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

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

Automated Biotechnology Sequence Search

See PSIPS to access sequence searching online

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

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

(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

American Inventors Protection Act of 1999

-- see MORE

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

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

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.

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

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

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

a transfer of ownership of a patent application or patent from one entity to another. Record all assignments with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.

-- read more about Patent Assignments
-- see Assign a Patent Application or Patent
-- see Search Patent Assignments online

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
-- see Search Trademark Assignments online

(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

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

p

Boolean logic (named for the British-born Irish mathematician George Boole) is way to express relationships in logic arguments using the following three operators: "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

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

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

g

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 Mark

Combined Federal Campaign

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

Code of Federal Regulations

-- see MORE INFO

Chapter I

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

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

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

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

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.

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

(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

(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

-- see MPEP 503 for more

Conference on Fair Use

-- see National Information Infrastructure Report on Intellectual Property Rights for more

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

-- see MPEP 2111.03 for more

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

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

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.

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

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.

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.

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

(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

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.

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

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.

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 accounts

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

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

-- see Design Search Code Manual

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 patent

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

-- see also 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

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

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

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

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.

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

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

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

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

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

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

Electronic Filing System (for patent applications)

supports secure electronic filing of Patent application documents via the Internet

Electronic Filing System - web-based filing using PDF files

See About EFS-Web for more

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

Electronic Patent Assignment System

-- see ePAS

Examination Support Document

-- see Guidelines for Examination Support Document (ESD) under § 1.265 [PDF]

Electronic Trademark Assignment System

-- see eTAS

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

-- 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

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 abandonment of 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

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

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

-- see Trademarks express mail for specific guidance

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

Federal Enterprise Architecture

-- see Federal Enterprise Architecture for more

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

-- see How to Pay Fees

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."

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.

-- seeTMEP §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.

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

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 a final 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

Freedom of Information Act

-- see Electronic Freedom of Information Act for more

Federal Register

-- see News & Notices for links

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.

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

Geographical Indications

-- see MORE

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

(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

Inventors Assistance Center (formerly Patent Assistance Center).

1-800-786-9199

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