A-Z definitions of intellectual property terminology

A

AAU

amendment to allege use

ABA #

American Bankers Association number - often referred to as the "transit routing number", is the nine (9) digit electronic address of a financial institution. The ABA number is encoded in the MICR (Magnetic Ink Character Recognition) line of all checks, and is assigned to each financial institution and each branch office of that financial institution.

abandonment (patents)

A patent application becomes abandoned for failure to file a complete and proper reply as the condition of the application may require within the time period provided under 37 CFR § 1.134 and § 1.136 unless an Office action indicates otherwise.

Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR §§ 1.135 and 1.138, is one which is removed from the Office docket of pending applications.

-- see MPEP 711 for more
-- see express abandonment

abandonment (trademarks)

A trademark application that has been declared abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office Action letter from an applicant within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances. For more information, see Petition to Revive and Request for Reinstatement.

ABC

activity based cost accounting - an accrual-based accounting method for determining unit-based costs of delivering services by allocating the costs to budgetary resources; it measures the performance and costs related to a specific activity or function.

ABM

activity based management - a management methodology that combines ABC with business process analysis techniques to run, improve and measure performance for a business or organization.

ABSS

Automated Biotechnology Sequence Search

See PSIPS to access sequence searching online

abstract of the disclosure

A concise statement of the technical disclosure including that which is new in the art to which the invention pertains

-- see MPEP 608.01(b) for more

Acceptable Identification of Goods and Services Manual

This manual lists numerous examples of identifications of goods and services that are acceptable to the USPTO for inclusion in trademark applications and registrations. The manual is not exhaustive and is meant as a guide to aid applicants and their attorneys in formulating acceptable identifications of goods and/or services.

Use Acceptable Identification of Goods and Services Manual online

ACH

Automated Clearing House - a nationwide batch-oriented electronic funds transfer system governed by the NACHA (National Automated Clearing House Association)

Administrative Instructions

set out the provisions and requirements in relation to the filing and processing of the international (patent) application under the PCT and are established by the Director General of WIPO

agent (patent)

(may be referred to as a practitioner or representative) - one who is not an attorney but is authorized to act for or in place of the applicant(s) before the Office, that is, an individual who is registered to practice before the Office.

-- See 37 CFR § 10.6 and the searchable online Patent Attorney Agent Roster

AIA

America Invents Act

-- see MORE

AIPA

American Inventors Protection Act of 1999

-- see MORE

AIPLA

American Intellectual Property Law Association

AIS

automated information system

ALC #

Agency Location Code - an eight (8) digit code assigned to U.S. government agencies by the Department of Treasury.

allegation of use

a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. The allegation of use must include one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee. If filed before the examining attorney approves the mark for publication, the allegation of use is also called an "Amendment to Allege Use". If filed after issuance of the Notice of Allowance, the allegation of use is also called a Statement of Use. The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when filed. The applicant may not file either an Amendment to Allege Use or a Statement of Use between the date the examining attorney approves the mark for publication and the date of issuance of the notice of allowance.

amendment to allege use (AAU)

a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With the AAU, the owner must submit one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee.

AAUs must be filed before the date the examining attorney approves the mark for publication in the Official Gazette.

You should check the status of the application before filing the AAU to make sure that is timely. An AAU filed after the mark is approved for publication but before a notice of allowance has been issued (during the "blackout period") is untimely and cannot be accepted.

-- see file an AAU online e BIZ

Annex F

written specifications of the application-body document type definition (EFS' filename is application-body.dtd) agreed to by the USPTO, WIPO, EPO, and JPO

-- see MPEP Appendix AI for instructions on how to locate Annex F on the WIPO website

APMS

automated project management system

appeal (patent)

-- see BPAI for info on patent appeals

appeal (trademark)

An applicant who wants to contest a final refusal from an examining attorney may file an appeal to the Trademark Trial and Appeal Board. An appeal is taken by filing a Notice of Appeal and paying the appeal fee within six months of the mailing date of the action from which the appeal is taken. 15 U.S.C. Section 1070; 37 C.F.R. Section 2.142(a).

-- see Trademark Trial and Appeal Board Manual of Procedure (TBMP) Section 1202.03.

applicant

inventor or joint inventors who are applying for a patent on their own invention, or the person mentioned in 37 CFR 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.

-- see 37 CFR 1.41 and MPEP 605

application (patent)

an application for patent filed under 35 U.S.C. 111(a) that includes all types of patent applications (i.e., utility, design, plant, and reissue) except provisional applications. The nonprovisional application establishes the filing date and initiates the examination process. A nonprovisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee.

-- see How to Get a Patent for guides for each type of patent application

application (trademark)

a document by which a person requests a federal trademark registration. To receive a filing date, an application must include (1) the applicant's name, (2) a name and address for correspondence, (3) a clear drawing of the mark sought to be registered, (4) a list of the goods or services, and (5) the application filing fee.

-- see File a Trademark Application e Biz

application number (patent)

the unique number assigned to a patent application when it is filed. The application number includes a two digit series code and a six digit serial number

arbitrary marks

comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).

ASEAN

Association of South East Asian Nations

assignee

the entity that is the recipient of a transfer of a patent application, patent, trademark application or trademark registration from its owner of record (assignor)

assignment (trademarks)

a transfer of ownership of a trademark application or trademark registration from one entity to another. The USPTO recommends recording assignments with the USPTO Assignment Services Division to maintain clear title to pending trademark applications and registrations. For information on how to record an assignment, see Recordation Form Cover Sheet.

-- see Assign a Trademark Application or Registration e Biz
-- see Search Trademark Assignments online e Biz

assignor

the owner of record of a patent application, patent, trademark application or trademark registration who is transferring (assigning) ownership to another entity (assignee)

ATO

authority to operate

attorney

(may be referred to as a practitioner or representative) - an individual who is a member in good standing of the bar of any United States court or the highest court of any State and who is registered to practice before the Office.

-- see 37 CFR § 10.1(c); § 11.6(a); and § 10.14(a) and the searchable online Patent Attorney Agent Roster

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B

benefit claim

the claiming by an applicant in a nonprovisional application of a benefit of an invention disclosed in a prior-filed copending (under examination at the same time) provisional or nonprovisional application, or international application designating the U.S. for the purposes of securing an earlier-effective filing date for the nonprovisional application.

-- see 35 USC § 119(e), 120, 121 and 365(c) for more

BIA

business impact analysis

bio-sequence listings

a document that must be included only if a nucleotide or amino acid sequence is part of the invention. With EFS, paper documents are not required for bio-sequence or subsequent bio-sequence submissions.

blackout period

the period between the date the examining attorney approves the mark for publication and the date of issuance of the Notice of Allowance. The applicant may not file an Allegation of Use during this period.

Boolean

Boolean logic (named for the British-born Irish mathematician George Boole) is way to express relationships in logic arguments using the following threeoperators: "and", "or", "not".

The patent search systems use "AND", "OR", and "ANDNOT" as Boolean operators, in combination with parentheses to build nested logical subsets - example: needle ANDNOT ((record AND player) OR sewing), which would return anything with the word "needle" in a document as long as it does not also contain the word "record" and "player" in the same document or the word "sewing" in the same document. . It also uses some symbols such as "->" to indicate a range, where you enter the field code and start date, ->, and then the end date - example: ISD/1/1/1995->2/14/1995.

-- see help for patent searches for more on how to use Boolean operators in a patent search

BPAIIS

Board of Patent Appeals and Interferences Information System

BRM

business reference model - an organized, hierarchical way to describe the day-to-day business operations of the Federal government; this model presents the business using a functionally driven approach regardless of organizational structure.

-- see Federal Enterprise Architecture for more

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C

C&A

certification and accreditation

canceled

trademark registration is no longer active. It may be due to the registrant's failure to file the required continued use affidavit under Section 8 of theTrademark Act, to a cancellation proceeding at the Trademark Trial and Appeal Board or to the outcome of a civil court action.

canceled claim

A claim that is canceled or deleted. "Canceled" is the status identifier that should be used when a claim is canceled in an application

cancellation proceeding

a proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to cancel an existing registration of a mark. The proceeding may only be filed after issuance of a registration. A petition for cancellation may be filed by any person who believes that he or she is or will be damaged by the registration of the mark.

CD

a type of form designation such as Form CD435, meaning a Commerce Department form

CD

a compact disc (electronic data storage media)

CEAR

Certificate of Excellence in Accountability Reporting

certificate of mailing

a certificate for each piece of correspondence mailed, prior to the expiration of the set period of time for response, stating the date of deposit with the U.S. Postal Service and including a signature

certificate of registration

official document from the USPTO evidencing that a mark has been registered.

certification mark

any word, name, symbol, device, or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

-- see File Certification Marke BIZ

CFC

Combined Federal Campaign

an annual government-wide campaign for charitable contributions from Federal employees

CFR

Code of Federal Regulations

-- see MORE INFO

CFS

core financial system

change of name

Sometimes, owners of trademark applications and registrations change their names, even though the actual ownership of the application or registration has not been transferred. When this occurs, trademark owners should record the name change with the USPTO Assignment Branch to maintain a clear record of ownership. Name changes are recorded in the same manner as assignments. For information on how to record an assignment, -- see Recordation Form Cover Sheet.

Chapter I

the first, mandatory phase under the Patent Cooperation Treaty that includes performance of an international-type search, issuance of an International Search Report, and publication of the application and Search Report by the International Bureau of WIPO

CIP

Continuation-in-Part

an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application

-- see MPEP 201.08 for more

CIS

customer information system

claims

define the invention and are what aspects are legally enforceable. The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable (clearly understood ) by reference to the description. (See 37 CFR § 1.58(a)).

-- see MPEP 608.01(i) for more

classification

patents are classified (organized) in the U.S. by a system using a 3 digit class and a 3 digit subclass to describe every similar grouping of patent art. A single invention may be described by multiple classification codes.

-- see Manual of Patent Classification

classification of goods and services

Goods and services are classified by an international system, according to international treaties to which the United States is a signatory. All goods and services included in trademark applications are classified by the Office according to this system.

-- see TMEP 1401 for more information on the classification of goods and services

-- see the Trademark Acceptable Identification of Goods and Services Manual for a listing of the classes

coinventor

an inventor who is named with at least one other inventor in a patent application, wherein each inventor contributes to the conception (creation) of the invention set forth in at least one claim in a patent application.

-- see MPEP 2137.01, also joint application, joint inventor.

collective mark

a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.

-- see File a Collective Mark e Biz

combination patent

a patent granted for an invention that unites existing components in a novel way

common inventor

an inventor whose name is listed on multiple patent applications or granted patents, making the inventions at least partially the work of the same person.

common law rights

property or other legal rights that do not absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual. Active Federal registration of trademark can provide a higher degree of legal protection and readily-demonstrated evidence of ownership of a mark.

composed of

(used when defining the scope of a claim)

A transitional phrase that is interpreted in the same manner as either "consisting of" or "consisting essentially of," depending on the facts of the particular case (context)

-- see MPEP 2111.03 for more

comprising

(used when defining the scope of a claim)

A transitional phrase that is synonymous with (means the same thing as) "including," "containing" or "characterized by;" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Comprising is a term of art used in claim language which means that the named elements are essential in describing the invention.

-- see MPEP 2111.03 for more

concept

an idea or design

concept

an idea or design

confirmation number

a four-digit number that is assigned to each newly filed patent application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error (misplaced digits) in the application number. The Office recommends that applicants include the application's confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.

-- see MPEP 503 for more

conflicting marks

-- see likelihood of confusion

consisting essentially of

A transitional phrase that limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention.

For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent (without) a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed (understood) as equivalent to "comprising."

-- see MPEP 2111.03 for more

consisting of

a transitional phrase that is closed (only includes exactly what is stated) and excludes any element, step, or ingredient not specified in the claim.

-- see MPEP 2111.03 for more

continuation

a second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or patented

-- see MPEP 201.07 for more

continuing application

a continuation, divisional, or continuation-in-part patent application

contracting party

A country or intergovernmental organization that is a member of the Madrid Protocol.

Contracting State

a national Office or an intergovernmental organization which is party to the Patent Cooperation Treaty.

Control No.

unique number assigned to a patent reexamination request when it is filed, having a 2-digit series code (90 for ex parte reexamination requests; 95 for inter partes reexamination requests), and a 6-digit control number.

copyrights

protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last for the life of the author plus 70 years.

-- see Copyrights for more

As a work of the United States Government, this glossary falls under the provisions of 17 U.S.C. § 403, which requires that works including all or part of this material in a copyrighted work contain a statement in their copyright that clearly identifies what portions of the work consist of a work of the U.S. Government. Failure to do so could result in loss of copyright protection for the entire work.

-- see Editorial Standards for more

COTS

commercial off-the-shelf

an acquisition term refering to commercially available ready to use products that require no customization in order to meet performance requirements.

counterpart

an application filed in a foreign patent office that is substantially similar to (like) the patent application filed with the USPTO and is based upon some or all of the same invention. The two applications would generally have the same applicant.

-- see 37 CFR 1.97 for more

CPA

Continued Prosecution Application

a continuation or divisional application filed in a design application under 37 CFR 1.53(d)* -- see MPEP 201.06(d) for more

* NOTE: CPAs may no longer be filed in utility and plant patent applications, effective 14 July 2003.

-- see 1271 OG 43, 24 June 2003.

CPIC

capital planning and investment control

Envisioned in the Clinger-Cohen Act of 1996, OMB Circular A-130 (Management of Federal Information Resources) and other related guidance, this is a management process for ongoing identification, selection, control, and evaluation of investments in information resources. The process links budget formulation and execution, and is focused on agency missions and achieving specific program outcomes.

CRF

Computer Readable Format

CSS

Cascading Style Sheet - a technology used for webpages to format fonts and control layouts on the computer display.

current filing basis

In applications under §§1 and 44 of the Trademark Act, the applicant may claim more than one basis, and may add or substitute a basis after filing the application. The "current filing basis" means the basis, as amended (changed after the initial or original filing). If the basis has not been amended, the current filing basis is the same as the original filing basis.

-- see filing basis

customer number

(previously referred to as "payor number") - a number assigned by the Office that is used to simplify the submission of an address change, to appoint a practitioner, or to designate the fee address for a patent. Customer numbers are primarily used by attorneys and law firms, and must be requested using the "Request for Customer Number" form (PTO/SB/125).

-- see 37 CFR § 1.33(a), 1.76 and MPEP 403 for more

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D

dead

a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. It does not necessarily mean that there are not other marks that the trademark examining attorney would cite. It is also possible to revive an abandoned application (for example, if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant later proved that a response was sent and the USPTO simply failed to match it with the file in a timely manner, then the case could be revived). Also, regardless of the status of an application within the USPTO, the owner may still claim common law rights, i.e, the mark may still be in use in commerce.

deceased inventor

a named inventor who has died prior to the filing of a patent application or during the prosecution of a patent application.

-- see 37 CFR 1.42 and MPEP 409

declaration

a document in which an applicant for patent declares, under penalty of fine or imprisonment, or both (18 USC 1001), that (1) he or she is the original or sole inventor, (2) shall state of what country he or she is a citizen, (3) that he or she has reviewed and understands the contents of the specification and claims which the declaration refers to, and (4) acknowledges the duty to disclose information that is material to patentability as defined by 37 CFR § 1.56. An oath or declaration must be filed in each nonprovisional patent application.

-- see oath; 35 USC § 115; 37 CFR §§ 1.63 - 1.69; MPEP 602 and the PTO/SB/01 form for more

Demand

Form PCT/IPEA/401, filed with an International Preliminary Examining Authority, demanding that an international application shall be the subject of an international preliminary examination.

dependent claim

a claim that refers back to (depends on) and further limits a preceding dependent or independent claim. A dependent claim shall include every limitation of the claim from which it depends.

deposit account

an account that is established in the U.S. Patent and Trademark Office (USPTO), upon payment of a fee for establishing such an account, for the convenience in paying any fees due, in ordering services offered by the USPTO, copies of records, etc.

--see MPEP 509.01 for more or view deposit accountse BIZ

descriptive mark

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. If a mark is merely descriptive or deceptively misdescriptive of the goods or services to which it relates, the mark will be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).

Examples of descriptive marks include: MEDICAL GUIDE for website services featuring medical guides, DENIM for jeans, and SPICY SAUCE for salsa.

-- see TMEP §1209 for more info

design patent

may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture

-- see also patent

design patent application

an application for a patent to protect against the unauthorized use of new, original, and ornamental designs for articles of manufacture

-- see also application (patent)
-- see also nonprovisional patent application

Design Search Code Manual

lists the numerical codes for searching designs in the USPTO's trademark database (TESS).

-- see Design Search Code Manual e BIZ

designation

an indication made by applicant, in the Request for an International Application filed under the Patent Cooperation Treaty, as to the Contracting States in which protection for an invention is desired.

DHCP

dynamic host configuration protocol

DiD

defense in depth - multiple layers of security to provide added protection to IT resources

disclaimer (patent)

A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer (give up all or part of the owner's rights to enforce claims) of any complete claim , stating therein the extent of their interest in such patent. Such disclaimers are required to be in writing and recorded in the USPTO, and are considered as part of the original patent to the extent of the interest actually possessed by the disclaimant and by those claiming under him. Any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term (from a certain point in time through the projected end of the entire term), of the patent granted or to be granted. There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer.

-- see MPEP 1490 for more

disclaimer (trademark)

a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark. The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant's right with respect to certain elements in the mark.

disclosure

in return for a patent, the inventor gives as consideration a complete revelation (describes it) or disclosure of the invention for which protection is sought.

-- see MPEP 608 for more

disclosure document

The USPTO eliminated its Disclosure Document Program on February 1, 2007. For more information, see the Federal Register notice: http://www.uspto.gov/web/offices/com/sol/notices/71fr64636.pdf [PDF].

A document disclosing an invention, and signed by the inventor or inventors, that is forwarded to the USPTO only as evidence of the date of conception of the invention. The disclosure document may be forwarded to the USPTO by the inventor (or by any one of the inventors when there are joint inventors), by the owner of the invention, or by the attorney or agent of the inventor(s) or owner. A disclosure document is not the only type (and not necessarily the best type) of evidence of the date of conception of an invention. Notarized records or a conventional, witnessed, permanently bound, and page-numbered laboratory notebook may also serve as evidence of the date of conception of an invention.

A Disclosure Document will be retained for two years, and then be destroyed unless it is referred to in a separate letter in a related patent application filed within those two years. A Disclosure Document is not a patent application, and the date of its receipt in the USPTO will not become the effective filing date of any patent application subsequently filed.

-- see MPEP 1706 and the disclosure document program for more

Filers after 01FEB2007: see provisional patent application

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.

--see MPEP 201.06 for more

DNS

domain naming service

DO

Designated Office

the national Office or intergovernmental organization of or acting for the Contracting State designated by the applicant under Chapter I of the Patent Cooperation Treaty.

docket

a list of cases (applications) awaiting office actions

doctrine of equivalents

a judicially created theory for finding patent infringement when the accused process or product falls outside the literal scope of the patent claims. The essential objective inquiry is: "Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?"

-- see MPEP 2186 for more

domestic representative

a person residing within the United States who is appointed by a patentee or assignee of a trademark application or registration that does not reside in or is not domiciled within the United States. A domestic representative may be served process or notice of proceedings affecting the application, patent or trademark registration, or related rights.

--see 35 USC 293, 37 CFR 3.61 and MPEP 302.02 for more

drawing (patent)

Patent drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete but are only required if drawings are necessary for the understanding of the subject matter sought to be patented.

-- see Drawing Requirements for more info

drawing (trademark)

-- see representation of mark

DRM

data reference model - also known as a "data and information reference model" - describes the data and information that support program and line operations. Helps describe the types of interactions that occur between the Federal Government and others. Purpose of a DRM is to establish a commonly understood classification for Federal data that will lead to the identification of duplicative data resources.

-- see Federal Enterprise Architecture for more

DTD

document type definition - a format specification file that accompanies documents prepared according to SGML (standard generalized markup language), including XML (extensible markup language). It lists the tags or structural labelling for each distinctive section of text, images, or other embedded file object (examples: title, author, etc.) so that the document can be easily shared and worked with in different operating environments.

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E

e-Commerce

electronic commerce

e-Gov

electronic government

EA

enterprise architecture

EAI

enterprise application integration

EAST

Examiner Automated Search Tools - a system used by patent examiners within the USPTO

EBC

Electronic Business Center e BIZ - includes links to Patents EBC and Trademarks EBC

a web page containing hyperlinks to all online systems for conducting electronic commerce with the USPTO

eComm

electronic commerce portal

eDAN

Electronic Desktop Application Navigator

EDS

Enterprise Directory Services

EDW

Enterprise Data Warehouse

EFP

Electronic Filing Partnership

EFS

Electronic Filing System e BIZ (for patent applications)

supports secure electronic filing of Patent application documents via the Internet

EFS-ABX

Electronic Filing System - Application Body eXtensible Markup Language authoring tool (for patent applications); superceded by EFS-Web

EFS-Web

Electronic Filing System - web-based filing using PDF files

See About EFS-Web for more

EFT

Electronic Funds Transfer

election (PCT)

an indication made by applicant, in the Demand for an International Application filed under the Patent Cooperation Treaty, as to the Contracting States in which applicant intends to use the results of the international preliminary examination.

electronic file wrapper

a system that provides a way to access electronic copies of the correspondence, documents and other pertinent records used in considering a particular case

element

a discretely claimed component of a patent claim

embodiment

a manner in which an invention can be made, used, practiced or expressed

enforceability of patent

the right of the patent owner to bring an infringement suit against a party who, without permission, makes, uses or sells the claimed invention. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action.

-- see 35 USC 286-296

EO

Elected Office - the national Office or intergovernmental organization of or acting for the Contracting State elected by the applicant under Chapter II of the Patent Cooperation Treaty.

ePAS

Electronic Patent Assignment System

-- see ePAS e BIZ

EPO

European Patent Office

ESTTA

Electronic System for Trademark Trials and Appeals

eTAS

Electronic Trademark Assignment System

-- see eTAS e BIZ

ETC

Emerging Technology Center

ETD

Enterprise Training Division

eTEAS

electronic Trademark Examination Application System - electronic trademark filing system. It allows the public to complete various trademark filings and transactions on-line. For example, eTEAS allows you to complete trademark applications, preliminary amendments, amendments to allege use/statements of use, responses to Office actions, and post registration filings online, and then submit them directly over the Internet, paying by credit card, electronic funds transfer or an existing USPTO deposit account.

-- see eTEAS e BIZ

EU

European Union

ex parte reexamination

-- see reexamination proceeding

If the request for ex parte reexamination is filed by a third party and not the patent owner, the third party may not participate in the ex parte proceedings beyond the filing of a reply to the patent owner's statement under 37 CFR § 1.530, if the patent owner files a statement. No other reply or submission by a third party will be considered in ex parte reexamination.

-- see MPEP 2200, 37 CFR §§ 1.501-1.570 and inter partes reexamination for more

examination copy

a copy of an international application filed under the Patent Cooperation Treaty maintained by the International Preliminary Examining Authority.

examiner's amendment

a written confirmation of an amendment made to a trademark application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant's attorney. The examiner's amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner's amendment unless the applicant wishes to make further changes to the application.

examining attorney

a USPTO employee who examines (reviews and determines compliance with the legal and regulatory requirements of) an application for registration of a federally registered trademark

expired

Trademark registration is no longer active. The registrant failed to renew the trademark registration at the end of the registration period.

express abandonment

A patent application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment becomes effective when an appropriate official of the Office takes action thereon. Express abandonmentof the application may not be recognized by the USPTO before the date of issue or publication unless it is actually received by appropriate officials in time to act. Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the USPTO docket of pending applications.

-- see MPEP 711.01 for more

express mail mailing label (patent)

patent correspondence delivered to the USPTO via the "Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) which is considered filed in the Office on the date of deposit with the USPS, shown by the "date-in" on the "Express Mail" mailing label.

express mail mailing label (trademark)

The filing date for Trademark documents is not the same as for patent documents

-- see Trademarks express mail for specific guidance

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F

family (patent)

-- see patent family

fanciful marks

comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).

FAS

Foreign Agricultural Service

FASAB

Federal Accounting Standards Advisory Board

FAST

First Action System for Trademarks

Fastener Quality Act

Fastener Quality Act (15 U.S.C. 5401 et seq., as amended by Public Law 104-113, Public Law 105-234, and Public Law 106-34); implementing regulations: 15 C.F.R. Part 280

Purpose: Protects against the sale of mismarked, misrepresented, and counterfeit fasteners.

-- see Fastener Quality Act for more

FDC

Final Data Capture
Once the fee, any correspondence, and/or drawings are matched with the application and all requirements have been met for issuance as a patent, the application is then forwarded to the Final Data Capture (FDC) stage of the process . An "Issue Notification" would be the next step in the processing of a patent and is mailed approximately 3 weeks prior to the issue date of the patent.

fee

an amount of money charged for a particular service or product supplied by the USPTO.

-- see How to Pay Fees fees

FFMIA

Federal Financial Management Improvement Act

FICC

Federal Identity Credentialing Committee

file wrapper

The folder into which papers for a particular application are collected and maintained.

It contains a complete record of proceedings in the USPTO from the filing of the initial patent application to the issued patent. The file wrapper of a patent application that is maintained by the Office is the "official record."

filing basis

The legal basis for filing an application for registration of a mark. The Trademark Act sets out five filing bases, and an applicant must specify and meet the requirements of one or more bases before the mark will be approved for publication for opposition or registration on the Supplemental Register. The five bases are: (1) use of a mark in commerce under §1(a) of the Act; (2) bona fide intention to use a mark in commerce under §1(b) of the Act; (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act; (4) registration of a mark in the applicant's country of origin under §44(e) of the Act; and (5) extension of protection of an international registration to the United States, under §66(a) of the Act and the Madrid Protocol. The requirements for the bases are set forth in Trademark Rule 2.34.

-- see TMEP §806.

If no basis is set forth in the original application for registration, the examining attorney will issue an Office action requiring the applicant to specify a basis and meet all requirements for the basis. In applications under §§1 and 44, the applicant may claim more than one basis, and/or may add or substitute a basis after filing the application.

filing date

the date of receipt in the Office of an application which includes (1) a specification containing a description and, if the application is a nonprovisional application, at least one claim, and (2) any required drawings

-- see MPEP 506 for more

filing receipt

When an application is submitted via e-TEAS, the Office immediately issues a confirmation of filing via e-mail that includes the serial number and filing date, and a summary of all the data provided by applicant in the application. This serves as evidence of filing. Applicants who file paper applications receive printed filing receipts that list the application serial number and filing date, the mark, the applicant's name, the goods and/or services, the filing bases, if available; the international class(es), and the address to be used for correspondence.

filing refusal

also known as a final Office action, which makes "final" any outstanding refusals or requirements. A proper response to a final Office action is a) compliance with the requirements or b) appeal to the Trademark Trial and Appeal Board.

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 nonprovisional patent application.

-- see MPEP 706.07(b) for a final rejection and when it is proper on a first Office action

Applicant's reply under 37 CFR 1.113 to a final rejection is limited either to an appeal in the case of rejection of any claim to the Board of Patent Appeals and Interferences (37 CFR 1.191) or to an amendment complying with the requirements set forth in the Office action (37 CFR 1.114 or 1.116). Reply to afinal rejection must comply with 37 CFR 1.114 or include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection must comply with any requirements or objections as to form (37 CFR 1.113(c)).

-- see MPEP 706.07 for more

FISMA

Federal Information Security Management Act

FMFIA

Federal Managers' Financial Integrity Act

forms

Forms are provided as either official or unofficial (optional) formats to facilitate providing all information required to initiate desired procedures or respond to official procedural correspondence. Control numbers are assigned to identify each form and customers are usually instructed to locate forms by shortform numbers rather than lengthy form titles. For a list of fillable and printable PDF forms divided by major office process and sorted by form number please see Forms forms

FQA

Fastener Quality Act

FTAA

Free Trade Agreement of the Americas

FWC

File Wrapper Continuing application

a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.62*, which uses the specification, drawings and oath or declaration from a prior nonprovisional application, which is complete as defined by 37 CFR 1.51(a)(1)

-- see MPEP 201.06(b) for more

* NOTE: 37 CFR 1.62 was deleted effective December 1, 1997. See 1203 OG 63, October 21, 1997.

FY

fiscal year - the federal fiscal year extends from October 1 through September 30.

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G

GAU

Group Art Unit

generic term

terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. Examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.

-- see TMEP for more info

GI

Geographical Indications

-- see MORE

goods and services

goods are products.

In the context of service marks, a service (1) must be a real activity; (2) must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service.

-- see TMEP 1301.01 "What is a service?" for more information on services

-- see classification of goods and services for more

GPRA

Government Performance and Results Act

Group

(also referred to as a Technology Center or TC) - a unit of several Group Art Units in the mechanical, electrical, chemical or design area, managed by one or more Group Directors. Groups are more properly referred to as Technology Centers, or TCs.

Group Art Unit

(may be abbreviated "AU," "GAU" or "Grp Art Unit" on Office correspondence) - a working unit responsible for a cluster of related patent art. Staffed by one supervisory patent examiner (SPE) and a number of patent examiners who determine patentability on applications for a patent. Group Art Units are currently identified by a four digit number, i.e., 1642.

GSA

General Services Administration, an agency of the U. S. government.

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H

having

(used when defining the scope of a claim)

A transitional phrase that is synonymous with (means the same thing as) "including," "containing" or "characterized by;" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.

-- see MPEP 2111.03 for more

HLA

High Level Architecture

home copy

a copy of an international application filed under the Patent Cooperation Treaty maintained by the receiving Office where the international application was filed.

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I

IAC

Inventors Assistance Center (formerly Patent Assistance Center).

1-800-786-9199

IB

International Bureau - the secretariat of the WIPO which, among other functions, centralizes information of various kinds relating to the protection of intellectual property.

IC

International Class - class(es) assigned to a mark under the International Classification of Goods and Services (Nice Agreement); used in the United States since 1 September 1973

-- see TMEP 1401.02 for more

id.

short for "ibid", meaning same as previously cited

IDC

Initial Data Capture
Initial Data Capture (IDC) is the first phase of the publication process for a patent where the patent file is electronically captured. It takes approximately 6 weeks from the date that the allowed file is received for the completion of the Initial Data Capture of the application. The application is then sent to the File Maintenance Facility (FMF) for matching of the issue fee and any other correspondence. The application may stay in the FMF for approximately 1-2 weeks. However, if all requirements are not yet fulfilled the application will remain at the FMF until the requirements are met. Once all files are matched, the application will move to the FDC.

IDE

Integrated Development Environment

identification of goods and/or services

a written statement of the goods and/or services included in an application. Every application must include an identification of goods and/or services. If you fail to list any recognizable goods or services, the USPTO will return the application and refund the fee. When specifying the goods and/or services, applicants should use clear, concise terms, i.e., common commercial names and language that the general public easily understands.

Please note that the terms in the class headings or short titles of the classes in the "International Classification of Classes of Goods and Services" are generally too broad and should not be used alone as an identification. Also, an international class number alone is never an acceptable listing. For a listing of acceptable wording for goods and services.

-- see Trademark Acceptable Identification of Goods and Services Manual

IFW

Image File Wrapper -- an electronic version of a patent application, including image and/or text versions of the bibliographic information, all papers as filed, and all office actions and correspondence related to that application.

-- see File Wrapper for more

IG

Inspector General - 57 statutory OIGs were created by an act of Congress in 1978 to independently detect fraud or instances of waste, abuse or misuse of federal funds and identify operational deficiencies within each of the Departments.

incontestability

-- see Section 15 Declaration of Incontestability

independent claim

a claim that does not refer back to or depend on another claim.

informal application

an application that has been filed without one or more of the elements required to receive a filing date. The USPTO will return informal applications to applicants. Please see the entry for "application" above for a list of the required elements.

information disclosure statement (IDS)

a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office in a non-provisional patent application filed under 35 U.S.C. § 111(a) to comply with applicant's duty to submit to the Office information which is material to patentability of the invention claimed in the non-provisional application.

For patent applications filed under 35 U.S.C. § 111(a), applicants and other individuals who are substantively involved in preparing or prosecuting a patent application must submit to the Office information which is material to patentability (could render a claim unpatentable) as defined in 37 CFR § 1.56. The provisions of 37 CFR § 1.97 and 37 CFR § 1.98 provide a mechanism for compliance with the duty of disclosure provided in 37 CFR § 1.56.

The IDS must include a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office. The USPTO provides forms for use in the submission of an IDS, the PTO/SB/08a and PTO/SB/08b.

-- see 37 CFR §§§ 1.56, 1.97 and 1.98and MPEP 609 for more

infringement

-- see patent infringement

INTA

International Trademark Association

intellectual property

Creations of the mind - creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. There are four ways to protect intellectual property - patents, trademarks, copyrights or trade secrets

intent to use

ITU - refers to the intent-to-use filing basis provided for in Trademark Act Section 1(b), 15 U.S.C. 1051(b). Applicants who have not yet used (in commerce that can be regulated by Congress) the mark they wish to register may file a trademark application under this filing basis. An "intent to use" application must include a sworn statement (usually in the form of a declaration) that applicants have a bona fide intention to use the mark in commerce. A properly worded declaration is included in the trademark application form for registration. The applicant or a person authorized to sign on behalf of the applicantmust sign the declaration.

Applicants who file based on "intent to use" must begin actual use of the mark in commerce and file an Allegation of Use before the USPTO will register the mark. See definitions of "Amendment to Allege Use" and "Statement of Use". There is an additional filing fee for the Allegation of Use.

inter partes reexamination

-- see reexamination proceeding

Inter partes reexamination practice primarily differs from ex parte practice in that the third party requestor may file written comments addressing issues raised by the patent owner in a response to Office action.

-- see 35 USC 311 and 37 CFR 1.902-1.997 and MPEP 2600 for more

interference

a proceeding, conducted before the Board of Patent Appeals and Interferences (Board), to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents

-- see MPEP 2300 for more

international application (patents)

an application filed under the Patent Cooperation Treaty.

international application (trademarks)

allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application

invention

any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States.

-- see 35 USC 100 for more

inventor

one who contributes to the conception of an invention. The patent law of the United States of America requires that the applicant in a patent application must be the inventor.

-- see also applicant.

IP

intellectual property

IP

Internet Protocol

The term "IP address" or "ips" refers to the unique network address of a visitor to a website

IPA

Internet Purchasing Application

IPEA

International Preliminary Examining Authority - either a national Office or an intergovernmental organization whose tasks include the establishment of examination reports on inventions which are the subject of international applications.

IPER

International Preliminary Examination Report (Form PCT/IPEA/409), produced by an International Preliminary Examining Authority, is a preliminary and non-binding opinion on whether the invention claimed in an international application appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.

IPO

Intellectual Property Owners Association

IPR

Intellectual Property Rights

IRB

Investment Review Board

ISA

International Search Authority - either a national Office or an intergovernmental organization whose tasks include the establishment of documentary search reports on prior art with respect to inventions which are the subject of international applications.

ISR

International Search Report (Form PCT/ISA/210), produced by an International Searching Authority, is a report listing citations of published documents that might affect the patentability of the invention claimed in an international application.

issue date

the date that a patent application becomes a US patent.

The issue date is the date that patent rights can be exercised. U.S. patents are always issued on Tuesdays.

IT

information technology

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J

J2EE

Java 2 Enterprise Edition

JCCT

Joint Commission on Commerce and Trade

joint application

an application in which the invention is presented as that of two or more persons

-- see MPEP 201.02 and MPEP 605.07 for more; also joint inventor

joint inventor

an inventor who is named with at least one other inventor in a patent application, wherein each inventor contributes to the conception of the invention set forth in at least one claim in a patent application. See MPEP 2137.01 See also coinventor.

jpg

.jpg file type extension or JPEG - "Joint Photographic Experts Group" - is one of several digital image formats that are viewable in web browsers. JPEG image files are encoded using a standard for file compression (making the files smaller) that preserves essential color and display information in a fairly photorealistic way, with smooth edges, shapes and color blends. JPEG files are generally preferred for displaying still image photographs in digital form. The JPEG format is "lossy", meaning some information is lost when an image is compressed. This accounts for the "fuzziness" and patchy color areas what you may see when lower resolution JPEG images are enlarged to fill a space on the screen.

JPO

Japan Patent Office

JPTOS

Journal of the Patent and Trademark Office Society

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K

kind codes

WIPO Standard ST. 16 codes (kind codes) include a letter, and in many cases a number, used to distinguish the kind of patent document (e.g., publication of an application for a utility patent (patent application publication), patent, plant patent application publication, plant patent, or design patent) and the level of publication (e.g., first publication, second publication, or corrected publication).

-- see more about USPTO kind codes (PDF)
-- see a list of kind codes

Detailed information on Standard ST. 16 and the use of kind codes by patent offices throughout the world is available on the WIPO web site at http://www.wipo.int/scit/en, under the links for WIPO standards and other documentation.

KSA

knowledge, skills and abilities (job qualifications)

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L

lawyer

-- see attorney

letters patent

-- see patent

LIE

Legal Instruments Examiner - a position classification for USPTO employees charged with docketing cases and other administrative processing that support the workflow and examination of applications

likelihood of confusion

a statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), TMEP §1207 et seq.) for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pendingbefore the USPTO. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.

The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

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M

Madrid Protocol

The "Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks" (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application."

-- see TMEP Chapter 1900 for more

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

mark

-- see trademark

Markush doctrine

When materials recited in a claim are so related as to constitute claiming the members of the claimed group in the alternative, such as "selected from the group consisting of A, B and C."

-- see MPEP 803.02 and 2173.05(h) for more

MARS

Machine Assisted Reference Section

mere descriptiveness

statutory basis (Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), TMEP 1209 et seq) for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services.

The degree of descriptiveness can be determined only by considering it in relation to the specific goods or services. At one extreme are marks that are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks.

The major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. (See also Descriptive Mark)

MiTEAS

Madrid International Trademark Electronic Application Submission

multiple dependent claim

a dependent claim which further limits and refers back in the alternative to more than one preceding independent or dependent claim. Acceptable multiple dependent claims shall refer to preceding claims using the terms "or, any one of, one of, any of, either." A multiple dependent claim may not depend on another multiple dependent claim, either directly or indirectly.

-- see 37 CFR 1.75 and MPEP 608.01(n).

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N

national stage application

an application which has entered the national phase of the Patent Cooperation Treaty by the fulfillment of certain requirements in a national Office, which is an authority entrusted with the granting of national or regional patents. Such an application is filed under 35 U.S.C. §371 in the United States and is referred to as a "371 application."

Native American Tribal Insignia

insignia that various federally and state recognized Native American tribes have identified as their official tribal insignia

-- see Native American Tribal Insignia FAQ

NIPLECC

National Intellectual Property Law Enforcement Coordination Council

NOA (patents)

Notice of Allowance

NOA (trademarks)

Notice of Allowance

NOCC

Network Operations Control Center

non-final office action

an Office action letter that raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final Office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final Office action, the examining attorney will issue another non-final Office action that sets forth the new issue(s) and continues any that remain outstanding. Applicants must respond to non-final Office action letters within 6 months from the date they are issued to avoid abandonment of the application.

non-final office action (rejection)

an Office action made by the examiner where the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment

On taking up an application for examination or a patent in a reexamination proceeding, the examiner is required to make a thorough study of the application and of the available prior art relating to the subject matter of the claimed invention. This examination must be complete with respect to:

  • compliance of the application or patent under reexamination with the applicable statutes and rules
  • the patentability of the invention as claimed
  • matters of form, unless otherwise indicated.

non-lawyer

a person who is not an attorney or lawyer.

-- see 37 CFR § 10.14(b)

non-responsive amendment

an amendment filed by the applicant that does not fully respond to the examiner's office action in accordance with 37 CFR 1.111

-- see MPEP 714.02

nonprofit organization

for purposes of small entity determination per MPEP 509.02 - (1) a university or other institution of higher education located in any country; (2) an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)); (3) any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201(i)); or (4) any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (e) (2) or (3) of MPEP section 509.02 if it were located in this country

-- see MPEP 509.02 for more

nonprovisional patent application

an application for patent filed under 35 U.S.C. 111(a) that includes all patent applications (i.e., utility, design, plant, and reissue) except provisional applications. The nonprovisional application establishes the filing date and initiates the examination process. A nonprovisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee

-- see application (patent)
-- see How to Get a Patent for guides for each type of patent application

normal publication

regular 18-month publication or redacted publication.

notice of abandonment

a written notification from the USPTO that an application has been declared abandoned or, in other words, is no longer pending. If the application was abandoned unintentionally or due to Office error, the applicant has a deadline of two months from the issue date of the notice of abandonment to file either (1) a petition to revive the application or (2) a request to reinstate the application.

-- see see 37 CFR 1.181(f) for more

notice of allowability

a notification to the patent applicant that the application has been placed in condition for allowance

-- see MPEP 1302.03 Notice of Allowability for more

notice of allowance

NOA - a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration.

Notices of allowance are only issued for applications that have been filed based on "intent to use". The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice. If theapplicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned.

notice of allowance and fees due

NOA, a notification to the applicant that they are entitled to a patent under the law and requesting payment of a specified issue fee (and possibly a publication fee as well) within three months (non-extendable) from the mailing date of the notice of allowance

-- see MPEP 1303 Notice of Allowance for more

notice of publication

a written statement from the USPTO notifying an applicant that its mark will be published in the Official Gazette. If the examining attorney assigned to an application raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication. The notice of publication provides the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use or on a foreign registration under §44, or a Notice of Allowance will issue for intent-to-use applications.

notice of references cited

also known as a PTO-892 form. A list of relevant references cited by a patent examiner in an Office action. The following are some examples of such references: domestic patents, domestic patent application publications, foreign patents or patent publications, publications, electronic documents, and affidavits.

--see 37 CFR 1.104 and MPEP 707.05 for more

NPL

Non Patent Literature -- documents and publications that are not patents or published patent applications but are cited as references for being relevant in a patent prosecution. For example, a magazine article or doctoral thesis relevant to a claimed invention might be cited as non-patent literature. Typically, references cited in an application are grouped into: domestic patents and patent application publications; foreign patents; and non-patent literature.

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O

OACS

Office Action Correspondence System - used by patent examiners to generate office actions.

oath

a solemn declaration before another, complying with the laws of the state or country where made, that the document in which an applicant for patent declares that (1) he or she is the original or sole inventor, (2) shall state of what country he or she is a citizen, (3) that he or she has reviewed and understands the contents of the specification and claims which the declaration refers to, and (4) acknowledges the duty to disclose information that is material to patentability as defined by 37 CFR § 1.56. An oath or declaration must be filed in each nonprovisional patent application.

-- see declaration; 35 USC §115; 37 CFR §§ 1.63, 1.64, and 1.66; MPEP 604 and the PTO/SB/01 form for more

OBI

Originating Beneficiary Information - the informational portion of a wire (electronic) transfer of funds. It is a necessary and important element, providing the USPTO information as to why the "wire" was sent, by whom, and how to apply the payment.

OBRA

Omnibus Budget and Reconciliation Act

OEIP

Office of Electronic Information Products

Office

in the context of actions or activities involving the USPTO this refers to the United States Patent and Trademark Office (USPTO) itself

Office action

a letter from a trademark examining attorney setting forth the legal status of a trademark application. There are several types of Office actions: examiner's amendments, priority actions, non-final Office actions, final Office actions, and suspension inquiry letters.

OG

Official Gazette - weekly publication of the USPTO that includes regular and special notices of the Office

OG - Patents

Official Gazette eOG:P - weekly publication of the USPTO that permits you to browse issued patents and view important notices

OG - Trademarks

Official Gazette eOG:T - weekly publication of the USPTO that includes marks that have been published for opposition. The five most recent issues are available online.

OHIM

Office for Harmonization in the Internal Market

OIG

see IG

OIIP

Office of Independent Inventors Programs (prior), now part of the Inventors Assistance Center

-- see Inventors Resources for more

OIPE

Office of Initial Patent Examination

OLIA (superceded)

Office for Legislative and International Affairs - currently known as Administrator for External Affairs, comprised of Office of International Relations, Office of Congressional Relations, and Office of Enforcement

OPF

Official Personnel File

opposition proceeding

a proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to prevent the issuance of a registration of a mark. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal.

Any person who believes that he or she will be damaged by the registration of a mark may file an opposition, but the opposition may only be filed in response to the publication of the mark in the Official Gazette.

OPR

Formerly, Office of Public Records; now known as Public Records Division (PRD)

original application

"Original" is used in the patent statute and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application

-- see MPEP 201.04(a)

-- see also nonprovisional patent application
-- see also provisional patent application

original filing basis

the basis set forth in the application as initially filed

-- see filing basis

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P

PAIR

Patent Application Information Retrieval

-- see Patent EBC e BIZ for more

provides secure access for customers who want to view current patent application status electronically via the Internet

PALM

Patent Application Locating and Monitoring system - an internal USPTO system that is the source of status information displayed in PAIR

PAR

Performance and Accountability Report

-- see Annual Reports for more

parent application

The term "parent" is applied to an earlier application of the inventor disclosing a given invention

--see MPEP 201.04 for more

PASAT

Patent Application Specification Authoring Tool -- no longer used as of 22 August 2004

patent

a property right granted by the Government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted.

-- see also design patent, nonprovisional patent application, plant patent, provisional patent application, reexamination proceedings, reissue application, utility patent

Patent and Trademark Depository Library (PTDL)

a library designated by the USPTO to receive copies of patents, CD-ROMs containing registered and pending marks, and patent and trademark materials that are made available to the public for free. As of October 1st, 2011 these libraries have been renamed and are referred to as Patent and Trademark Resource Centers (PTRCs). The term "PDTL" is no longer used.

-- see PTRC for a list of locations and more info

patent application

-- see application (patent)
-- see How to Get a Patent for guides for each type of patent application

patent application publication

Pre-Grant Publication of patent application at 18 months from priority date

-- see Search online

patent family

A patent family is the same invention disclosed by a common inventor(s) and patented in more than one country.

-- see patent family

patent infringement

unauthorized making, using, offering to sell, selling or importing into the United States any patented invention

-- see 35 USC § 271(a)

patent number

unique number assigned to a patent application when it issues as a patent -- see list

-- see patent numbering formats for an explanation of the codes that appear in a patent number

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 and that copiers should be careful because they might infringe if the patent issues. Once the patent issues, the patent owner will stop using the phrase "patent pending" and start using a phrase such as "covered by U.S. Patent Number XXXXXXX." Applying the patent pending phrase to an item when no patent application has been made can result in a fine.

patentable

suitable to be patented; entitled by law to be protected by the issuance of a patent.

payor number

-- see customer number

PBG

Patent Business Goals

PBX

Private Branch Exchange - a telephony term describing a private telephone network used within an enterprise. Users of the PBX share a certain number of outside lines for making external telephone calls.

PCT

Patent Cooperation Treaty (more)

provides a mechanism by which an applicant can file a single application that, when certain requirements have been fulfilled, is equivalent to a regular national filing in each designated Contracting State. There are currently over 112 PCT Contracting States.

PCT Regulations

provide rules concerning matters expressly refers to in the Patent Cooperation Treaty, any administrative requirements, matters, or procedures, and concerning any details useful in the implementation of the provisions of the Patent Cooperation Treaty. The rules must be adopted by the Assembly of WIPO.

PDF

Portable Document Format - a common proprietary document format from Adobe used for documents having mixtures of text and images that preserves the look and feel of a printed page and permits the user to zoom and magnify the pages when viewing; not "archival" because of its proprietary nature.

-- see PDF viewers

PEAI

Patent Enterprise Access Integration

person

for purposes of small entity determination per MPEP 509.02, a person is defined as any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention), who has not assigned, granted conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license any rights in the invention

-- see MPEP 509.02 for more

petition to revive an application (trademark matters)

a formal request for the USPTO to return an abandoned application to active status. These petitions are handled by the Office of the Commissioner for Trademarks, and must be received in the USPTO within two (2) months from the issue date of the notice of abandonment. The standard used for deciding a petition to revive is unintentional delay, that is, whether the applicant's delay in responding to an Office action or Notice of Allowance was unintentional.

PG Pub

Pre-Grant Publication of patent application at 18 months from priority date

PKI

Public Key Infrastructure - a system of administrative procedures and methods, combined with secure information technologies, that is used to manage secure electronic commerce. Provides for a means of securely identifying participants in electronic transactions as well as secure transmission and handling of data.

plant application (patent)

are applications to protect invented or discovered, asexually reproduced plant varieties.

-- see also nonprovisional patent application
-- see also provisional patent application

plant patent

may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. --see also patent

PLT

Patent Law Treaty

PMA

President's Management Agenda

PMO

Program Management Office

POA

Power of Attorney - formal assignment to another of the right to legally act on your behalf

POIS

Patent Cooperation Treaty Operations Imaging SystemPatent Cooperation Treaty Operations Imaging System

postcard receipt

a self-addressed, stamped postcard with itemized list of parts of patent application and number of pages per MPEP 503; used as a receipt for what was submitted in an application

POWER

Patent Cooperation Treaty Operations Workflow and Electronic Review

PPAC

Patent Public Advisory Committee

PPS

PowerPoint Show file - a type of encapsulated, non-editable Microsoft slideshow

PPT

PowerPoint file - a native, editable type of Microsoft slideshow file

practitioner

one who stands for or acts on behalf of another. A patent attorney or patent agent may represent the inventors named in a patent application.

-- see also attorney, agent.

PRD

Public Records Division

precautionary designation

designation of a Contracting State in an international application filed under the Patent Cooperation Treaty which must be confirmed prior to 15 months from the priority date.

primary examiner

a patent examiner who is fully authorized to sign office actions (signatory authority) regarding patentability

Principal Register

primary trademark register of the USPTO. When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Trademark Act. The advantages of owning a registration on the Principal Register include the following:

  1. Constructive notice to the public of the registrant's claim of ownership of the mark (15 U.S.C. Section 1072);
  2. A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration (15 U.S.C. Sections 1057(b) and 1115(a);
  3. A date of constructive use of the mark as of the filing date of the application (15 U.S.C. Section 1057(c); TMEP Section 201.02);
  4. The ability to bring an action concerning the mark in federal court (15 U.S.C. Section 1121);
  5. The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods (15 U.S.C. Section 1124);
  6. The registrant's exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become "incontestable," subject to certain statutory defenses (15 U.S.C. Sections 1065 and 1115(b)); and
  7. The use of the U.S. registration as a basis to obtain registration in foreign countries.

PrinTEAS

a former feature of the USPTO's electronic filing system that allowed applicants to complete a trademark application on-line, and then print it out for mailing to the USPTO.

PrinTEAS was removed from production on 2 November 2003.

To file a trademark online see eTEAS e Biz

prior art (reference)

See MPEP 900 for information

priority action

a letter in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication. An examining attorney will issue a priority action after consulting with an applicant or the applicant's attorney. Unlike an examiner's amendment, the priority action does not confirm resolution of the issues; instead, it explains the requirements still outstanding.

The applicant must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant fails to do so, the application will be abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an Office action.

The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing the response.

priority claim

claims under 35 USC 119(a)-(e) and 35 USC 120 for the benefit of the filing date of earlier filed applications.

PRM

Performance Reference Model - a standardized framework to measure the performance of major IT investments and their contribution to program performance

-- see Federal Enterprise Architecture for more

Pro Se

used to designate an independent inventor who has elected to file an application by themselves without the services of a licensed representative.

provisional patent application

a provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. § 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a nonprovisional patent application filed under 35 U.S.C § 111(a) and automatically becomes abandoned after one year. It also allows the term "Patent Pending" to be applied.

-- see Provisional Patent Application for more

pseudo mark

A way of locating a word mark that is comprised of an alternative or intentionally corrupted spelling of an English word. The pseudo mark search locates spellings that are very similar or phonetically equivalent to the word mark.

-- see Trademark Tips on Field Searching for more

PSTN

Public Switched Telephone Network

PTO

Patent and Trademark Office, former designation for USPTO

also a type of form designation for forms generated by the USPTO (as in PTO-892)

PTOL

a type of form designation such as Form PTOL, meaning a Patent and Trademark Office Legal form

PTOS

Patent and Trademark Office Society

PTRC

Patent and Trademark Resource Center-- see PTRC program

publication for opposition

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette. 

The USPTO will send a Notice of Publication to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or on a foreign registration under §44, or a Notice of Allowance will issue for intent-to-use applications.

publication number

a number assigned to the publication of patent applications filed on or after November 29, 2000. It includes the year, followed by a seven digit number, followed by a kind code. Example 200011234567A1

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R

RAM

Revenue Accounting and Management System

RCE

Request for Continued Examination

a request filed in an application in which prosecution is closed (e.g., the application is under final rejection or a notice of allowance) that is filed to reopen prosecution and continue examination of the application; requires the filing of a submission and payment of a fee -- see 37 CFR 1.114

RE

reexamination

record copy

original copy of an international application filed under the Patent Cooperation Treaty maintained by the International Bureau of the World Intellectual Property Organization.

recordation form cover sheet

USPTO form that trademark owners use to record trademark assignments (changes in ownership of marks for applications and registrations) and a trademark owner's change of entity name. The form is PTO-TM-1594. It may be submitted in hard copy to the following address:

Mail Stop Assignment Recordation Services
Director of the US Patent and Trademark Office
PO Box 1450
Alexandria, VA 22313-1450

Locate the current fee schedule at How to Pay Fees to determine the current fee for assignment recordation (Trademark Services Fee Code 8521)

redacted publication

a patent application publication that omits material that was present in the specification or claims of the nonprovisional patent application filed in the USPTO. See 37 CFR 1.217 and MPEP 1132 for more information.

reexamination proceeding

at any time during the enforceability of a patent any person may file a request for the USPTO to conduct a second examination of any claim of the patent on the basis of prior art patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability (see 37 CFR 1.501). In order for the request for reexamination to be granted, a substantial new question of patentability must be present with regard to at least one patent claim. The request must be in writing and must be accompanied by payment of a reexamination request filing fee as set forth in 37 CFR 1.20(c).

-- see 37 U.S.C. 302, MPEP 2209, et seq., for more

reference (prior art)

-- see MPEP 900 for information

registration

Federal registration of trademarks involves the establishment of rights in a mark based on legitimate use of the mark. Although federal registration of trademarks is not required to use a trademark, owning a federal trademark registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, the exclusive right to use the mark on or in connection with the goods or services set forth in the registration, the ability to bring an action concerning the mark in federal court, the use of the U.S. registration as a basis to obtain registration in foreign countries, and the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

-- see International Intellectual Property for links to enforcement assistance

registration number

a registered patent attorney/agent is assigned a registration number that they must include on patent correspondence and forms when representing others before the USPTO; individual applicants do not have a registration number and should leave this field blank on patent forms.

-- see the searchable online Patent Attorney Agent Roster to locate registered patent attorneys and agents

reissue application

an application for a patent to take the place of an unexpired patent that is defective in one or more particulars (items or details) --see MPEP 201.05 andMPEP 1400.

-- see also nonprovisional patent application
-- see also provisional patent application

rejoinder

The rejoining (returning to active consideration) of claims previously withdrawn from consideration to due to an election requirement (see restriction).

-- see MPEP 821.04

renewal

see Section 9 Renewal Application

representation of mark

a clear depiction of the mark an applicant seeks to register. Every application must include a representation of the mark. The USPTO uses representations of marks to file marks in the USPTO search records and to print marks in the Official Gazette (eOG:T) and on registration certificates.

For TEAS applications, if the mark is in standard character form, a separate page depicting the mark is not required. If the mark is special form, (i.e., includes a design or stylized lettering), the applicant must attach a digitized image of the mark in .jpg format to the electronic submission.

For further information about stylized marks see TMEP §807

representative

one who stands for or acts on behalf of another. A patent attorney or patent agent may represent the inventors named in a patent application.

-- see also attorney, agent.

REPS

Re-examination Processing System

Request (PCT)

Form PCT/RO/101, filed with an international application in a receiving Office, which includes an indication of applicant(s) and a designation of one or more Contracting States.

request for extension of time to file a statement of use

Extension Request - a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee per class of goods/services must accompany the Extension Request. (see the current fee schedule at How to Pay Fees to determine the current fee for Code 6004/7004)

The Extension Request, if granted, gives the owner an additional six (6) months to either: (1) use the mark in commerce and file a Statement of Use; or (2) file another Extension Request.

You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the issue date of the Notice of Allowance. The USPTO will not register a mark if, after thirty-six (36) months of the issue date of the Notice of Allowance, a Statement of Use has not been filed.

request to reinstate an application

If an application is abandoned due to a USPTO Office error, an applicant may file a request to reinstate the application, instead of a petition to revive. There is no fee for a request for reinstatement. You must file a request for reinstatement within two months of the issue date of the notice of abandonment. You must include a true copy of the document that was timely submitted, and a copy of an acceptable form of proof of receipt in the USPTO.

-- see TMEP §1712.01 for a list of evidence that may be considered in support of a request for reinstatement

restriction

if two or more independent and distinct inventions are claimed in a single application, the examiner may require the applicant to elect (designate) a single invention to which the claims will be restricted (limited to). This requirement is known as a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action (final rejection). (-- see 37 CFR § 1.141 and § 1.142)

RO

Receiving Office - the national Office or the intergovernmental organization with which an international application has been filed.

RPO

Recovery Point Objective

RTO

Recovery Time Objective

RUP

Rational Unified Process

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S

S&T

science and technology

SAFE

Secure Application Filed Electronically

SAN

Storage Area Network

SB

"SB" is used today as part of the label in our form designations (e.g., PTO/SB/05 ). The origin of this notation is a Specimen Book (no longer in use) that included all of the forms.

scope

what is included - as in the scope of a claim

SCORE

Supplemental Complex Repository for Examiners

SCP

Standing Committee on the Law of Patents

SDM

System Development Manager

search

After a trademark application is filed, the USPTO will conduct a search of USPTO records for conflicting marks as part of the official examination process. The official search is not done for the applicant but rather to determine whether the mark applied for can be registered. The USPTO advises applicants and/or their representatives to search the records before filing the application. A search may be conducted through TESS, or by visiting the Trademark Public Search Library, between 8:00 a.m. and 8:00 p.m. at Madison East, 1st Floor, 600 Dulany Street, Alexandria, VA 22313. Use of the Public Search Library is free to the public. Also, certain information may be searched at a Patent and Trademark Depository Library. These libraries have CD-ROMS containing the database of registered and pending marks, and Internet access to the Trademark Electronic Search System (TESS). (However, the CD-ROMS do not contain images of the design marks.)

-- locate your nearest PTRC

search copy

copy of an international application filed under the Patent Cooperation Treaty maintained by the International Searching Authority.

SEAS

Secure Environment Access Solution

Section 15 Declaration of Incontestability

a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming "incontestable" rights in the mark for the goods/services specified. An "incontestable" registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 15 U.S.C. §1065.

Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed. A §15 Affidavit may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15.

-- see File a §15 Declaration e Biz

Section 8 Declaration of Continued Use

a sworn statement, filed by the owner of a registration that the mark is in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946),
AND
2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.

-- see File a §8 Declaration e Biz

Section 8 Declaration of Excusable Nonuse

a sworn statement, filed by the owner of a registration, that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Section 8 of the Trademark Act, 15 U.S.C. 1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946), AND 2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.

Once the USPTO accepts the Section 8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another Section 8 Declaration until the next statutory filing period.

-- see File a §8 Declaration e Biz

Section 9 Renewal Application

a sworn document, filed by the owner of a registration, to avoid the expiration of a registration. Federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods. Trademark owners have a total of 18 months to file a §9 Renewal Application. The §9 Renewal Application may be filed one year prior to the registration expiration date or during the 6-month grace period immediately after the date of expiration. If the §9 Renewal Application is not filed or is filed after the grace period ends, the registration will expire.

Because the due date of the 10-year §8 Declaration coincides with the due date of the §9 Renewal Application, the USPTO created a form entitled "Combined Declaration of Use in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9"

-- see File a §8 & §9 Combined Declaration e Biz

sequence listing

-- see bio-sequence listing

serial number

a number assigned to a patent application when it is filed. A serial number is usually used together with a two digit series code to distinguish between applications filed at different times.

series code

a two digit code representing a period of time. Application Filing Date - examples: 01/01/1979-12/31/1986 Series 06; 01/01/1987-12/31/1992 Series 07;01/01/1993-12/31/1997 Series 08; 01/01/1998-November 2001 Series 09; December 2001-Present Series 10

service component

a self contained business process or service with predetermined
functionality that may be exposed through a business or technology interface

-- see SCM [PDF] for a more detailed explanation and examples

service mark

a word, name, symbol or device that is to indicate the source of the services and to distinguish them from the services of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are often used to refer to both trademarks and service marks.

SF

a type of form designation such as Form SF51, meaning a Standard Form used throughout the Federal Government

SFFAC

Statements of Federal Financial Accounting Concepts

SFFAS

Statements of Federal Financial Accounting Standards

SIR

a published statutory invention registration contains the specification and drawings of a regularly filed nonprovisional application for a patent without examination if the applicant - (1) meets the requirements of section 112 of this title; (2) has complied with the requirements for printing, as set forth in regulations of the Commissioner; (3) waives the right to receive a patent on the invention within such period as may be prescribed by the Commissioner; and (4) pays application, publication, and other processing fees established by the Commissioner. A request for a statutory invention registration (SIR) may be filed at the time of filing a nonprovisional application for patent, or may be filed later during pendency of the nonprovisional application.

-- see MPEP 1100 for more

SIRA

Search and Information Resources Administration, an organizational unit of the Patent business area.

-- see Patent Resources and Planning for more

SITP

Strategic Information Technology Plan

SM

service mark

small business concern

for purposes of small entity determination per MPEP 509.02 - any business concern meeting the size standards set forth in 13 CFR Part 121 to be eligible for reduced patent fees. Questions related to size standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW, Washington, DC 20416.

-- see MPEP 509.02 for more

small entity

for purposes of small entity determination per MPEP 509.02 - means an independent inventor, a small business concern, or a nonprofit organization eligible for reduced patent fees

-- see MPEP 509.02 for more

SMART

Standards, Mentor, Attempt, Review, Transition -- an informal development program used for USPTO's OCIO employees that identifies standards to work towards and establishes a mentoring relationship between managers and their employees who must meet these standards.

SOU

Statement of Use

specification

a written description of the invention and the manner and process of making and using the same

-- see MPEP 608.01 for more

specimen

a real-world example of how the mark is actually used on goods or in the offer of services.

Labels, tags, or containers for goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8½" x 11", then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens. Facsimiles may not exceed 8½" x 11". One specimen is required for each class of goods or services specified in the trademark application.

Specimens are required in applications based on actual use in commerce, Section 1(a), 15 U.S.C. §1051(a), and must be filed with the Amendment to Allege Use, 15 U.S.C. §1051(c) , or the Statement of Use, 15 U.S.C. §1051(d), in applications based on a bona fide intention to use the mark in commerce, Section 1(b), 15 U.S.C. §1051(b). Specimens are not required for applications based on a foreign application or registration under Section 44 of the Trademark Act, 15 U.S.C. §1126, or for applications based on an extension of protection of an international registration to the United States under Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

SRM

Service Reference Model - also known as a Service Component Reference Model -- a business and performance-driven, functional framework that classifies Service Components with respect to how they support business and/or performance objectives; structured across horizontal and vertical service domains that, independent of the business functions, can provide a leverage-able foundation to support the reuse of applications, application capabilities, components, and business services.

-- see Federal Enterprise Architecture for more

standard character format

An applicant may submit a standard character format representation of a mark if (1) All letters and words in the mark are depicted in Latin characters; (2) all numerals in the mark are depicted in Roman or Arabic numerals; (3) the mark includes only common punctuation or diacritical marks; and (4) the mark does notinclude a design element.

-- see TMEP §§807.03 for more

statement of use

SOU - a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With a statement of use, the owner must submit: (1) a filing fee of $100 per class of goods/services; and (2) one specimen showing use of the mark in commerce for each class of goods/services.

Statements of use must be filed within 6 months from the date the USPTO issues a notice of allowance. Failure to submit the statement of use in a timely manner results in abandonment of the application.

The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed.

-- see File an SOU e Biz

statutory disclaimer

Under 35 USC § 253 (paragraph 1) and 37 CFR 1.321(a), the owner (in part or in entirety) of a patent may relinquish all rights to a complete claim or claims of the owner's patent.

-- see MPEP 1490 and 37 CFR 1.321(a) for more

stylized mark

one type of depiction of the mark sought to be registered. Another name for this type of mark is "special form." If the mark includes a particular style of lettering, or a design or logo, the mark is considered to be stylized or in special form. Therefore, applicants must select the "stylized or special form" mark format when applying for these types of marks. The representation of the mark's page should show a black and white image of the mark, no larger than 3.5 inches by 3.5 inches (8 cm by 8 cm). The mark in special form must be a substantially exact representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.

subsequent designation

A request by the holder of an international trademark registration for an extension of protection of the registration to additional Contracting Parties.

-- see TMEP §1902.08 for more

substantive reasons for refusal

There are several substantive reasons for refusing registration of a mark. These include: likelihood of confusion; primarily merely descriptive or deceptively misdescriptive of the goods/services; primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services; primarily merely a surname; or mere ornamentation. This is not a complete list of all possible grounds of refusal.

-- see TMEP Chapter 1200 for a complete discussion of the grounds for refusal of registration of a mark.

substitute patent application

an application which is in essence a duplicate of a prior (earlier filed) application by the same applicant abandoned before the filing of the substitute (later filed) application; a substitute application does not obtain the benefit of the filing date of the prior application

-- see MPEP 201.09 for more

suggestive mark

a mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services

-- see TMEP 1209.01(a) for more

supplemental register

secondary trademark register for the USPTO. It allows for registration of certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant's goods or services. Marks registered on the Supplemental Register receive protection from conflicting marks and other protections, but are excluded from receiving the advantages of certain sections of the Trademark Act of 1946. The excluded sections are listed in 15 U.S.C. §1094.

If the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register. If no register is specified, the Office will presume that the applicant seeks registration on the Principal Register. To register a mark on the Supplemental Register, applicants must either be using the mark or filing under Trademark Act Section 44 based on a foreign registration.

surcharge due

an additional fee that may be required due to late or insufficient payment of fees

suspension inquiry letter

an Office action inquiring as to the status of the matter that is the basis for suspension of an application. The examining attorney will issue a suspension inquiry letter after an application has been suspended for six months or more, unless the information is available to the examining attorney in the Office's databases. If the applicant does not respond to the suspension inquiry letter, the application will be abandoned.

suspension letter

suspends the action on an application. An application may be suspended for a variety of reasons. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not need to respond to suspension letters.

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T

TARR

Trademark Application and Registration Retrieval system -- see TARR e Biz

USPTO's online database for monitoring federal trademark applications and registrations. Using TARR, applicants, trademark owners and the public may check the status of pending trademark applications and registrations. To access information about a specific mark, users must provide the associated serial number or registration number of the record they seek.

TC

-- see technology center

TD

-- see terminal disclaimer

TDR

Trademark Document Retrieval system -- see TDR e Biz

Online retrieval of documents from the electronic case file for federal trademark applications and registrations. To access information about a specific mark, users must provide the associated serial number,registration number, reference number, or international registration number of the record they seek.

TEAS

Trademark Electronic Application System -- see TEAS e Biz

USPTO's electronic filing system. It may be used to file a variety of documents with the USPTO, including new trademark applications, amendments to allege use, statements of use, responses to Office actions, and changes of address, just to name a few.

Technology Center

(or TC, also referred to as a Group) - a unit of several Group Art Units in the mechanical, electrical, chemical or design area, managed by one or more Group Directors. Formerly referred to as Groups.

term of art

an expression or phrase that has a defined meaning when used in a particular context or knowledge environment (such as the patenting process, pharmaceuticals, computers, etc.)

terminal disclaimer

also "TD": a statement filed by an owner under 35 USC § 253 (paragraph 2) and 37 CFR § 1.321(b) or (c) to disclaim or dedicate to the public the entire term or any portion of the term of a patent or patent to be granted. A TD may be filed for the purpose of overcoming a judicailly created double patenting rejection.

-- see MPEP 1490 and 37 CFR § 1.321 for more

TESS

Trademark Electronic Search System -- see TESS e Biz

USPTO's online database for searching pending, registered and dead federal trademarks. TESS is free and intended for use by the general public. Due to limitations of equipment and bandwidth, TESS is not intended to be a source for bulk downloads of USPTO data. Bulk data may be purchased from USPTO at cost (see the USPTO Products and Services Catalog). Individuals, companies, IP addresses, or blocks of IP addresses who, in effect, deny service to the general public by generating unusually high numbers of daily TESS accesses (searches, pages, or hits), whether generated manually or in an automated fashion, may be denied access to these servers without notice.

TICRS

Trademark Image Capture & Retrieval System

A system used within the USPTO to scan, store and provide access to images of papers associated with trademark registrations.

TIFF

a lossless, archival image file format - a type using G4 compression is used for patent images

-- choose a TIFF viewer from list of all available plug-ins

TIS

Trademark Information System

TLT

Trademark Law Treaty

TMEP

Trademark Manual of Examining Procedure

TPAC

Trademark Public Advisory Committee

TPostal

Trademark Postal System

trade dress

a product's design, product packaging, color, or other distinguishing nonfunctional element of appearance

-- see TMEP 1202.02 for more

trade secret

information that companies keep secret to give them an advantage over their competitors

trademark

protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

-- see TMEP 1202 for more

Trademark Act

Trademark Act of 1946, as Amended (PUBLIC LAW 79-489, CHAPTER 540, APPROVED JULY 5, 1946; 60 STAT. 427)- currently contained in Chapter 22 of Title 15 of the United States Code (USC); the major body of U.S. law that governs federal registration of trademarks

-- see Trademark Rules of Practice and Federal Statutes for links to the applicable sections of Title 15 and a more detailed citation history of the Trademark Act.

Trademark Application and Registration Retrieval

TARR

Trademark Electronic Application System

TEAS

Trademark Electronic Search System

TESS

Trademark Manual of Examining Procedure

TMEP - a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. It contains guidelines for USPTO examining attorneys, trademark applicants and owners, and attorneys and representatives for trademark applicants and owners. The TMEP contains information about the trademark examination process, and outlines the procedures which examining attorneys are required or authorized to follow in the examination of trademark applications.

-- use the TMEP online

Trademark Trial and Appeal Board

TTAB

TRAM

Trademark Reporting And Monitoring - a system used by trademark examiners within USPTO.

transitional phrase

a word or phrase that serves to link or create a relationship between one idea or concept and another.

In the following example, "consisting of" is the transitional phrase between "an item" and "one or more parts":

EXAMPLE: an item consisting of one or more parts.

TRB

Technical Review Board - an internal OCIO group that reviews IT project development at critical stages for conformance with USPTO standards and guidance.

TRIPs

Trade Related Aspects of Intellectual Property

TRM

Technical Reference Model

TSG

Technology Standards and Guidelines

TSS

Technical Support Staff -- USPTO employees who support examination workflow processing

TTAB

Trademark Trial and Appeal Board -- an administrative tribunal at the USPTO. It has jurisdiction over appeals from decisions of the Trademark Office, as well as opposition proceedings and cancellation proceedings

-- see TTABvue e Biz for decisions of the TTAB

TTY

teletypewriter: also known as a TDD (Telecommunications Device for the Deaf)

TW@H

Trademark Work-at-Home - a telecommuting work alternative for Trademark employees

typed mark

term no longer in use

-- see standard character drawing

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U

UDRP

Uniform Domain Name Dispute Resolution Policy

UEA

USPTO Enterprise Architecture

UML

Unified Modeling Language

UPR

Utility, Plant, and Reissue

-- see patent for more

US

United States

use in commerce

For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use.

A "use" based application must include a sworn statement(usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.

use-based application

There are 4 filing bases on which an application may be based. One filing basis is use of the mark in commerce (the other three are filing based on anintent-to-use the mark in commerce, filing based on a pending foreign application, and filing based on a foreign registration). Applicants who file based on use in commerce must be using the mark they wish to register with the goods or services in the application prior to or at the time of filing the application.

To base the application on the applicant's use of the mark in commerce, the applicant must submit the following four items: (1) A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date; (2) The date of the applicant's first use of the mark anywhere on or in connection with the goods or services; (3) The date of the applicant's first use of the mark in commerce as a trademark or service mark; and (4) One specimen for each class showing how the applicant actually uses the mark in commerce. If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date. These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

USPTO

United States Patent and Trademark Office, designation became effective April 3, 2000; a result of the American Inventors Protection Act of 1999

utility patent

may be granted to anyone who invents or discovers any new, useful, and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

-- see also patent

utility patent application

protect useful processes, machines, articles of manufacture, and compositions of matter.

-- see also application (patent)

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W

WCT

WIPO Copyright Treaty

window close

time period after which a utility patent (that issues from an application filed on or after 12 December 1980) expires if a maintenance fee has not been paid. A petition must be filed along with the appropriate fees to reinstate an expired patent.

-- see MPEP 2590

window open

time period when a maintenance fee can be paid with or without a surcharge.

-- see MPEP 2506

WINS

Windows Internet Naming Service

WIPO

World Intellectual Property Organization

an intergovernmental organization of the United Nations system. WIPO is responsible for the promotion of the protection of intellectual property throughout the world and for the administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property.

-- see MORE INFO about International Intellectual Property protection

withdrawn claim

a non-elected claim

"Withdrawn" is the status identifier that should be used for claims that were not elected (chosen by the applicant to remain under consideration) in response to a restriction requirement.

-- see MPEP 803.01, 803.02 and 803.03

Further, an appellant (one who is appealing an examiner's final rejection to the Board of Patent Appeals and Interferences) may withdraw some of the appealed claims, resulting in cancellation of the withdrawn claims

-- see MPEP 1214.05

withdrawn patent

an allowed application for patent in which the applicant files correspondence to withdraw the patent from issue; ;thus preventing it from issuing on the patent issue date. The printed document is sometimes available on the day of publication, but is later retracted and will not be available in the patent database. No copy of the patent document will appear on the official USPTO web site.

-- see 37 CFR 1.313 and 1.114 for more

word mark

a type of trademark comprised of text

workflow

the "flow of work"

Workflow diagrams are a formal way to identify procedural steps and the logic employed in a process used to complete a task or job. Workflow diagrams include each interim step and product(s); the direction of movement through the process (indicated by arrows); decision points, alternative processes and repeated steps, and dependencies (steps or processes that must be completed before, during or after completion of a particular step); and can include the estimated time required for each step, who performs or reviews each step, and resource requirements. Depending on the type of workflowdiagramming method used, the start and end points of each interim step may be listed separately or the entire process step can be indicated by a single notation.

workflow incoming amendment IFW

from Public PAIR/IFW - designates the point in time when an amendment is received in the Office and the paper scanning process may be started at the USPTO; does not indicate whether scanning has actually started.

WPPT

WIPO Performances and Phonograms Treaty

WTO

World Trade Organization

-- see MORE INFO about International Intellectual Property protection

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X

X patent

In the 46 years prior to the Great Fire of 1836, the United States government had issued about 10,000 patents. Most of these could never be revived again, but Congress acted to restore those records that could be reconstructed from private files and reproduce models which were deemed critical. Patents whose records were not restored were cancelled. There were a total of 2,845 patents restored, most of which were eventually given a number beginning with "X". All patents after the date of the establishment of the Patent Office in July 1836 were numbered as a new series (without the X), beginning with a new Patent No. 1 to John Ruggles. A small number of the new series patents had been destroyed in the Great Fire but they were quickly recovered from their owners' records. X files bear numbers that range from X000001 to X011280. X0000001 is the first patent, issued to Samuel Hopkins in 1790.

XML

eXtensible Markup Language - a subset of SGML, or standard generalized markup language; a structured language that facilitates the standardized representation of format and representation and organization of data in an automated environment, such as the use of a browser on a webpage.

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  • Contact Us

  • Commissioner for Patents
    Local: 571-272-8800
    Fax: 571-273-0125
  • Commissioner for Trademarks
    Local: 571-272-8901
    Fax: 571-273-0029