We know that most people don’t use patent or other Intellectual Property (IP) terms in their daily lives. We do our best to write our blog posts in plain English, so that our readers aren’t drowning in arcane terms or good old fashion legalese. Sometimes, though, it’s important that we use certain patent terms to explain what happened in particular cases. So we’ve created this glossary to clarify technical terms we use in some of our blog posts.
These descriptions are general explanations of certain IP concepts, which involve U.S. law. They are not formal legal definitions that you might find in a statute, case law, or agency regulations. So they only should be used to help you understand the basic concepts (not to provide legal advice).
Cloudigy® Law will continue to update this resource as we add blog posts that cover additional IP issues. If you find terms that you would like us to add to this list, please comment on a post and let us know!
Abbreviated New Drug Application (ANDA) – an administrative process used to get approval from the Food & Drug Administration for a generic drug. In this process, the generic company must certify that it does not infringe any live patents that a brand-name drug company has which cover its version of the product, or that the patents that cover its product are invalid.
Anticipate/Anticipation – a claim that a prior art document fully describes the invention that the inventor is trying to cover in his own patent claims. If a patent’s claims are anticipated by certain prior art, those claims are not valid.
Best mode – a requirement that a patent specification explains the best way of making or performing the invention that is known to an inventor at the time that the patent application is filed.
Claim construction – a process undertaken by a trial court or the Federal Circuit to interpret a patent’s claims to determine the scope and boundaries of those claims.
Claims – the section of the patent that defines the scope of the invention and what the inventor has the right to protect. Patent claims give the patent owner the property right to exclude others from making, using, selling, offering for sale, or importing technology that is covered by the claims.
Continuation application – a patent application that is filed to allow the patent applicant the opportunity to continue prosecuting a patent that is still pending at the PTO.
Critical date – the patent statutes set this date at one year before the priority date. This date becomes an issue when answering questions about whether the invention or a similar technology was “on sale” more than one year before a patent application was formally filed.
Declaratory judgment – an action in which a party asks the court to rule on its rights or potential liabilities. In patent cases, declaratory judgment actions usually occur when a potentially infringing party asks the court to decide that someone else’s patent is invalid or unenforceable.
De novo – a standard of review that an appeals court uses when it looks at the information related to a particular issue with a clean slate, rather than giving deference to the trial court’s conclusion on that issue.
Derivation – a claim that an inventor listed on a patent did not actually invent what he says he invented.
Doctrine of equivalents – a way to decide that infringement occurs when a device or product does not literally meet all of the requirements of the patent claims, but their differences from the patented invention are so minor that the device or product still infringes.
Enablement – a requirement that a patent specification explain to a person of skill in the art how to make or use the invention.
Filing date – when an inventor officially filed a patent application (which can be a different date than the date on which the PTO received the application paperwork).
Inequitable conduct – a claim that a patent applicant (or owner) deliberately misled the PTO or concealed information from the PTO in order to get a patent. If a court concludes that a patent applicant has committed inequitable conduct, the patent rights will not be enforced by the court.
Interference – an action at the PTO to determine if two or more patents or applications cover the same or overlapping inventions.
Infringement – a claim that someone is making, using, selling, offering for sale, or importing into the U.S. a technology covered by a patent.
Invalid/Invalidity – a claim that a patent has not actually met all of the legal requirements to be a patent, and is therefore not valid.
Judgment as a matter of law (JMOL) – a decision by a trial court that reasonable people would reach a certain conclusion on an issue, based on the facts presented.
Obvious/Obviousness – a claim that a person familiar with the patent’s technology (a person of skill in the art) would understand, fairly easily, how to make or use the invention, based on a combination of certain prior art documents. If a patent’s claims are obvious in light of certain prior art, those claims are not valid.
Patent exhaustion/First sale doctrine – a policy that limits the potential damages that a patent owner may be able to recover. Once a patented product has been sold or fully licensed; the policy limits the patent owner’s ability to recover additional money from a later purchaser or owner.
Patent prosecution – the process of filing a patent application at the PTO, and having a patent examiner at the PTO review it to determine whether the claims are worthy of patent protection.
Per curiam – a decision authored by a court or panel of judges as a whole, rather than a decision attributed to one judge.
Person of Skill in the Art (POSITA) – the hypothetical knowledge standard that a court or an examiner uses to consider certain documents that predates the patent application filing in order to determine whether a patent is obvious. This hypothetical person has a certain level of knowledge and expertise in the invention’s technical field. The required level of knowledge and skill adjusts based on the nature of the invention.
Prior art – the patents or other publications that predate an invention that an examiner or a court considers to determine if a patent discloses an invention that is new and nonobvious to people who are skilled in that technology field.
Priority date – the date that an inventor can claim as the official patent application filing date. Sometimes the priority date can be the official filing date of an earlier related application.
Prosecution history – the correspondence file at the PTO that consists of a patent application, search results, references and articles, and the communications between the patent applicant and the examiner.
PTO – the U.S. Patent and Trademark Office, which is located in Alexandria, Virginia. The PTO is responsible for reviewing patent and trademark applications to see if they meet the requirements for obtaining a patent or a registered trademark.
Reexamination – a process that can be initiated by a patent owner or a third party that allows the PTO to reconsider the question of whether the claims of an issued patent are worthy of patent protection. For the PTO to reexamine a patent, there must be “substantial new questions of patentability” raised by the reexamination request.
Reissue – a process initiated by a patent owner for the purpose of having the PTO fix portions of patent claims, such as broadening the claim scope to cover technology that was described in the written description portion of the specification but not included in the original claims.
Specification – the section of the patent that describes and explains the invention. Sometimes this section will have drawings, flowcharts, images, and examples that are used to help explain the invention.
Unenforceable/Unenforceability – a claim that a patent owner should not be allowed to assert a patent against others because it abused the system in some way, or behaved as a bad actor in a way that is related to the patent or the effort to get a patent at the PTO.
Written description – a requirement that a patent specification describes the invention in enough detail that a person of skill in the art fully understand what the claimed invention is.