patent that a participant in standards development process declares to be essential to the practice of the standard.
SCP Standing Committee on Patents.  The committee of the World Intellectual Property Organization (WIPO) with jurisdiction over patent law, including the PCT.
software patent A generalized term referring to patents whose subject matter extends to computer-implemented code, which have been the subject of great controversy, including but not limited to how they interact with open source software.  Although software patents are often denigrated, there is no accepted definition.  However, there are a variety of methods for identifying software patents for empirical analysis.  See Bessen, A Generation of Software Patents.
specification The section of a patent that provides a description of the invention and the manner and process of making and using it.  It must enable the “person having ordinary skill in the art” to reproduce and use the invention without undue experimentation.
State Street A highly controversial 1998 decision by the Court of Appeals for the Federal Circuit that summarily abolished the longstanding rule against patents for methods of doing business.
stick licensing See ex post licensing
submarine patent Prior to a reform that changed the patent term to 20 years from filing, it was possible to delay the process for many years until an industry had developed around a hidden patent.  A “submarine patent” could then issue that held the industry hostage for 17 years from the date of issuance.
TRIPS The Agreement on Trade-Related Aspects of Intellectual Property, an annex to the World Trade Organization (WTO) Agreement of 1994.  TRIPS established minimum standards for intellectual protection that is generally perceived to reflect the interest of developed economies in exporting more robust protection for intellectual property rights.
troll An entity in the business of being infringed — by analogy to the mythological troll that exacted payments from the unwary.  Cf. NPE, PAE, PME.  See Reitzig and Henkel, Patent Trolls, the Sustainability of ‘Locking-in-to-Extort’ Strategies, and Implications for Innovating Firms.
USC United States Code.  The patent laws are in Title 35, so that Section 101 is referenced as 35 USC 101.
USPTO United States Patent and Trademark Office.  See also PTO.
USTR United States Trade Representative.  An office in the Executive Office of the President responsible for negotiating and enforcing agreements on trade.
utility An invention must useful to be patentable.  This is described as the utility standard — or “industrial applicability” in other patent systems.
utility patent As distinguished from design patents.  Generally, references to ‘patents’ are to utility patents.
WIPO World Intellectual Property Organization.  A UN treaty organization based in Geneva that seeks to harmonize international protection of intellectual property.
WTO The World Trade Organization, a treaty organization launched in 1994 as a more formal and effective follow-on to the General Agreement on Trade and Tariffs (GATT).  See also TRIPS.