Our glossary of intellectual property terms contain definitions and explanations of patents, trademarks, copyrights and related concepts. You are free to use these in your own writings and publications but please attribute to Smith & Hopen, PA with a link to this page. For example:

Glossary of Intellectual Property Terms, Smith & Hopen PA.  Retrieved Sept. 14, 2020. 
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  • Abstract - The abstract is a required element of any patent application and is a concise statement of less than 150 words. The abstract communicates to the public what the invention is and should not be used to disclosure specific, technical details of your invention. Rather, the abstract should permit a reader to determine if your patent …
  • Actual Filing Date - The patent filing date is the date you applied to the United States Patent and Trademark Office (USPTO) for your invention. It is the actual date to which you filed or submitted your application. This date may or may not be your effective filing date, depending on if you claimed priority to another application.
  • After Final Consideration Pilot
  • Amazon Brand Registry Program - Amazon’s Brand Registry program is a powerful tool that is available to owners of registered trademarks. The Brand Registry provides unique control over brands by providing search tools to search various Amazon stores along with automated tools that monitor and proactively remove infringing and inaccurate content. Users of Amazon’s Brand Registry have access to an …
  • Amazon's Utility Patent Neutral Evaluation Procedure - To take advantage of the procedure, the patent owner files an Amazon Utility Patent Neutral Evaluation Agreement (the Agreement). The Agreement includes the Amazon Standard Identification Number (ASIN) of the product in question. Amazon then sends the Agreement to sellers offering the product under the supplied ASIN. Once the seller receives the Agreement, the seller …
  • Amendment (patents)
  • Amendment to Allege Use - An amendment to allege use is a sworn statement stating that your trademark is currently used in commerce in connection with the goods and/or services applied for in your trademark application. The amendment to allege use is filed before the publication of your trademark and, at minimum, must include: The applicable government fee(s); A specimen …
  • Annuity Fees - Annuity fees, also referred to as “annuities,” are government fees that patent applicants and patent holders must pay each year to maintain their patent rights. Many foreign jurisdictions impose annuity fees, including the countries of the European Union. Domestically, the United States Patent and Trademark Office (USPTO) does not require annuity fees for pending patent …
  • Anti-Trafficking in Trademarks - Lanham Act § 10(a)(1), 15 U.S.C.A. § 1060(a)(1), provides that an intent to use (ITU) federal trademark application cannot be assigned before the applicant files a verified statement of use, unless that part of the “business” connected with the mark is also transferred. The “business” must be “ongoing and existing.” The purpose of this limitation …
  • Anticipation - One of the most common reasons for rejection of the claims of a patent application. The examiner in charge of the application will reject a claim on the grounds of anticipation, citing 35 U.S.C. 102(a). This means that, in the opinion of the examiner, a prior art reference shows each and every element of the …
  • Assignment of Copyright - Transfer of ownership in a copyright must generally be done in writing.  However, there is an exception when the transfer occurs “by operation of law” which may include transfers occurring as a result of a merger.  Universal Furniture International, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010).
  • Attorney-Client Privilege - All communications between a lawyer and a client are automatically privileged (confidential). The privilege extends to all members of the attorney’s law firm, including staff members. Therefore, if a client’s spouse, friend, relative, or the like calls an attorney and requests a status report on a case, or seeks some other information about a prospective, …
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  • Best Mode Requirement - The first paragraph of 35 U.S.C. 112 states: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is …
  • Blackout Period - The blackout or “black period” for intent-to-use trademarks arises during the period between when the application is approved for publication and when the notice of allowance is issued. During this period, Applicants are not allowed to submit an amendment to allege use or a statement of use. If you find yourself within this blackout period, …
  • Branding - Branding is the affixing of a trademark onto a product or service. For example, Smith & Hopen has federal, incontestable trademark registrations for SMITH & HOPEN (word mark) and a logo design. Affixing them to our website pages and in association with our services serves as specimens of continued and exclusive use. Think of how …
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  • Cancellation Proceeding - After registration, and even after becoming incontestable, a third-party can file a petition to cancel a trademark. Grounds for cancellation include the mark becoming generic; abandonment (or non-use) of the mark; that the mark is geographically deceptive; prior use by another party; and that the mark was obtained by fraud. However, incontestable trademarks are immune …
  • Cease and Desist Letter (video) - A letter written by a patent owner to an accused infringer. The letter directs the accused infringer to stop making, using, selling, or offering to sell the patented invention. The letter may include an offer of a license under the patent. However, the patent owner is under no affirmative obligation to offer a license. Strategies …
  • Certification Mark - A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work …
  • Claim - The patent claim or claims must particularly point out and distinctly claim the subject matter which is regarded as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the choice of wording of the claims. The claims of a …
  • Claim Chart - A claim chart includes a re-writing of an independent claim so that each element of the claim is separated from the other elements for analysis purposes. If an individual claim element is found in an accused device, a “Yes” is placed next to that element. If the individual claim element is not found in the …
  • Code of Federal Regulations - C.F.R. is an abbreviation for the Code of Federal Regulations. Whereas the U.S.C. contains the federal statutes promulgated by Congress, the C.F.R. contains the federal regulations promulgated by the Patent and Trademark Office that provide the details omitted from the statutes. For example, 35 U.S.C. 121 broadly authorizes the Commissioner of the PTO to require …
  • Collective Mark - A collective mark is 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 which indicates membership in a union, an association, or other organization. A collective mark is used by all members of the …
  • Common Law Trademark - Federal registration is not absolutely required to establish rights in a trademark. Common law rights arise from actual use of a mark but are limited geographically. Relying on common law rights may result to being “boxed” in by trademark owners with national rights. Generally, the first to either use a mark in interstate commerce or …
  • Compilations - A “compilation” is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term “compilation” includes collective works.  Title 17 U.S.C. Section 101. In Universal Furniture International, Inc. v. …
  • Composition of Matter - Composition of matter patent claims list the chemical ingredients (compounds, elements or radicals) making up the composition or compound. The ingredients or elements may be claimed narrowly (specific named components), with intermediate scope (a group of similar elements functionally equivalent), or broadly as to function performed, where the prior art permits. The Manual of Patent …
  • Conception of Invention - An invention is conceived when a definite and permanent idea of an operative invention is known. Conception under patent law is complete when one of ordinary skill in the art could make the invention without undue research or experimentation. Prior to the Leahy–Smith America Invents Act (AIA), the second person to file a patent application disclosing …
  • Concurrent Use Application - At times, two trademark owners use the same trademark in commerce. Typically, the owners lack awareness of each other. In a concurrent use application, an applicant requests a registration of a mark that another trademark owner also uses. The concurrent use application prompts action from a court, such as the Trademark Trial and Appeal Board …
  • Concurrent Use Proceeding - At times, two different entities will simultaneously use the same mark in commerce. Typically, each entity adopts the marks without knowledge of the other party. Particularly when the entities exist in different geographic areas, little likelihood of confusion exists between such entities. As such, concurrent use exists between the entities. In such a situation, one …
  • Consent Agreement - A consent agreement is a trademark use agreement between two parties. In the agreement, a trademark owner consents to the registration or use of the other party’s trademark. As such, two similar marks can coexist with the consent of the parties. In addition, the consent agreement typically requires the final approval of a trademark examiner.
  • Continuation - Continuation patent applications have the same specification but frequently have different claim scope. This may be to broaden or modify what the continuation patent covers. Because the “child” continuation claims priority to the “parent” application that is about to issue their patent terms are “coterminous.” Accordingly, continuations do not “extend” the patent term. 
  • Continuation in Part - When an invention is improved after a patent application disclosing the invention has been filed, a new patent application, known as a Continuation-In-Part, and abbreviated as CIP, is filed to include the improvement. Prior art that arose after the filing date of the original patent application but not after the filing date of the CIP …
  • Continuation Patent Application — Advantages - The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have …
  • Contributory Infringement - Contributory patent infringement is enumerated in 35 U.S.C. 271(c) which requires: a.  Direct infringement by anotherb.  Knowledge of patentc.  Knowledge that component design for infringementd.  Component material part of patented producte.  Component not a staple article
  • Copyright Definition - Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or …
  • Copyright Deposit - In the United States, most well-informed content creators deposit their works with the U.S. Copyright Office within three (3) months of publication.  Under the Copyright Statute, works federally registered within three months of publication or before actual infringements are able to recover (in addition to lost profits and an injunction): Court costs; Attorney fees; and …
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  • Deceptive Trademarks - Deceptive misdecriptive trademarks suggest a component, ingredient or objective that would mislead consumers. For example, an ice cream branded VANILLA SNOW but flavored chocolate might be deemed deceptive. Misdescriptive marks are not “deceptively misdescriptive” unless there is some element of deception. Thus, if VANILLA SNOW was used for a paint primer there would be no …
  • Declaratory Judgment Lawsuit - A lawsuit that asks a court to answer a question. In a patent context, the court is asked whether or not a certain activity constitutes patent infringement. The action is commenced by an accused infringer in its local federal court so that the accuser (the patent owner) must travel to the infringer’s location to try …
  • Deferred Patent Prosecution - Deferred examination exists in the U.S. under 37 CFR 1.103(d) (up to three years) but there are no advantages regarding fees and there is a forfeiture of patent term/adjustment. The only advantage is delayed prosecution expenditures. If you want to slow down an application’s prosecution we can file a petition before a first office action …
  • Dependent Claim - A dependent claim is a claim presented in a patent or patent application filed with the USPTO that refers back to and further limits one or more of the proceeding claims. If a dependent claim broadens the scope of the claim from which it depends, it is considered an improper dependent claim and will result …
  • Design Patent - A design patent is directed to an ornamental design for an article of manufacture. A design may consist of surface ornamentation, ornamental configuration of combination thereof. Design patents can also cover computer displays and icons which are non-functional.  Design patents filed on or after Dec. 18, 2013 have a 15 year term from issuance. Utility …
  • Design Patent Accelerated Examination - The U.S. Patent & Trademark Office typically processes design patents in about 12 months.  However, a petition to accelerate the examination may be paid with a fee (currently $900 as of January 11, 2020) (USPTO fee schedule).  The petition must also include a prior art search.  The petition ( Request for expedited examination of a design application) usually reduces …
  • Divisional Patent Application - If two or more independent and distinct inventions are claimed in one patent application, the Commissioner of the USPTO may require the application to be restricted to one of the inventions. The inventor elects to prosecute one of the two inventions, and the unelected invention is abandoned and becomes a part of the public domain …
  • Domain Name Dispute Resolution - All registrars must follow the the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”). Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name. Controversies alleged to arise from abusive registrations of domain names (for example, …
  • Domestic Representative - A trademark applicant or registration not domiciled in the United States may file a document designating the name and address of a domestic representative on whom may be served notices or process in proceedings affecting the mark.  This is different from a power of attorney and the domestic representative does not automatically have authority to …
  • Double Patenting - Double patenting is a judicially created doctrine intended to prevent improper timewise extension of a patent right by prohibiting the issuance of claims in a second patent that are not “patentably distinct” from the claims of a first patent. The doctrine prohibits claims in a second patent that are merely an obvious variation of the …
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  • Effective Filing Date - An effective filing date of a patent application is sometimes different than the actual filing date of the patent application. The effective filing date may be earlier than the actual filing date if an application claims “priority” to a previously filed and co-pending patent application. For example, a continuation application that claims priority to a …
  • Enablement - The specification in a patent application must describe the invention in a manner that would enable one with ordinary skill in the art to make and use the invention without an undue amount of experimentation.
  • Ensnarement Defense - A defense against the Doctrine of Equivalents in patent litigation is the “ensnarement defense.” This defense puts forth the argument that the asserted scope of the equivalency would encompass, or ensnare, the prior art.
  • Estoppel in Patent Law - “Estoppel” in patent law is a legal term meaning that a second argument is barred if it is inconsistent with a first argument. In a patent context, it bars an inventor from admitting something to the Patent and Trademark Office and later contradicting that admission, whether before the PTO or before a court. See Prosecution …
  • Ex Parte Appeal - An ex parte appeal is an alternative to continuing prosecution before the Examiner. It is the consideration of the application “as is” and does not permit the Applicant to make substantive amendments. Since the PTAB does not issue a patent, an ex parte appeal simply reviews an Examiners decisions in a pending patent application. During …
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  • Fair Use of Copyright - Fair use is an often-cited defense to copyright infringement. One of the rights accorded to the owner of copyright is the right to reproduce or to authorize others to reproduce the work in copies or phonorecords. This right is subject to certain limitations found in sections 107 through 118 of the copyright law (title 17, …
  • False Advertising - For a false advertising claim under Section 43(a) of the Lanham Act, 15 USC Sec. 1125(a), the movant must establish: the ads of the opposing party were false or misleading; the ads decieved, or had the capacity to deceive consumers; the deception had a material effect on purchasing decisions; the misrepresented product or service affects …
  • False Marking of Patent - False marking of patents is covered in 35 U.S.C. 292 which provides that whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United …
  • Famous Trademarks under Federal Law - Under Lanham Act § 43(c), 15 U.S.C.A. § 1125(c), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may …
  • Famous Trademarks under Florida Law - Florida Statute 495.151 provides a court may consider the following factors to determine if a trademark is famous under Florida law. These factors include, but are not limited to: degree of inherent or acquired distinctiveness of the mark in Florida; duration and extent of use; advertising and publicity in Florida; geographic area in which mark …
  • Fanciful Trademark - Fanciful trademarks are newly coined marks that have no meaning in any language and do not describe the goods/or services applied for. In essence, fanciful trademarks are created to function solely as a trademark. Because fanciful trademarks are not descriptive or generic, they are afforded stronger trademark protection and are typically easier to get allowed. …
  • Federal Circuit - Article III of the Constitution established the United States Court of Appeals for the Federal Circuit on October 1, 1982. The merger of the United States Court of Customs and Patent Appeals and the appellate division of the United States Court of Claims formed the court. The court is located in the Howard T. Markey …
  • Federal Trademark Registration - A federal trademark registration is a form of intellectual property protection granted by the federal government. Having a federal trademark registration gives you the exclusive right to use the registration in association with one or more classes of goods and/or services. In its most basic form, a trademark is generally a word, phrase, symbol, or …
  • Filing Basis for Trademarks - The filing basis is the legal basis for filing a trademark application that must be specified in a trademark application. While the filing basis does not have to be specified for the trademark application to receive a filing date, an examining attorney will require the applicant in the first Office Action to asset a filing …
  • First Action Interview Program - Under the First Action Interview Pilot Program, an applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits. The examiner will conduct a prior art search and provide applicant with a condensed pre-interview communication citing relevant prior art and identifying proposed rejections or objections.  Within 30 …
  • Formal Patent Drawings - Drawings suitable for publication in a patent, known as formal drawings, can be filed any time after the filing of the patent application including any time within three months of the Notice of Allowance. The only rule is that no new matter can be injected into the drawings when they are placed into formal condition …
  • Functional Patent Claim - A claim term is functional when it recites a feature by what it does rather than by what it is.  Functional claiming are often viewed with care by patent examiners who are cautioned when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the …
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  • Generic Misspellings - An otherwise generic term that is misspelled typically is incapable of trademark registration.  Some examples include: AL-KOL for alcohol; GLUE STIK for glue sticks; LITE for “light” beer; SAFE T PLUG for “safety plug”; and URGICARE for “urgent care.” However, an exception exists if the misspelling is not obvious.  For example, MUFFUNS for muffins was held to be acceptable for registration (i.e., …
  • Generic Terms (Trademarks) - Generic terms communicate directly to the consumer what the product or service is that is being offered. In essence, generic terms are refused registration on both the primary register and the supplemental register by the United States Patent and Trademark Office for being “the ultimate in descriptiveness” are cannot acquire descriptiveness. An example of a …
  • Group Art Unit - A group art unit is a group of patent examiners at the U.S. Patent and Trademark Office working under the direction of a supervisory patent examiner. A four-digit number identifies the group, and each examiner within the group is responsible for determining the patentability of a specific subset of applications having a common inventive field. …
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  • Incontestable Trademark - Under 15 U.S.C. § 1065, a trademark owner can file a Section 15 declaration for incontestability of their trademark. The declaration states that the trademark has been in use for at least five years after registration. An owner must file a Section 15 declaration within one year of a window in which the owner used …
  • Indirect Infringement - Codified in the Patent Act Under 35 U.S.C. 271(b) (inducement of infringement), indirect liability for patent infringement frequently occurs when a defendant makes and sells an article that is “capable” of infringing the patent and the article is accompanied by instructions on how to use the device in a manner that would infringe the method.  See Moleculon Research …
  • Inequitable Conduct - Patent attorneys, inventors and anyone else substantively involved in the prosecution of a patent application owe a duty of candor to the U.S. Patent & Trademark Office (PTO).  Inequitable conduct may lead to a judgment that the patent is “unenforceable.” The Federal Circuit in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d at 1357, 1365 …
  • Information Disclosure Statement - The U.S. Patent and Trademark Office cannot be aware of all prior art in a particular field of technology at the time a patent application is filed in that field. Therefore, the patent applicant is required to file an Information Disclosure Statement when the patent application is filed, or shortly thereafter, that discloses the prior …
  • Intellectual Property Definition - The term “intellectual property” is a generic expression referring to patents, trademarks, copyrights, trade secrets, trade dress, and any other tangible personal property that is created through the intellectual efforts of its creator or creators.
  • Intent to Use - There are two primary types of federal trademark filings: (1) in-use; and (2) intent-to-use (ITU). For an in-use application, we file the following items: Declaration by Applicant; Filing fee; and Specimen showing the mark already used in commerce. For trademarks already in use, common law rights already exist as to the geographic territory of use. …
  • Inter Partes Review - An an inter partes review (IPR) is a trial proceeding at the Patent Trial and Appeal Board. The IPR reviews the patentability of one or more claims of an issued patent. Who may petition for IPR? The challenging party (Petitioner) may be any third party. The Petitioner cannot be the patent owner. On what grounds …
  • Interference Proceedings in Patents - Occasionally two or more applications are filed by different inventors claiming substantially the same patentable invention. The patent can only be granted to one of them, and a proceeding known as an “interference” is instituted by the Office to determine who is the first inventor and entitled to the patent. About one percent of the …
  • International Class (IC) - The United States Patent and Trademark Office (USPTO) currently has 45 different international classes in which goods and/or services may be classified into. Specifically, classes 1 – 34 are reserved for goods, while classes 35 – 45 are reserved for services. When an applicant first files a trademark application in the USPTO, whether the application …
  • Interstate commerce - For a trademark to be registered at the federal or national level, it must be used in “interstate commerce.” For goods, “Interstate commerce” involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” involves offering a service to those in another …
  • Invention Definition - An invention is a new and useful machine, article of manufacture, composition of matter, process, or any new use of the same that is described and/or claimed in a patent or patent application.
  • Inventor's Notebook - An Inventor’s Notebook is a record kept by an inventor that is witnessed by others. The purpose of an inventor’s notebook is to help an inventor prove the date of conception of an invention and diligence in pursuing the invention after conception. The witness should have no financial interest in the invention or other bias …
  • Inventor-Mechanic Agreement - An inventor-mechanic agreement is a written agreement between an inventor and a tool maker, a software writer, a mold maker, a circuit designer, or the like whereby the parties agree before beginning work on a project that the inventor has made an invention and that the tool maker or other helper will help the inventor …
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  • Joint Inventor (Patents) - When two or more persons make an invention, they are considered by the United States Patent and Trademark Office (USPTO) to be joint inventors. Inventors may still be considered joint inventors even though they did not physically work together, work at the same time, did not make the same level of contribution to the claims, …
  • Junior Registrant - A junior registrant is a junior user of a trademark who registers the trademark prior to the senior user. Even though the senior user has priority to the trademark, the junior user obtains trademark rights. By becoming the first party to register the mark, the junior registrant can restrict the senior user’s mark usage. For …
  • Junior User - A junior user of a trademark is a person or entity who used the mark after a senior user. The junior user can potentially obtain trademark rights by filing a trademark application prior to the senior user. As such, the junior user becomes a junior registrant.
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  • Knock-out reference - A knock-out reference is a slang term for a prior art reference that is so identical to an invention for which patent protection is sought as to render futile all further pursuit of the patent. If there is a knock-out reference that will prevent the patenting of an invention, a patentability search should find it …
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  • Laches - Laches is a defense sometimes asserted in IP litigation which requires defendant to show: (1) a delay in asserting a right or claim; (2) that the delay was not excusable; and (3) that the delay caused the defendant undue prejudice.  For patents the statutory period for latches is 6 years.   Accordingly, some patents are litigated …
  • License - A license is simply a promise not to sue. In the context of intellectual property law, licenses are usually granted in exchange for royalty payments or as a settlement to a counter-suit for infringement.
  • License Definition - A license is simply a promise not to sue. In the context of intellectual property law, licenses are usually granted in exchange for royalty payments or as a settlement to a countersuit for infringement.
  • Likelihood of Confusion - A likelihood of confusion between two trademarks exists when a consumer is likely to cause consumer confusion between different sources. A likelihood of confusion is a main factor for determining trademark infringement, as well as trademark registrations through the USPTO. For infringement, each circuit court has a factor-based test to determine a likelihood of confusion. …
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  • Markush Group - A Markush group is a claim drafting tool used to capture various alternative elements or species in a single claim. A typical Markush group is structured using the following language: “selected from the group consisting of A, B, and C” or “selected from the group consisting essentially of A, B, and C. To properly be …
  • Mask Work - A mask or semiconductor mask is the blueprint for what will be printed on the final silicon wafer during the manufacturing of semiconductors. Electron beams scan the surface of the mask and print the circuitry onto the mask. Once the mask is completed, light is shined through the mask and a lens to reduce the …
  • Means Plus Function - A means-plus-function patent claim limitation recites a term and associated function language.  This is permitted under 35 USC 112, 6th paragraph.  The claim limitation is presumed to invoke Section 6 when it explicitly uses the phrase “means for” or “step for” and includes functional language.  That presumption is overcome when the limitation further includes the …
  • Mechanic and Inventorship - In the context of patent rights, a mechanic is a person who helped an inventor make a prototype of an invention. A question often arises as to whether or not the mechanic is a joint inventor if he or she contributed to the invention. If the mechanic was a skilled tool and die person, a …
  • Merely Descriptive - Merely descriptive trademarks immediately describes the nature or objective of the underlying product or service. Merely descriptive trademarks may be registered on the Supplemental Register with somewhat reduced legal rights. Alternatively, merely descriptive trademarks may achieve Secondary Meaning (2F filing) in the minds of consumers and thus be registered on the Primary Register.
  • Multiple Dependent Claim - A multiple dependent claim is a type of dependent claim that references in the alternative to more than one claim that has been previously presented. In essence, the multiple dependent claim incorporates by reference all of the limitations of the previous claim from which it depends. In the United States, a multiple dependent claim cannot …
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  • New Matter - New matter rejections occur in patent prosecution. When a patent application is filed, it can be thought of as a photograph of the invention taken at a moment in time. No new matter can be added to the patent application after that moment. However, if the drawings filed with the patent application depict a part …
  • Non Disclosure Agreement (NDA) - Non Disclosure Agreements are common features of intellectual property law. The Patent and Trademark Office maintains all patent applications in confidence until a patent is awarded at which time the patent application becomes the patent. Before the patent has issued, the inventor should treat the invention as a trade secret unless it is being sold …
  • Non-Patent Literature (NPL) - While issued patents and published patent applications make up a substantial majority of all prior art references, the USPTO can still issue a number of rejections based on non-patent literature (NPL). Non-Patent Literature is any document and/or publication that is not an issued patent or published patent application. Some examples of non-patent literature include: Technical …
  • Non-transitory Media - The United States Patent & Trademark Office (USPTO) excludes patenting of “transitory propagating signals” in computer claims.   See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter).  Therefore, patent examiners (using the broadest reasonable interpretation of a patent claim) will often reject computer media claims when …
  • Notice of Allowance - If, on examination of the application, or at a later stage during the reconsideration of the application, the patent application is found to be allowable, a notice of allowance will be sent to the applicant, or to applicant’s attorney or agent of record, if any. A fee for issuing the patent is due within three months …
  • Notice of Allowance (Trademarks) - A notice of allowance will issue in a trademark application six (6) to eight (8) weeks after the date the application was published for opposition and was not successfully opposed. During the thirty (30) day opposition window, a party may file either an opposition or a request for extension of time to oppose that may …
  • Novelty (Patent) - Novelty is the concept that the information being patented is new and not known to the public before the filing date of the patent application. Because a patent grants the invention a monopoly over their invention for a period of 20 years, the USPTO wants to ensure that the invention is not known in the …
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  • Obviousness - 35 U.S.C. 103(a) states: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title (35 U.S.C. 102), if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole …
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  • Paris Convention - The Paris Convention is an international treaty that enables residents of member countries to file patent applications in other member countries. A Paris Convention patent application must be filed within one year of the original (home country) patent application, and it must be accompanied by a certified copy of the original application and a translation …
  • Patent - “Patent” means “open” or “disclosed”; its antonym is “latent” which means hidden or not disclosed. In return for disclosing an invention to the public, an inventor is awarded a twenty year legal monopoly, measured from the filing date of the patent application. The patent grants the patent owner the right to exclude others from making, …
  • Patent & Trademark Office - The United States Patent & Trademark Office (USPTO) It was known as the United States Patent Office until 1975. The USPTO is located in Arlington, Virginia, it is about a fifteen minute Metro ride from the Reagan National Airport. Decisions made by the examiners of the USPTO must first be appealed within the PTO itself …
  • Patent Application - A complete patent application includes a specification disclosing the invention, including any necessary drawings, a declaration signed by the inventors, a claim legally defining the metes and bounds of the invention, an Abstract of the Disclosure to be consulted by future patent searchers, and an appropriate filing fee. The specification cannot be too detailed. Claims can be too …
  • Patent Application Number - Exemplary patent application number
  • Patent Cooperation Treaty - The Patent Cooperation Treaty is an international treaty that facilitates foreign patent filings for residents of member countries when obtaining patents in other member countries. Member countries include all European countries, Mexico, Canada, China, Japan, Korea, Russia and many other industrialized countries. No certified copies of the original application are needed and most expenses are …
  • Patent Examiner - Patent examiners are employees of the U.S. Patent & Trademark Office who conduct prior art searches and determine whether the patent application complies with the substantive and procedure requirements for the grant of the patent. According to the USPTO statistics for November 2019 in the Data Visualization Center, there are 170 design patent examiners and …
  • Patent Infringement - Infringement of a patent consists of the unauthorized making, using, offering for sale or selling any patented invention within the United States or United States Territories, or importing into the United States any patented invention during the term of the patent. If a patent is infringed, the patentee may sue for relief in the appropriate …
  • Patent Marking - 35 U.S.C. 287 generally requires tangible products to be marked with the patent number or else no liability for infringement exists until the infringer is on actual notice.  Section 287 provides in part: (a)  Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing …
  • Patent Misuse - Patent misuse is an anti-trust violation of the law. If a patent owner improperly uses the patent beyond its lawful scope, the patent is consider to be improperly used or misused. The patent owner will generally be unable to recover damages for infringement during the period of time that the patent has been misused. Examples …
  • Patent Office Action - An office action is written correspondence from the examiner in charge of a patent application. If the examiner’s action includes a refusal to allow all of the claims of a patent application, the reason for the refusal is stated in writing and copies of earlier patents, if applicable, are provided. Typically, an examiner’s action must …
  • Patent Pending - A pending patent application is one that has been filed in the U.S. Patent & Trademark Office but has not reached completion of the prosecution process culminating in either allowance or abandonment of the same. The term is typically used by a manufacturer or seller of an article to inform the public that an application …
  • Patent Prosecution Highway - The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating countries by allowing examiners to reuse search and examination results. Under the PPH program, an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim is patentable may request that the Office of …
  • Patent Term Expiration - Termination of the enforceability period of a patent at the end of the patent term or for failure to pay a maintenance fee. Patent terms prior to June 5, 1995 were 17 years from the date that the patent application was issued. However, current law measures the term of a patent 20 years from the …
  • Patent Trial and Appeal Board (PTAB) - The Patent Trial and Appeal Board (PTAB) is an administrative law body of the United States Patent and Trademark Office (USPTO). The current PTAB replaced the previous judicial body at the USPTO known as the Board of Patent Appeals and Interferences back in 2012. The PTAB is composed of administrative patent judges that are tasked …
  • Patent Troll - A “patent troll” is an entity or individual that asserts a patent aggressively against a company or entity that produces a product or service.  The patent troll simply owns the patent (or rights thereto) and does not produce the product or offer the service embodied in the patent.  Patent trolls are also referred to as …
  • Patentable Subject Matter - 35 U.S.C. 101 sets out the standard for what is considered patentable subject matter. Generally, “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” See 35 U.S.C. § 101. However, the Supreme Court has held that “laws of …
  • Phonetic Similarity of Trademarks - The phonetic similarity in sound is one factor in determining whether two trademarks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re White Swan, Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).  Some examples of phonetically similar marks found confusingly similar: XCEED …
  • Plant Patent - A plant patent is granted by the USPTO to an inventor (or the inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of …
  • Preliminary Injunction - Preliminary injunctions are orders to stop a party from doing something prior to the trial on the merits (i.e., stop selling a trademarked product or patented item). This must only be granted considering all the evidence in the light most favorable to the non-moving party. The movant must establish: (1) a substantial likelihood of success …
  • Presumption of Validity - All issued U.S. patents are presumed to be valid. However, the USPTO is an administrative agency (i.e., a part of the executive branch of government) and its decisions are therefore reviewable by the courts. The presumption of validity means that a patentee does not have to prove in court that the patent is valid. The …
  • Prior Art - Prior art includes all subject matter (patents, publications, etc.) bearing on the novelty and nonobviousness of a claimed invention pursuant to 35 U.S.C. Sections 102 and 103.  Prior art may include patents, published patent applications, journal articles, textbooks and anything else published and publicly accessible in any language.   Prior art frequently establishes a basis for invalidity …
  • Prior use - Use of a trademark includes sales, offers for sale, and advertisements for goods or services in commerce. The party who first uses a trademark is the prior user.
  • Prosecution - Prosecution is the process of acquiring allowance of a patent application after it is filed in the U.S. Patent & Trademark Office.
  • Prosecution History Estoppel - Traditionally, the doctrine of prosecution history estoppel has been defined as an equitable tool for determining the scope of patent claims. The doctrine bars the patentee from construing its claims in a way that would resurrect subject matter previously surrendered during prosecution of the patent application, and thus prevents a patentee from enforcing its claims …
  • Provisional Patent Application - A provisional patent application is a place-holder so that inventors can preserve their rights as they either fine-tune the invention or gather funding. A provisional patent application is never examined nor published unless its successor, a “non-provisional” patent application eventually issues as a patent grant. Until such time, provisional patent applications are kept in secrecy …
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  • Reduction to Practice - Actual reduction to practice refers to the actual construction of the invention in physical form: in the case of a machine it includes the actual building of the machine, in the case of an article or composition it includes the actual making of the article or composition, in the case of a process it includes …
  • Reexamination Process - The patent reexamination process was first established by an amendment of the patent and trademark laws in 1980. The purpose of the reexamination was to provide a less-costly and speedier alternative to litigation in cases that deal with the issue of patent validity by allowing the PTO to consider newly found prior art patents and …
  • Registered Patent Attorney - The USPTO maintains a list (“register”) of attorneys who have been approved to represent inventors before the USPTO. Those attorneys whose names are on the list are Registered Patent Attorneys. They must be graduates of a four year accredited college, must have a college degree in a technical discipline, must be graduates of a three …
  • Reissue Patent - A reissue patent application is filed to correct mistakes in the issued patent. Such “reissue applications” must typically be filed within a particular period of time following issuance of the original patent. In the United States, the patent holder may even seek to broaden the scope of the invention defined in the claims by filing a reissue …
  • Rejection (Patent) - If an patent examiner determines that one or more of the claims in a patent application are not allowable under the law, the patent examiner will issue a rejection in the form of an Office Action. After you submit your patent application to the United States Patent and Trademark Office (USPTO) it will be assigned …
  • Request For Continued Examination - Request For Continued Examination (RCE) is a streamlined procedure for keeping a patent pending after a patent examiner at the USPTO issues a final rejection. Upon payment of the standard filing fee and presentation of a Preliminary Amendment, the final rejection is, in effect, withdrawn and the amended claims are examined just as if they …
  • Restriction Requirement - If two or more independent and distinct inventions are claimed in one application, the patent examiner at the USPTO may issue a restriction requirement forcing the patent applicant to elect one of the inventions. The communication from the Commissioner is known as the restriction requirement. The patent applicant may traverse the restriction requirement but must …
  • Right to Use Search - Also known as a Clearance Search. Before a company introduces a new product to the marketplace, it may request a Right To Use search of issued and currently maintained patents to determine whether or not the new product infringes any patents. No law firm will write an opinion saying that a product to be produced will not …
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  • Senior User - A senior user of a trademark is the person or entity that first used the mark. A senior user can obtain priority to the mark over junior users, such as by filing a trademark application.
  • Service Mark - A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. A service mark is processed and treated substantially the same a trademark.
  • Small Entity - The USPTO has defined four (4) types of patent applicants that qualify as a “small entity”: a university, a nonprofit organization, an individual inventor, or a small business concern. The definitions for a “university,” “nonprofit organization,” and “individual inventor” are defined in the patent rules. Notably, a wholly owned subsidiary of a nonprofit organization or …
  • Specimen - A specimen is a real-world example of how a trademark is actually used on the goods or in the offer of services. Labels, tags, or containers for the 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. Specimens …
  • Standard Character Drawing (Trademark) - A standard character drawing (word mark) is a type of trademark that is used to seek the registration of words, letters, numbers, or combinations without claim to a particular design or style. A standard character mark is submitted to the United States Patent and Trademark Office (USPTO) and shows the mark in black on a …
  • Statement of Use - A statement of use (SOU) is a sworn statement to the United States Patent and Trademark Office (USPTO) that attests that your trademark application is now being used in commerce. It is required to be filed within six (6) months from the date the Notice of Allowance was mailed and must be submitted before an …
  • Status Identifiers - Status identifiers are used in patent prosecution. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or …
  • Statute of Limitations - For IP matters, the statute of limitation is three (3) years for copyright cases; generally considered four (4) years for trademark cases (in Florida); and six (6) years for patent cases.
  • Statutory Bar - Statutory bar issues often relate to timing and failing to file a patent application before a deadline. Patent rights are created by statute and therefore are regulated by statute. Title 35 of the United States Code, the federal patent statute, at section 102, says that an inventor shall be entitled to a patent unless: (a) …
  • Suggestive Trademark - Suggestive trademarks typically suggest the quality or nature of the goods and/or services being applied for but do not directly describe it, such as with descriptive trademarks. In essence, a suggestive trademark hints at or alludes to some element of the goods or services. For example, NETFLIX ® does not describe streaming movies online but …
  • Supplemental Register - Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages: The registrant may use the registration symbol ®; The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d); The registrant may bring suit for infringement …
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  • Technology Center (TC) - A technology center (TC) is a group of several Group Art Units that work in similar technological fields. Each technology center is headed by one or more Group Directors that oversee the Technology Center. For example, Technology Center 1600 examines patent applications relating to the biotechnology and organic fields, while technology center 3600 examines patent …
  • Terminal Disclaimer for Patents - A terminal disclaimer (TD) is a statement filed by a patent owner in which the owner disclaims or dedicates to the public the entire term, or terminal part of the term, of the patent granted. See 37 C.F.R. 1.321. Typically, a disclaimer is filed in cases in which a claim or claims of a pending …
  • Track I Examination - Track I is a form of prioritized examination for expedited review of a patent application for an additional fee.  The goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.  However, as of October 2012 the actual timeframe is less than half (5.19 months).  For our personal experience …
  • Trade Dress - Trade dress protection is a form of trademark protection and is registerable as either a trademark or service mark. Trade dress protects the visual appearance of the mark and serves to signify its source. Overall, what constitutes a trademark is very broad. Almost anything that is unique can function as a trademark for your brand.
  • Trademark - A trademark is a word, name, symbol or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. …
  • Trademark Application Number - A trademark application number is a unique eight-digit number that is assigned to a trademark by the USPTO once the application is filed. The trademark application number contains a two-digit series code followed by six additional digits generated in chronological order based on when the application was filed. As a general rule, the two-digit series …
  • Trademark Infringement - Infringement of a trademark occurs when a person or entity uses another’s trademark without authorization or consent, as defined in 15 U.S.C. § 1114. The unauthorized use of the trademark includes reproducing, counterfeiting, copying, or imitating a trademark in commerce. Use in commerce includes selling, offering for sale, distributing, or advertising goods or services. To …
  • Trademark Registration Symbol - The federal trademark registration symbol is an encircled “R.” For example, Coca Cola®. Only registered trademarks may use the ® symbol. Use of the ® symbol on a trademark specimen for an unregistered trademark application will typically cause the USPTO to refuse to accept the trademark specimen as proof of use. Prior to registration, it …
  • Trademark Renewal - When a federal trademark registration is up for a renewal for an array of goods or services, there either must be continued use or excusable non-use for every good or service listed in the trademark recitation.  Frequently, some trademark firms simply have the client sign off on the original listing of goods/services and never check …
  • Trademark Trial and Appeal Board Litigation (TTAB) - The trademark trial and appeal board (TTAB) is a neutral body of administrative trademark judges. They reside at the United States Patent and Trademark Office  (USPTO). The TTAB primarily hears appeals, oppositions, and cancellations relating to trademark matters. Decisions handed down by the TTAB are appealable to a United States District Court or the United …
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  • Unified Patent Court - Unified Patent Court (UPC) is a patent court common to a limited number of member states in Europe. The Court hears cases regarding infringement and revocation proceedings of European patents valid on the territories of those member states. The Court was established by the Agreement on a Unified Patent Court, which was signed on 19 February 2013 …
  • Use in Commerce (Trademark) - Trademark rights in the United States arise based on use in commerce. This use requires that the goods or services offered by the applicant fall under the jurisdiction of the United States Congress and their power to regulate. The federal government’s power to regulate trademarks is born from the commerce clause of the United States Constitution, …
  • Useful (Patent) - Utility is a requirement of patentability in the United States. In particular, an invention is useful if it provides any identifiable benefit for society. Essentially, this basic patentability requirement is used to prevent the patenting of hypothetical devices or those devices that are impossible. A common example of a hypothetical device is the perpetual motion …
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  • Visual Artist Rights Act - Passed in 1990, the Visual Artist Rights Act (VARA) was an amendment to the Copyright Act that protects the “moral rights” of certain visual artists in the works they create. VARA covers paintings, drawings, print or sculpture existing in a single copy or limited edition (17 USC 101). It excludes otherwise copyrightable works including motion …
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  • Willful infringement - Infringement or active inducement of infringement is willful when it is done deliberately and intentionally, and with knowledge of the patent. Copying of an invention, if such copying continues after the existence of the patent is made known, is evidence of willfulness. However, infringement or active inducement of infringement is not willful if it is …
  • Work for Hire - Works created by a full time employee are generally considered to be “authored” by the employer. To define “employee”, courts consider: (1) the hiring party’s right to control the manner and means of creation; (2) the skill required; (3) the provision of employee benefits; (4) the tax treatment of the hired party; and (5) whether …
  • World Intellectual Property Organization (WIPO) - The World Intellectual Property Organization (WIPO) is an agency of the United Nations comprising 192 member states. Headquartered in Geneva, Switzerland, WIPO was established in 1967 at the Convention Establishing the World Intellectual Property Organization “to encourage creative activity [and] to promote the protection of intellectual property throughout the world.” WIPO seeks to improve intellectual …
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  • X Patents - X Patents are some of the earliest patents issued by the United States government. Unfortunately, many of these early patents and corresponding models were destroyed in the Great Fire of 1836, while in temporary storage during a period when a new storage facility was being built. Prior to the fire, the United States had issued …

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