Accused Product, System or Process – The product, system or process that the patent owner believes infringes the claims of her patent.
Affirmative Defense – A type of legal defense that can negate liability for infringement. In patent law, affirmative defenses include invalidity, inequitable conduct, and patent misuse. For example, even if the patent owner proves infringement by the accused product, system or process, the defendant can avoid paying damages if he can prove the affirmative defense that the infringed claims are invalid.
Answer – A formal written response by the defendant in a civil case that responds to a Complaint and sets forth the grounds for defense.
Assignee – A type of patent owner, who has had ownership transferred to her from a previous owner such as the inventor.
Assignment – A document that is used to transfer ownership of a patent.
Claim - The legal definition of a patented invention. It is a written definition of the legally enforceable boundaries of the claimed invention, and determines what the inventor can exclude others from making, using, selling or importing into the United States.
Claimed Invention – The invention defined in the claims.
Complaint – A written statement that begins a civil lawsuit, in which the person starting the lawsuit (the “plaintiff”) details the wrongs allegedly committed by another person (the “defendant”).
Covered Business Method (CBM) - A covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service except that the term does not include patents for technological inventions. More information is available at http://www.uspto.gov/aia_implementation/faqs_covered_business_method.jsp.
Damages – Damages are the monetary penalty that the defendant must pay a plaintiff in a civil case if the plaintiff has won. Damages may be compensatory (for loss or injury) or punitive (to punish and deter future misconduct). For example, if a defendant is found to infringe a patent claim, and has not proven an affirmative defense, she will be liable for damages to the plaintiff.
Declaratory Judgment – A ruling by a judge about a legal issue. For example, a person who may be accused of infringing a patent claim can file a lawsuit asking for a declaratory judgment that the patent claims are not infringed, or that one or more of the patent claims are invalid.
Default Judgment – A judgment made against a defendant, because the defendant has failed to appear in court or to properly respond to a complaint. A default judgment typically awards the plaintiff the relief sought in the complaint.
Demand Letter – A written request by a patent owner to a person who is accused of infringing a patent, which is not filed in court. A demand letter may order or request the accused infringer to stop infringing the claims, and/or may offer a license.
File Wrapper – The application file for the patent, which contains a complete record of proceedings in the USPTO from the filing of the initial patent application to the issued patent. Also called the prosecution history.
Grant (Patent Grant) – After an application has been examined and found to comply with all of the patent laws, a patent is granted (or issued) to the applicant. This is also referred to as Issuing a Patent.
Infringe (Infringing, Infringement) – The making, using, offering to sell, selling, or importing into the United States of any patented invention, without the permission of the patent owner.
Intellectual Property – The term intellectual property refers to 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.
Inter Partes Review – This is a formal request made to the USPTO to reconsider a Patent Grant. It can be filed during the term of the patent with certain exceptions. More information is available at http://www.uspto.gov/aia_implementation/faqs_inter_partes_review.jsp. See also Post Grant review.
Invalidity – After the grant or issuance of a patent, the claims of the patent are presumed in court to be valid (in compliance with all of the patent laws). During a lawsuit, a judge or jury may determine that the presumption is overcome by the evidence presented by a defendant and that a particular claim or claims are “invalid” because they do not comply with the patent statutes. Thus the claims would be found by that court to be “invalid”. See also Validity.
Issue (Issuance) - After an application has been examined and found to comply with all of the patent laws, a patent is issued to the applicant. This is also referred to as a Patent Grant.
Liable (Liability) – After a defendant has been found to infringe a patent claim, the defendant is legally responsible (liable) to the plaintiff for damages unless she can prove an affirmative defense.
License – An agreement made with the patent owner for permission to make, use, offer to sell, sell or import the patented invention, usually based upon payment of a fee.
Litigation – A case, controversy, or lawsuit. For example, a lawsuit started by a plaintiff against a defendant based on a complaint that the defendant infringed the plaintiff’s patent.
Mediation – An informal type of dispute resolution in which a third party (mediator) helps two parties come to an agreement.
Nonobvious or Nonobviousness - This is a highly technical legal term that is defined by the patent laws. A patent claim is not “obvious” if it is different enough from the Prior Art such that a person skilled in that technology would find that the invention provides a new contribution to society’s knowledge. Please note that other factors exist in making the patentability determination. See also Obvious.
Novelty - Is a highly technical legal term that is defined by the patent laws. Novelty means that the claimed invention must not be identical to any inventions that were described in the Prior Art before the applicant’s date of invention.
Obvious or Obviousness – Is a highly technical legal term that is defined by the patent laws. A patent claim is “obvious” if it is similar enough to the Prior Art such that a person skilled in that technology would find that it is not a new contribution to society’s knowledge. See also Nonobvious.
PACER – Stands for Public Access to Court Electronic Records, which is a database run by the United States Courts. The public can access electronic records that are maintained by the federal district, appellate and bankruptcy courts through PACER.
Patent - A patent is 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.
Patent Agent – A registered professional with certain technical and legal qualifications specifically relating to patent law, who is permitted to represent other people before the USPTO with respect to their patents and patent applications. An agent is not an attorney.
Patent Attorney - A registered professional with certain technical and legal qualifications, who is also an attorney. Patent attorneys are permitted to represent other people before the USPTO with respect to their patents and patent applications, and are also permitted to represent other people in the federal courts with respect to lawsuits.
Patent Owner – Is the person or persons that have the property rights to the patent.
Patent Term – The life time of the patent. For applications filed on or after June 8, 1995, utility and plant patents are granted for a term which begins with the date of the grant and usually ends 20 years from the filing date of the application.
Post Grant Review - This is a formal request made to the USPTO to reconsider a Patent Grant. It can only be filed during the first 9 months of the Patent Grant. More information is available at http://www.uspto.gov/aia_implementation/faqs_post_grant_review.jsp.
Pre-Trial Motion – A written request made to the court before the trial begins, which attempts to have a limited issue heard by the court. For example, a defendant may file a pre-trial motion requesting the court to rule only on invalidity of certain patent claims.
Prior Art – Prior art consists of the references (books, articles, web pages and other information) that are publicly available before the date that the application was filed.
Prosecution History - The application file for the patent. Also call the file wrapper.
PTRC - A Patent and Trademark Resource Center (PTRC) is a library designated by the U.S. Patent and Trademark Office (USPTO) to receive and house copies of U.S. patents and patent and trademark materials, to make them freely available to the public, and to actively disseminate patent and trademark information.
Redact – To remove or blackout certain portions of a document.
Reexamination - This is a formal request made to the USPTO to reconsider a Patent Grant. It is conducted by the USPTO after the grant of a patent, based on prior art patents or printed publications. Reexaminations may be requested by the patent owner or by another person
Service – The act of presenting the Summons to the defendant.
Settlement – An agreement made between two parties to avoid litigation, or to resolve a lawsuit prior to a decision by the judge or jury.
Specification – The part of a patent that provides a detailed description of the invention.
Subject Matter – Subject or issue that is being considered. It may also means technical knowledge.
Summons – A document that a plaintiff in a lawsuit files with a court and serves on the defendant along with a copy of the complaint. The purpose of the summons is to give the defendant notice of the lawsuit.
Unenforceable – A patent is unenforceable (cannot be used for the basis of a lawsuit) if the patent owner has taken some action that is considered to be in bad faith. For example, if the patent owner lied to the USPTO in order to have his patent issued, those lies may be grounds for the patent to be held unenforceable.
Useful – A claimed invention must have “utility”, which is a legal term that is defined in the patent laws. An invention that lacks a practical purpose or that will not work, such as a perpetual motion machine, is not useful and cannot be patented.
USPTO – The United States Patent and Trademark Office.
Validity - A determination made by a court that the claims of a patent comply with the patent statutes. See also Invalidity.
Willful Infringement – deliberately infringing a Claimed Invention with the knowledge that the invention is patented. While it is not mandatory, if Willful Infringement is found, a court may impose increased monetary damages if other factors are shown.
Written Description – The patent laws require that the patent provide an adequate written description of the claimed invention. Typically this written description is found in the specification, which explains the applicant’s invention and its features, and may also provide examples or an explanation of how the invention relates to the Prior Art.
Note: The definitions provided are for the use in understanding the contents of these web pages. Legal concepts have been simplified to make the terms more accessible.