Patent Glossary

Application

The patent application as well as its documentary contents. This is typically made by the inventor to a competent authority such as the patent office. The contents usually include a detailed description of the invention and at least one claim clearly defining the sought scope of protection.

Allowance

When the patent office examiners have determined that the application meets the criteria, the office will notify the applicant that the patent will be granted and invite the applicant to submit the necessary paperwork and pay the fees. To meet the criteria, the invention must be: 

  • Novel
  • Feasible
  • Useful
  • Non-obvious

Assignor estoppel

In US patent law, an equitable estoppel bars the patent seller from attacking its validity later if the seller is found to have committed infringement.

Annuity fee

A fee that is payable to maintain the patent. Also called a renewal or maintenance fee.

Clearance search and opinion

A search conducted on already-issued patents and pending patent applications. The goal of the search is to determine whether a product or process violates any issued or pending patents’ claims. It is also called a freedom-to-operate search and opinion.

Continuation-in-part application

Under US law, this type of application involves the applicant adding subject matter that has not been disclosed in the main patent application. Instead, the applicant repeats a significant part of the parent application’s specifications. In this type of application, the applicant shares at least one inventor with the main patent application.

Continuing application

Under US law, an active patent application may generate additional applications for additional claims while carrying the priority date set for the initial application before it is in its final action..

A type of infringement made indirectly.

Common general knowledge

The common knowledge in the field to which the invention is related. This information has to be generally known and regarded as a suitable foundation for further action by the majority of those engaged in the field before it becomes part of the common body of knowledge.

A legal concept typically used during an invention assessment to determine:

  • Whether it involves an invention step.
  • Whether the invention’s disclosure is adequately clear and complete so that a person skilled in the field can use it.
  • Whether the subject matter of a previous art disclosure is enabling.

If information is part of the general knowledge, it forms part of the stock of knowledge and plays a role in informing and guiding the skilled person’s approach to the situation from the start. This knowledge may affect the steps it will be clear for the person to take.

Declaration of non-infringement

A court-issued declaration that an individual’s actions do not constitute infringement of a specific patent. This declaration may be requested from a court as a preventive measure before a suspected infringement suit is lodged by a patent proprietor.

Demand letter

Also known as a “threat letter,” this is a document sent to a company to request royalty payments and advise of legal action for patent infringement.

Design around

Also used in noun form, this is the development of an alternative apparatus or method that does not constitute infringement of an already-issued patent. The alternative apparatus or method may itself also be a patentable invention.

Divided infringement

Under U.S. patent law, this is a type of patent infringement liability that exists when more than one person is involved in executing the claimed infringement of a method patent, and no single accused infringer has executed all steps of the method.

Divisional patent application

Also known as “divisional application,” this type of application contains elements of another application that has been previously filed.

Doctrine of equivalents

In a patent infringement suit, a party can be considered liable under this legal rule even if the infringing apparatus or method is not included in the literal scope of a patent claim but is effectively its equivalent.

Examination support document

Also known as a “threat letter,” this is a document sent to a company to request royalty payments and advise of legal action for patent infringement.

Field-of-use limitation

A patent license may include provisions that define permitted or excluded fields of operation for manufacturers of patented products or executors of patented processes. The patent owner can limit what these manufacturing licensees can do in relation to the patent owned.

First to invent

A legal concept by which patent rights to a specific invention are determined by the first person who makes that invention. See also “first to file.”

Freedom-to-operate

A freedom-to-operate search is conducted to establish whether a product or process is already protected by a patent or patent application, in which case any commercial use of the product or process could give rise to patent infringement. Also known as a clearance search, the freedom-to-operate search analyses the risk of patent infringement.

First to file

A legal concept by which patent rights to a specific invention are determined by the first person who applies for a patent to protect that invention. See also “first to invent.”

Willful infringement

Willful infringement occurs when a defendant copies an invention in the knowledge that it has already been patented. In order for an infringement to be considered willful, the infringer needs to have intentionally infringed a patent, knowing full well that the patent already existed and they were in violation of the law.
 

Literal Infringement

Literal infringement is when an infringing party literally copies each and every feature in the claims of the patent. If an infringing party adds another feature of their own, in addition to the ones copied, it is still considered literal infringement. If, however, for example, an infringer only copies three out of four features, it doesn’t count as literal infringement.

Doctrine of Equivalents

Doctrine of equivalents is a common type of infringement in patent litigation. Unlike literal infringement, an infringer doesn’t copy every single element of the issued patent but creates a product that is essentially the same in how it functions – and results in a substantially similar product. They are considered equivalent to each other, in terms of infringement. In a court of law, it is difficult to pin down what exactly is considered “equivalent,” and the verdict often comes down to how well the lawyers represent their party.
 

Direct Infringement

Direct infringement is when a party uses, sells, or markets your patent without permission within the United States, either knowingly or unknowingly. Of the cases of infringement found by the court system, direct infringement is the most common. As a patent owner, it is your responsibility to detect infringement of your patent, and you will need to provide evidence that the infringer copied your intellectual property. If you are able to do so successfully, you may be able to receive monetary restitution.

Indirect Infringement

Indirect infringement is when defendants do not use, sell, or market the patented product themselves but knowingly cause another party to commit the infringement. Indirect infringement tends to be trickier to detect. There are two types of indirect patent infringement – induced infringement and contributory infringement.

Contributory infringement

Contributory infringement, a type of indirect patent infringement, is when a party provides a part that helps another party create a patented item. As a patent owner, you have to prove that the infringer knowingly provided a part to another party for the purpose of infringing on your patent. The guilty seller doesn’t need to be involved in the use of the patented product. It is enough that they were aware that the patent existed and provided a part to assist in infringing the patent.

Indirect Infringement

Indirect infringement is when defendants do not use, sell, or market the patented product themselves but knowingly cause another party to commit the infringement. Indirect infringement tends to be trickier to detect. There are two types of indirect patent infringement – induced infringement and contributory infringement.

Induced infringement

Induced infringement, a type of indirect patent infringement, is when a defendant knows about a patent and instructs or persuades another party to infringe upon the patent. As a patent owner, you have to prove that the accused infringer knew about your patent and knowingly “induced” another party to infringe on it.

SEP

A standard-essential patent (SEP) protects technology that is essential to an industry standard. An industry standard is a set of rules and requirements that defines every aspect of how a product works and interacts with other products. Industry standards exist so that products made by one manufacturer will work with products made by different manufacturers. For example, smartphones and tablets all use technology that complies with certain industry standards so your phone can connect to other phones, regardless of the manufacturer.
 
SEPs serve the same purpose as other patents, such as design and utility patents—they protect the invention of the patent holder. The difference with SEPs is that they cover inventions that are necessary for a product or process to meet industry standards. These standards are determined by standard-setting organizations (SSOs), which require that their members a) disclose all of their SEPs in order to retain the membership; b) make the patented invention available and accessible under fair, reasonable, and non-discriminatory terms (FRAND).
 

FRAND

FRAND (an acronym for Fair, Reasonable, and Non-Discriminatory) describes the contractual commitment that protects both SEP holders and licensees in the licensing of a standard essential patent. Fair refers to the licensing terms, which need to be lawful. Reasonable relates to licensing rates and compensation. Non-discriminatory describes both the terms and the rates and signifies a commitment to treat licensors equally.
 
Under the terms of FRAND, licensees are entitled to terms of licensing that are fair and reasonable with no hold-ups or delays in the process by the SEP holder. Likewise, FRAND rewards SEP holders for sharing their standard essential patent and prevents licensees from being able to use the technology before being granted the license.
 
Of course, what is considered “fair,” “reasonable,” and “non-discriminatory” is open to interpretation, and consequently parties can end up disagreeing over the terms and frequently find themselves in court, leaving it up to the judge or jury to decide. The FRAND commitment, however, is intended to balance the needs and interests of both SEO holders and licensees.
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