Glossary of Patent Terms

Abeyance  To hold temporarily inactive or to suspend.
Abstract  A brief technical disclosure in the specification of that which is new in the art to which the invention pertains. It is not used for interpreting the scope of the claims. (MPEP 608.01 (b))
Application Data  An application data sheet is a sheet or sheets that may be voluntarily
Sheet (ADS) submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office. If an application data sheet is provided, the application data sheet is part of the provisional or nonprovisional application for which it has been submitted. (See MPEP 601.05)
Assignment  A transfer by a party of all or part of its right, title and interest in a patent or patent application, or a transfer of its entire right, title and interest in a registered mark or a mark for which an application to register has been filed. (See MPEP 301)
Best Mode  The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation. (See MPEP 2164.01)
Certificate of Mailing  A certificate for each piece of correspondence stating the date of deposit or transmission by facsimile. The correspondence and certificate must be properly addressed and deposited with the U.S. Postal Service with sufficient postage as first class mail or transmitted by facsimile to the Patent and Trademark Office within the set period of time for response to be considered as being timely filed. The actual date of receipt will be used for all other purposes. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated. (See MPEP 512)
Chapter I  The first phase of an international application under the Patent Cooperation Treaty (PCT) which affords applicants the benefit of an international search, issuance of an International Search Report (ISR), and publication of the application and ISR by the International Bureau (IB) of the World Intellectual Property Organization (WIPO). (See MPEP 1842)
Chapter II  The second optional phase of an international application under the Patent Cooperation Treaty (PCT) which affords applicants the benefit of an examination of their international application and issuance of an International Preliminary Examination Report. (See MPEP 1861)
Conception  Conception is the mental part of the inventive act, but it must be capable of proof, as by drawings, complete disclosure to another person, etc. (See MPEP 715.07)
Continuation  A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented. The continuation application may be filed under 37 CFR 1.53(b) or 1.53(d). (See MPEP 201.07)
Continuation-In-Part  A continuation-in-part is an application filed during the lifetime of an earlier
(CIP) nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application. The continuation-in-part application may only be filed under 37 CFR 1.53(b). The continuation-in-part application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 365(c). (See MPEP 201.08)
Continued Prosecution Application (CPA)  A continuation or divisional application filed under 37 CFR 1.53(d) is called a "Continued Prosecution Application" or "CPA." A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. Under the CPA procedure, the continuation or divisional application will utilize the file wrapper and contents of the prior nonprovisional application, including the specification, drawings and oath or declaration from the prior nonprovisional application, and will be assigned the same application number as the prior nonprovisional application. (See MPEP 201.06 (d))
Copendency  Copendency requires that a later-filed application must be filed before the patenting, or the abandonment of, or the termination of proceedings in the prior application. (See MPEP 201.11)
Customer Number  A Customer Number may be obtained and used to designate a correspondence address of an application (or patent), fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number. Although Customer Numbers are designed to designate both a correspondence address and to associate one or more patent attorneys or agents with an application, one Customer Number may be used for the correspondence address, and another Customer Number may be used for the power of attorney. (See MPEP 403)
Demand  Once applicant has requested the filing of an international application under Chapter I which affords applicants the benefit of an international search, applicant has the right to file a Demand for preliminary examination. The use of the term "Demand" distinguishes Chapter II from the "Request" under Chapter I. It is not possible to file a Demand unless a proper Chapter I "Request" for an international application has been filed. Any applicant who is a resident or national, as defined in the Regulations, of a Contracting State bound by Chapter II, and whose international application has been filed with the receiving Office of or acting for such State, may make a demand for international preliminary examination. (See MPEP 1864)
Deposit Account  For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc. an account may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account (See MPEP 509.01)
Deposit Date  The date that the United States Patent and Trademark Office receives a patent application.
Design Patent  Whoever invents any new, original and ornamental design for an article of manufacture may obtain a Design Patent. (See MPEP 1501)
Divisional Application  A divisional application or "division" is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application. The divisional application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 121 or 365(c). It may be filed pursuant to 37 CFR 1.53(b) or 1.53(d). (See MPEP 201.06)
Double Patenting  Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents. There are generally two types of double patenting rejections. One is the "same invention" type ("statutory-type") double patenting rejection based on 35 U.S.C. 101, which states in the singular that an inventor "may obtain a patent". The second is the "nonstatutory-type" double patenting rejection based on a judicially created doc-trine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinguishing from claims in a first patent. (See MPEP 804)
Electronic Filing System (EFS)  EFS allows customers to electronically file patent application documents securely via the Internet. EFS is a system for submitting new utility patent applications and pre-grant publication submissions in electronic publication-ready form. (See MPEP 1730)
Enablement  The enablement requirement refers to the requirement of 35 U.S.C. 112, first paragraph that the specification describe how to make and how to use the invention. The invention that one skilled in the art must be enabled to make and use is that defined by the claim(s) of the particular application or patent. (See MPEP 2164)
Estoppel  A legal bar to alleging or denying a fact, because of one's own previous actions.
Examination Copy A copy of an international application filed under the Patent Cooperation Treaty, which is maintained by the International Preliminary Examining Authority.
Filing Date  The filing date of a nonprovisional application is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description, at least one claim, and any required drawing(s) are filed in the Patent and Trademark Office. The filing date of a provisional application is the date on which a specification as prescribed by 35 U.S.C. 112 and any required drawing(s) are filed in the Patent and Trademark Office. (See MPEP 506)
Information  An information disclosure statement contains a list and legible copy of all Disclosure Statement patents, publications, applications, or other information submitted for (IDS) consideration by the Office. If any document is not in the English language, a concise explanation of their relevance and any copy of an English translation that is readily available should be submitted as well. (See MPEP 609)
inter alia  Latin for "among other things." This phrase is often found in legal pleadings and writings to specify one example out of many possibilities.
Interference  An interference is a proceeding, conducted before the Board of Patent Appeals and Interferences (Board), to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents. (See MPEP 2300.01)
Maintenance Fees  Fees for maintaining in force a patent based on applications filed on or after December 12, 1980. (See MPEP 2501)
Multiple Dependent Claim  One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim is a "multiple dependent claim" and shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. (See MPEP 608.01(n))
National Stage Application  An application which has entered the national phase of the Patent Cooperation Treaty by fulfilling certain requirements in a national Office. For the U.S., an international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371 (c) within the period set in 37 CFR 1.494 or 1.495. (See MPEP 1893.01)
New Matter  Subject matter not disclosed in the original application. New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. (See MPEP 706.03(o))
Nonprovisional  An application for patent filed under 35 U.S.C. 111(a). The procedure for
Application filing a nonprovisional application is set forth in 37 CFR 1.53(b) and 37 CFR 1.53(d). 37 CFR 1.53(b) may be used to file any original, reissue, or substitute nonprovisional application and any continuing application, i.e., continuation, divisional, or continuation-in-part. Under 37 CFR 1.53(b), a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent and Trademark Office (USPTO). (See MPEP 601 .01 (a))
Notice of Allowance  If, on examination, it appears that the applicant is entitled to a patent under the law, a notice of allowance will be sent to the applicant at his/her correspondence address. The notice of allowance shall specify a sum constituting the issue fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. The sum specified in the notice of allowance may also include the publication fee, in which case the issue fee and publication fee must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. (See MPEP 1303)
Obviousness  To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally avail-able to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based on applicant's disclosure. (See MPEP 2142)
Original Application  "Original" is used in the patent statute and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application. (See MPEP 201.04(a))
PAIR  The Patent Application Information Retrieval (PAIR) system on the U.S. Patent and Trademark Office (USPTO) website at www.uspto.gov/ebc. A requester seeking status information regarding an application may use the PAIR system to obtain this information. (See MPEP 102)
Parent Application  The term "parent" is applied to an earlier application of an inventor disclosing a given invention. (See MPEP 201.04)
Patent Cooperation  The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one
Treaty (PCT) application, "an international application," in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national filing in as many member countries to the PCT as the applicant "designates" or "elects," that is, names, as countries in which patent protection is desired. In the same manner, the PCT enables foreign applicants to file a PCT international application, designating the United States of America, in their home language in their home patent office and have the application acknowledged as a regular U.S. national filing. (See MPEP 1801)
per se  by, of, or in itself or oneself or themselves.
Plant Patent  Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a Plant Patent. (See MPEP 1601)
Power of Attorney  Authority to act in a representative capacity before the Patent and Trademark Office on behalf of an applicant for a patent application.(see MPEP 402)
Precautionary Designation  All designations must be made in the international application on filing; none may be added later. The precautionary designation procedure enables the applicant to make, in the request for an international application, all designations permitted by the PCT in addition to those made specifically. For this purpose, the request must also contain a statement that any precautionary designations so made are subject to confirmation as provided in Rule 4.9(c) and that any designation which is not so con-firmed before the expiration of 15 months from the priority date is to be regarded as withdrawn by the applicant at the expiration of that time limit. (See MPEP 1817.01)
Prior Art  The state of knowledge existing or publicly available before the date of an invention. A reference used in a rejection against an application for patent. (See MPEP 900)
pro se Designates an independent inventor which has chosen to file an application by him/her self without the services of a licensed patent attorney or agent.
Provisional Application  Designates an independent inventor which has chosen to file an application by him/her self without the services of a licensed patent attorney or agent. An application for patent filed under 35 U.S.C. 111(b). The procedure for filing a provisional application is set forth in 37 CFR 1.53(c). Under 37 CFR 1.53(c), a filing date is assigned to a provisional application as of the date a specification and any necessary drawings are filed in the U.S. Patent and Trademark Office (USPTO). (See MPEP 601.01)
Reexamination  Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications which present a substantial new question of patentability. The reexamination procedures are similar to regular examination procedures within a few notable differences. (See MPEP 2210)
Reissue Application  A reissue application is an application for a patent to take the place of an unexpired patent that is defective in some one or more particulars. (See MPEP 201.05 and 1400)
Request for Continued Examination (RCE)  If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of: (1) Payment of the issue fee, unless a petition under § 1.313 is granted; (2) Abandonment of the application; or (3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated. (See MPEP 706.07(h))\
Right of Priority  An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b). (See MPEP 201.13)
Serial Number  A number assigned to a patent application when it is filed.
Series Code A two digit code representing a period of time.
Small Entity Status  A small entity is defined as any party (person, small business concern or nonprofit organization) under 37 CFR 1.27 (a), who has properly asserted entitlement to small entity status pursuant to 37 CFR 1.27 (c) will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h). (See MPEP 509.02 - 509.03)
Specification  The specification is a written description of the invention and of the manner and process of making and using the same. The specification must be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the same. (See MPEP 608.01)
Status (of an application)  Status information of an application means only the following information: (A) whether the application is pending, abandoned, or patented; (B) whether the application has been published; and (C) the application number or the serial number plus any one of the filing date of the national application, the international filing date or the date of entry into the national stage. (See MPEP 102)
Statutory Invention  An applicant for an original patent may request, at any time during the
Registration (SIR) pendency of applicant's pending complete application, that the specification and drawings be published as a statutory invention registration. The waiver of patent rights to the subject matter claimed in a statutory invention registration takes effect on publication (37 CFR 1.293(c)) and may affect the patentability of claims in related applications without SIR requests, such as divisional or other continuing applications, since the waiver of patent rights is effective for all inventions claimed in the SIR. (See MPEP 1100)
sua sponte  Latin for "of one's own will," meaning on one's own volition, usually referring to a judge's order made without a request by any party to the case.
Substitute  A "Substitute" application is in essence the duplicate of an application by
Application the same applicant abandoned before the filing of the later application. A "Substitute" does not obtain the benefit of the filing date of the prior application. (See MPEP 201.09)
Summary  A brief summary of the invention indicating its nature and sub-stance, which may include a statement of the object of the invention, should precede the detailed description. (See MPEP 608.01(d))
Traverse  A traverse of a requirement to restrict is a statement of the reasons upon which the applicant relies for his or her conclusion that the requirement is in error. (See MPEP 818)
USPTO  United States Patent and Trademark Office
Utility Patent  35 U.S.C. 101 states that 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 utility patent. (See MPEP 2106)
WIPO  World Intellectual Property Organization