- The Basics
- Approximate Costs
- Patent Lingo
- The Need for Confidentiality
- Process & Timelines
An administrative process run by the Patent Office after an unsuccessful response to a Final Action, in which case a group of people assigned by the Commissioner hears arguments and makes a final determination as to whether the patent application is allowable or not.
A state that the patent application enters if a time deadline is not met by the applicant. In Canada, an abandoned application can be reinstated by complying with the task that was not performed by the deadline and paying a penalty fee within 12 months of the expiry of the deadline. If an abandoned patent application is not reinstated by the expiry of the twelve month period, the application is dead and no patent will be granted.
A concept that a patent will not be granted if the patent applicant disclosed the invention before filing for the patent application. Many jurisdictions, including the EP, are absolute novelty jurisdictions. Others, like Canada and the U.S. impose a grace period such as 1 year, from the date of disclosure directly or indirectly by the patent applicant, during which a patent application can be filed.
A part of the patent or application that summarizes the invention. Generally used to search for the patent. Typically found on the cover page of the patent or application. Technically not part of the patent.
A state that the patent application enters when the Examiner concludes that a patent should be granted. Upon receipt of a Notice of Allowance, the applicant can pay a final fee. After receipt of the Final Fee, the patent will be issued.
An argument that the Examiner makes that the patent application should not be granted because the invention has been previously publicly disclosed in prior art. Opposite of Novelty.
A person who is applying for a patent application. Initially, the applicant is the inventor. However, the inventor may assign his or her rights in whole or in part to another person who as assignee becomes the applicant.
A request that a patent issue for an invention.
An area of technology, usually relevant to the invention. References that may anticipate or render an application obvious may be called prior art.
A person to whom the rights to a patent, application and/or invention is assigned.
A document assigning the rights to a patent, application and/or invention.
A person who assigns his or her rights to a patent, application and/or invention to another.
“Chapter I” – a part of the PCT in which the International Application is searched but not subjected to international examination. When a PCT International Application is filed, the application is initially in Ch. I.
“Chapter II” – a part of the PCT, in which the International Application is subjected to international examination. The applicant must demand Ch. II to move from Ch. I.
“Continuation-in-Part” – a patent application in the U.S. that is filed before a parent patent application issues as a patent, which contains the subject matter of the parent application but also new subject matter as well.
“Canadian Intellectual Property Office” – the Canadian government body that is responsible for the handling and examination of Canadian patent application and for issuing patents in Canada.
The part of the patent or patent application that defines the scope of the monopoly to be obtained. The claims are framed in terms of numbered sentences, each of which defines the boundaries of the monopoly.
The government official in charge of the Patent Office.
A patent application in the U.S. that is filed before a parent patent application issues as a patent, which contains only the subject matter of the parent application but has different claims. Typically, the disclosure of the continuation application is identical to the disclosure of the parent application. Typically used to assert new claims that were not originally filed in the parent application.
A claim that specifically references another claim in the same patent or application by number.
The part of the patent or patent application that describes how the invention works. The disclosure typically references the figures and reference numerals in the figures to describe the structure and operation of the invention.
A patent application that is filed before a parent patent application issues as a patent, which contains only the subject matter of the parent application but has different claims. Typically, the disclosure of the continuation application is identical to the disclosure of the parent application. Typically used to assert one or more claims that were originally filed in the parent application but withdrawn during examination.
“European Patent,” a regional patent that covers most of the European jurisdictions. By filing an EP application, examination is centralized and performed only once. Once the EP application is allowed, the application is validated in one or more EP jurisdictions by the payment of a fee and in some cases by filing a translation, whereupon a patent issues in that jurisdiction.
The “European Patent Office,” the government body that is responsible for the handling of and examination of EP applications.
The process of negotiating with the patent office a suitable form of the patent application that will be allowable. Typically the patent office issues one or more office actions that the applicant responds to by argument, amendment of the claims or in some cases disclosure, or withdrawal of the claims. The office action usually identifies prior art that the Examiner believes renders one or more claims invalid for anticipation or obviousness.
A fee charged by some jurisdictions, including Canada, to commence examination. Other jurisdictions, including the U.S. include the examination fee in the filing fee. The request for examination in Canada must be filed within 5 years after the Canadian filing date of the application.
An official within the patent office who examines the patent application, issues the office actions and reviews the responses filed by the applicant.
In some jurisdictions, the fees are based upon a maximum number of claims. If more claims are desired than the maximum, additional fees may be required. In the US, the maximum number of claims is 3 independent claims and 20 total claims. In the EP, there are two thresholds. The first has a maximum of 15 claims. The second has a maximum of 25 claims.
An agreement whereby all of the rights to the patent, application and/or invention are given to a single person. The licensor retains ownership of, but has no rights to the patent, application and/or invention.
A period of time after the expiry of a deadline for completing the step(s) due before the deadline, usually upon payment of a fee. In Canada, an extension of time must be requested before expiry of the deadline. In the U.S., up to 3 one-month extensions of time to respond to an office action may be obtained simply by paying the fee and filing the response before the expiry of the applicable extension(s) of time.
The drawings in the patent or application. Specific features in the figures are denoted by reference numerals for discussion in the disclosure.
The file maintained by the patent office consisting of all correspondence passing between the patent office and the applicant.
An office action in which the Examiner has decided that if the response to the office action is not satisfactory, examination will terminate without the patent application issuing as a patent. Typically, when a Final Action issues, the applicant will file the response and if not satisfactory, will appeal the Examiner’s decision that the response is not satisfactory.
Also known as “Issue Fee”, the fee payable once the Examiner has issued a Notice of Allowance, to permit the application to issue as a granted patent.
A period of time after the disclosure, directly or indirectly by the patent applicant, of the invention, during which the applicant may still file a patent application. In Canada and the US, the grace period is 1 year.
The issue of a patent by the patent office.
“Information Disclosure Statement” – a document filed during examination of a US patent application that lists all of the publicly available documents known to the patent applicant and patent agent, that may be material to the patentability of the invention. Failure to disclose a document in an IDS that should have been disclosed, may render a patent unenforceable, even if the document that was not disclosed would not have invalidated the patent.
A claim that does not reference another claim by number.
Breach of the exclusive right of the patent owner to make, use or sell the patented invention in the issuing jurisdiction.
A document filed under the PCT on the International Filing Date that will become a domestic patent application in one or more jurisdictions when the National Phase is entered in the jurisdiction(s).
International Filing Date
The date that the International Application is filed with the PCT. When the National Phase is entered in a national or regional jurisdiction, the PCT application is treated as a national or regional patent application having a filing date that is the International Filing Date.
A requirement for patentability of a claimed invention. There must be some sort of ingenious spark incorporated in the invention. Opposite of Obviousness.
“International Preliminary Report on Patentability” – in a PCT International Application, a report issued by the PCT office at the completion of Ch. I or Ch. II of the PCT process. In Ch. I, the IPRP incorporates the ISR/WO and any amendments to the claims made in response. In Ch. II, the IPRP incorporates the International Examination Report and any amendments to the claims and/or disclosure made in response.
“International Search Authority” – in a PCT International Application, the patent office designated to conduct the international search of the patent application.
“International Search Report” – in a PCT International Application, the search conducted by the ISA during Ch. I in relation to the Novelty, Inventiveness and Industrial Applicability of the claims.
A granted patent.
The process of publicly disclosing the patent application and any documents relating to the patent application generated by the Examiner and the patent applicant. Typically, the patent application remains secret for up to 18 months from the priority date and is laid-open after that date.
A document granting permission to use some of the rights relating to a patent, application and/or invention to another person.
A person who gets permission to use some of the rights of the licensor under a licence.
A person granting a licence to the licensee.
A fee charged by the patent office to maintain the patent and/or application in good standing for a period of time. Also known as a renewal fee.
A claim that references more than one other claim in the patent or application.
A process of creating a patent application in a national or regional jurisdiction from a PCT International Application. Upon National Phase entry, the patent application takes the form of the International Application with a filing date that is the International Filing Date and keeping the priority information associated with the International Application.
“Non-Disclosure Agreement” – a document between a disclosing party and a recipient that sets out rights and obligations of the parties, usually related to a requirement that the recipient keep information disclosed by the disclosing party confidential. Information about an invention disclosed under an NDA will not render the invention invalid for anticipation.
A requirement for patentability of a claimed invention. The invention must not have been previously publicly disclosed. Opposite of Anticipation.
An argument that the Examiner makes that the patent application should not be granted because the invention would not be inventive to a person of ordinary skill in light of previously publicly disclosed prior art and/or common general knowledge. Opposite of Inventiveness.
A communication from the Examiner to the patent applicant identifying certain defects in the application that would prevent the grant of the patent. Typically the defects relate to prior art and allegations of lack of novelty and/or inventiveness, but may relate to other non-prior art objections.
The person who has rights in a patent, application and/or invention.
A patent application from which a continuation, CIP and/or divisional application derives.
A claim in a patent or application referenced by a dependent claim in the patent or application. A parent claim may itself be a dependent claim or may be an independent claim.
A document issued by a government through a patent office granting an exclusive right to make, use or sell a claimed invention during a patent term.
Patentable Subject Matter
A requirement for patentability of a claimed invention. The invention must cover material that meets certain criteria, such as the invention must cover an “art, process, machine or manufacture”. Also, certain jurisdictions have developed rules that make certain types of inventions non-patentable, such as software, business methods, games, and artistic features.
A person to whom a patent is issued.
Patent Term Adjustment
A period of time extending or reducing the term of a US patent based upon the delays during the examination of the patent application that are greater than should notionally be expected, on the part of the patent office and the patentee.
“Patent Cooperation Treaty” – a treaty entered into by certain countries that provides for a patent application deferral mechanism with centralized search and optionally examination.
A document that may be relevant to an argument that a claimed invention in a patent or application is not novel or inventive.
A patent application filed less than 1 year before another patent application by the same inventors for the same invention, in the same or another national or regional jurisdiction to which a priority claim is made. The relevant date for the novelty and/or inventiveness of the later patent application will be based on the priority date rather than the filing date of the later patent application.
A claim made when filing a patent application to a priority application.
The filing date of the priority application, upon which the relevant date for the novelty and/or inventiveness of a later patent application claiming priority to the priority application will be based.
The process of negotiation between the Examiner and the applicant as to the form and content of the patent application to arrive at an application that is allowable and can issue to patent.
A patent application filed in the US that will exist for 1 year and then be withdrawn. The provisional application is not examined but can serve as a priority application for another patent application. Typically, the provisional application may be incomplete or not in the typical form for a US patent application and is filed to obtain a priority date in advance of an impending disclosure. In some jurisdictions, such as Canada, a form of provisional application may be obtained by filing an incomplete application that is never intended to issue to patent.
A copy of the patent application that is published by the patent office after the application is laid-open. In other contexts, a reference that is published (as opposed to a model). A publication may be a patent, application or other kind of document, such as a brochure or journal article.
“Request for Continued Examination” – a request filed with the USPTO after receiving a Final Action, that, with payment of the associated fee, will allow examination of the patent application to proceed, even if the response to the Final Action is not considered satisfactory by the Examiner. Used to avoid termination of the examination process and proceeding to appeal.
A national or regional patent office performing duties associated with the PCT, including the filing of an International Application.
A process of re-submitting a granted patent to further examination, usually initiated by a third party who desires the patent to be rendered invalid or the scope of monopoly narrowed.
Something that may be considered prior art.
A number associated with an element or feature shown in one or more of the drawings in a patent or application, by which the disclosure can describe the element or feature in explaining the structure and operation of the invention. Typically, similar elements or features in different figures in a patent or application will be given a common reference numeral.
A process of putting an abandoned patent application back into good standing.
A process of modifying the claims and/or disclosure of a granted patent, usually initiated by the patentee.
See Maintenance Fee.
An argument that the Examiner makes that the patent application should not be granted because one or more claims is identical or not patently distinct from one or more claims from another patent or application, usually by the same inventor or owned by the same applicant.
A process undertaken by the patent applicant and/or the Examiner to identify references that may affect the novelty and/or inventiveness of the invention.
A status accorded to a patent applicant by a patent office based on the small size of the applicant that may entitle the applicant to reduced fees (usually at a 50% rate).
An agreement whereby all of the rights to the patent, application and/or invention are given to a single person, but the licensor retains ownership of as well as certain rights to the patent, application and/or invention.
The body of the patent or application, usually consisting of the disclosure (including figures) and claims. The specification may also contain the abstract.
The period of the exclusive monopoly granted to the patentee. The term usually begins with the grant of the patent and expires 20 years after the filing date.
A voluntary reduction of the US patent term requested by the patent applicant to overcome a double patenting issue.
“United States Patent and Trademark Office” – the government body that is responsible for the handling of and examination of US applications and for issuing of US patents.
A requirement for patentability of a claimed invention. The invention must work and provide a measure of commercial benefit.
The process of creating a national patent in an EPO country from an allowed EP application.
Compliance of a patent or application with a national or regional jurisdiction’s requirements.
“World Intellectual Property Organization” – the international body charged with responsibility over patent matters, including operation of the PCT.
“Written Opinion” – in a PCT International Application, the report generated by the ISA during Ch. In relation to the Novelty, Inventiveness and Industrial Applicability of the claims.