Nikolai & Mersereau P.A. Attorneys At Law


Patent Glossary of Terms

AMENDMENT—A paper filed with a patent office adding to, deleting from or otherwise altering the contents of a pending patent application.

AMERICA INVENTS ACT—Revisions to the patent laws enacted September 16, 2011 that, inter alia, change the American patent system from a first-to-invent to a first-to-file system.

ANNUITY TAX—A fee or tax charged by a foreign country to maintain a patent application or patent in full force and effect.  When we assist a client with patent matters in foreign countries, we undertake to remind the client in advance regarding the deadlines for payment of such annuity taxes.

BOARD OF APPEALS AND INTERFERENCES—A three-person panel of experienced U.S. Patent and Trademark Office (USPTO) personnel selected to hear appeals by patent applicants from refusals of patent examiners to allow claims of a patent application and to decide which of two or more patentees or applicants for patent who are claiming the same invention should be entitled to the patent in a first-to-invent system.

CERTIFICATE OF CORRECTION—An addendum to a patent typically issued by the U.S. Patent and Trademark Office to correct any printing errors in the original patent as published by the U.S. Patent and Trademark Office.

CIP—See “Continuation-in-Part Application”.

CONTINUATION APPLICATION—Sometimes, when examining a non-provisional patent application, the U.S. Patent and Trademark Office will allow some of the claims contained in the application, but not others.  An applicant can elect to secure a patent containing the allowed claims and file a continuation application to further prosecute the remaining claims.  A continuation application references an earlier filed non-provisional application and contains a disclosure identical to the disclosure of the non-provisional application to which the continuation application refers.

CONTINUATION-IN-PART APPLICATION—Sometimes an inventor will make improvements to an invention disclosed in an earlier filed patent application which are important to protect.  Rather than filing a new application directed only to the improvements, an inventor may elect to file a continuation-in-part application which refers to the earlier application, contains the disclosure of the earlier application, and supplements the earlier disclosure with information about the improvements.  A claim of the continuation-in-part application may be directed to subject matter fully disclosed in and supported by the contents of the earlier application.  In this case, the claim will have the same priority as the earlier application.  A claim in a continuation-in-part application may also be directed to subject matter partially disclosed in and supported by the earlier application, but only fully disclosed in and supported by the contents of the continuation-in-part application.  In this case, the priority date afforded the claim is the filing date of the continuation-in-part application.

DESIGN PATENT—A patent granted to anyone who invents a new, original, and ornamental design for an article of manufacture.  We have helped many clients secure design patents covering housewares, furniture, and packaging items, to name a few.

DIVISIONAL APPLICATION—Sometimes, when examining a non-provisional patent application, the U.S. Patent and Trademark Office determines the claims of the patent application define more than one invention and requires the claims to be divided into two or more applications.  A divisional application refers to the original non-provisional application, contains the same disclosure as the original non-provisional application and contains a subset of the claims of the non-provisional application.

DOCTRINE OF EQUIVALENTS—A legal principle employed by courts to hold a product or process infringes if the product or process is the equivalent of the claimed invention, but does not fall within the literal scope of the patent claims.  In the United States, the doctrine of equivalents is applied on a limitation-by-limitation basis to ensure no limitation of the claim is ignored.  The courts look to see whether the differences between the limitations of a patent claim and the elements of an item accused of infringement are insubstantial.  A difference is treated as insubstantial if an element of the accused device, when compared to a limitation of a claim, performs substantially the same function, in substantially the same way, to achieve substantially the same result.  In the United States, the doctrine of equivalents is limited by the doctrine of prosecution history estoppel.  See “Prosecution History Estoppel”.

EPO—European Patent Office.

EQUIVALENTS—See “Doctrine of Equivalents”.

EUROPEAN PATENT—A patent granted by the European Patent Office acting as the prosecution authority for the member European countries.  A European patent granted by the European Patent Office typically must be nationalized (i.e., registered) with the national patent office or a particular European country before it will be enforced by the courts of that country.  We have developed relationships with firms specializing in procurement and enforcement of patents throughout Europe.

FILE HISTORY—See “Prosecution History”.

FILE WRAPPER—See “Prosecution History”.

FOREIGN PATENT—Any patent granted by a country other than the United States.  We work with a worldwide network of associates to assist clients with efforts to secure and enforce patents anywhere in the world.

IDS—See “Information Disclosure Statement”.

INFORMATION DISCLOSURE STATEMENT—A document submitted to the U.S. Patent and Trademark Office disclosing prior art and other information known to the applicant for a patent which may be material to the patentability of the claimed invention.  Disclosure of such information is governed by 37 CFR § 1.56.

INFRINGEMENT—Making, using, offering for sale, selling or importing into a country any invention covered by a patent granted by that country during the term of the patent and without the permission of the patent owner.  In the United States, one can infringe a patent literally or under the doctrine of equivalents.  See “Literal Infringement” and “Doctrine of Equivalents”.  We have substantial experience evaluating patent infringement issues and representing both patent owners and accused infringers in patent disputes.

ISSUE FEE—A tax or fee charged by the government once a patent application is allowed.  Payment of this fee is typically the last step required to secure a patent.

LITERAL INFRINGEMENT—Patent infringement which exists because a device accused of infringing a patent meets each and every limitation of at least one claim of the patent.

MAINTENANCE FEE—A fee or tax which must be timely paid to the U.S. government to maintain a utility patent granted by the government in full force and effect during its entire term.  When we secure a patent for a client, we undertake to remind the client in advance regarding the deadlines for payment of such a maintenance fee.

METHOD PATENT—A patent granted to anyone who invents or discovers any new process.  For a brief list of the technology areas in which we have assisted clients with patent protection, licensing and enforcement, see http://www.nm-iplaw.com/industries/.

NATIONAL PHASE—After an inventor has filed a PCT application, an election is made by the inventor concerning countries in which patent protection is to be secured.  The applicant then enters the “national phase” in those countries and during the “national phase”, the patent offices of the selected countries then evaluate the invention disclosed in the PCT application to determine whether it warrants the grant of a patent under the laws of the particular country.  We work with a worldwide network of associates to assist clients with efforts to secure and enforce patents anywhere in the world.

NON-OBVIOUSNESS—A requirement for patentability.  A valid patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which such subject matter pertains.

NON-PROVISIONAL PATENT APPLICATION—A U.S. national application for patent filed in the USPTO under 35 U.S.C. §111(a).  Non-provisional patent applications contain a specification, including a description and a claim or claims; abstract; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees.  The U.S. Patent and Trademark Office examines such applications and determines whether a U.S. patent should be granted based upon the invention described therein. 

NOTICE OF ALLOWANCE—A communication issued by a patent examiner announcing that a patent application has been allowed and a patent will be granted if the required issue fee is paid.

NOVELTY—A requirement for patentability.  An invention claimed in a patent or parent application fails to meet the novelty requirement if the identical invention was disclosed in a single prior art reference.

OFFICE ACTION—A communication issued by a patent examiner including his or her finding related to a particular patent application.

PATENT—A patent is an intellectual property right granted by the government of a country to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the country or importing the invention into the country” for a limited time in exchange for public disclosure of the invention when the patent is published.  Since 1977, we have assisted clients with efforts to secure, maintain, license, sell, and enforce patents in the United States and throughout the world.

PATENT COOPERATION TREATY—An international treaty which provides a filing system of securing patent protection internationally.  The treaty generally permits a person who has filed a U.S. patent application to file a PCT application and claim priority to the U.S. application filing date, provided the PCT application is filed within one year of the date of the earliest U.S. patent application to which priority is claimed.  The PCT applicant is generally afforded thirty months from the priority date to elect PCT member countries in which the applicant wishes to enter the national phase and secure patent protection in those countries.  A PCT application does not result in a patent grant anywhere.  It simply extends the time in which a decision must be made regarding where to secure patent protection.

PATENT EXAMINER—A person employed by the U.S. Patent and Trademark Office who examines patent applications and initially determines whether the invention disclosed therein meets the legal requirements for patentability and whether the application is in condition for allowance.

PATENT PENDING—A designation which may be applied to a product to indicate the product is the subject of a patent application.  This designation may be used in the United States from the time a provisional or non-provisional patent application covering the product is first filed until the time that no patent application remains pending which covers the product.

PATENT SEARCH—See “Patentability Study”.

PATENTABILITY REQUIREMENTS—See “Novelty” and “Non-Obviousness”.

PATENTABILITY STUDY—A study undertaken to formulate an opinion regarding whether patent protection is likely to be available on a particular invention and to assess the scope of any patent protection likely to be available.  Such studies typically include a search to find relevant prior art, an assessment of the prior art, formulation of opinions based upon the invention under investigation and the prior art, and preparation of a report to the client.

PCT—See “Patent Cooperation Treaty”.

PLANT PATENT—A patent granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

PRIOR ART—Under U.S. law, the prior art includes any earlier patent or printed publication.  The prior art also includes devices in public use or on sale in the United States.  For U.S. patent applications filed on or after March 13, 2013, the definition of prior art will be expanded to include virtually any information publicly available anywhere in the world existing prior to the filing date of the patent application.

PROSECUTION HISTORY—The Patent Office file pertaining to the proceedings related to a particular patent application.  Sometimes the prosecution history is referred to as the “file history” or “file wrapper”.

PROSECUTION HISTORY ESTOPPEL—In the United States, a patent owner is prevented (i.e., estopped) from arguing that subject matter surrendered during the Patent Office proceedings giving rise to a patent is covered by the claims of the patent under the doctrine of equivalents.  Such subject matter may have been surrendered as a result of amendments made to the claims occurring during the Patent Office proceedings or as a result of arguments related to the scope of the claims made during the Patent Office proceedings.

PROVISIONAL PATENT APPLICATION—A U.S. national application for patent filed in the U.S. Patent and Trademark Office under 35 U.S.C. §111(b).  This statute allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement.  It provides the means to establish an early effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending” to be applied in connection with the description of the invention.  A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed.  The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.  Care must be taken when preparing a provisional application to ensure that an invention later claimed in a non-provisional application is adequately described in the provisional application.

RCE—See “Request for Continued Examination”.

REEXAMINATION—A U.S. Patent and Trademark Office proceeding during which the patentability of the claims of a patent is reconsidered in view of prior art patents and printed publications submitted by either the patentee or a party requesting reexamination of the patent.

REISSUE—A proceeding initiated by a patent owner with the U.S. Patent and Trademark Office to correct defects in an already issued patent. 

REQUEST FOR CONTINUED EXAMINATION—A paper filed together with the applicable government fees after receiving a “final rejection” allowing the applicant for a patent to present to the U.S. Patent and Trademark Office additional arguments or amendments rather than abandon the application or appeal the final rejection.

RIGHT-TO-MAKE INVESTIGATION—A study undertaken to formulate an opinion regarding whether a product may be made, used or sold without violating patent rights held by others.  Such studies typically involve a search for pertinent patents, an assessment of the scope of the claims of each such patent, a comparison of the claims of each such patent to the product under investigation to see if literal infringement would arise from the manufacture, use or sale of the product, consideration of the doctrine of equivalents, and an assessment of the validity of such patents.  Opinions are formulated based upon the study which are then reported to the client.

U.S. PATENT AND TRADEMARK OFFICE—An office of the U.S. Department of Commerce charged with responsibility for awarding patents and registering trademarks in accordance with the laws of the United States. We handle matters before the U.S. Patent and Trademark Office for clients in Minnesota, in the Midwest, in the United States and throughout the world.

USPTO—United States Patent and Trademark Office.  We handle matters before the U.S. Patent and Trademark Office for clients in Minnesota, in the Midwest, in the United States and throughout the world.

UTILITY PATENT—A patent granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.  For a brief list of the technology areas in which we have assisted clients with patent protection, licensing and enforcement, see http://www.nm-iplaw.com/industries/.

Trademark Glossary of Terms

AFFIDAVIT UNDER SECTIONS 8 AND 15—An affidavit filed in a timely fashion in connection with a registration on the Principal Register demonstrating the mark is still in use and further demonstrating that certain rights and presumptions arising from the registration should be deemed incontestable.

AMENDMENT—A paper filed with a Trademark Office adding to, deleting from or otherwise altering the contents of a pending trademark application.

ARBITRARY TERM—A term having no meaning as to the nature of the product such as “Apple” for computers.  Such terms are immediately protectable as marks.

BASIS—The legal basis on which an application for registration of a mark with the U.S. Patent and Trademark Office is based.  Such an application may be based on actual use in commerce, a intent to use the mark in commerce, or a foreign registration of the mark coupled with an intent to use the mark in the U.S.

CANCELLATION PROCEEDING—A proceeding initiated after registration of a mark on the Principal Register to cancel the registration based on a petition filed by someone who claims to be damaged by the registration.  After five years from the registration date, the only issues generally entertained in a cancellation proceeding are whether the mark has become generic, is functional or has been abandoned, or whether the registration was fraudulently obtained.

CERTIFICATION MARK—A mark used in commerce by a person other than its owner to identify goods or services as being of a particular type.

CLASSIFICATION—In 1973, the U.S. Patent and Trademark Office adopted the international classification system to classify the goods and services covered by applications and registrations of trademarks and service marks.  This classification system was adopted for the convenience of U.S. Patent and Trademark Office administration, but was not intended to limit the rights of an applicant or registrant.  Many of the government fees charged by the U.S. Patent and Trademark Office are imposed on a per class basis.  There are currently thirty-four separate classes for goods and another eleven for services.

COLLECTIVE MARK—A mark used by members of a collective, association, or other organization to indicate membership and/or to distinguish the goods and services of members from those of non-members.

COMMERCE—All commercial activity which may be regulated by the Congress of the United States.

COMMON LAW MARK—A trademark or service mark which has not been registered, but which is legally protectable as a result of common law rights arising from use of the mark.

COMMUNITY TRADE MARK—A mark registered in the Community Trade Mark Office of the European Union enforceable in all member countries.

CONCURRENT USE—The Trademark Laws of the United States permit an eligible applicant to request issuance of a registration concurrent with the registration of a conflicting mark.  Concurrent use registrations are typically restricted to a particular geographic area such that one registrant owns rights in the mark in one geographic area and another registrant owns rights in the mark in another geographic area.

CTM—See “Community Trade Mark”.

DESCRIPTIVE TERMS—Terms which describe the goods or services or the features or attributes thereof.  Such terms may only be treated as a mark if, through continuous and exclusive use, they have become distinctive of the goods of a particular supplier in commerce.

DOMAIN NAME—An alphanumeric designation registered and used as part of an electronic address on the Internet.

DILUTION—An association arising from the similarity between a mark or trade name and a famous mark that either impairs the distinctiveness of the famous mark (referred to as “dilution by blurring”) or harms the reputation of the famous mark (referred to as “dilution by tarnishment”).

DIVISIONAL APPLICATION—Clients will apply to register a trademark with the U.S. Patent and Trademark Office on an intent-to-use basis.  In situations where the list of goods or services to be offered under the mark is lengthy, the client may only have used the mark on some of the goods, but not others, at the time the statement of use is due.  In such cases, the client may file a statement of use covering the goods and services with which the mark has been used and a divisional application covering the goods and services with which the mark still has not been used.  This serves to secure a first registration covering the goods and services listed in the statement of use and preserve the priority date established by the filing of the original application for the remaining goods and services.

FANCIFUL TERM—A term that is coined or made up having no meaning in any language, e.g., EXXON.  Fanciful terms are immediately protectable as a mark.

FILE HISTORY—See “Prosecution History”.

FILE WRAPPER—See “Prosecution History”.

FULL TRADEMARK SEARCH—A full trademark search is a search conducted to determine whether a mark is available for use and registration.  In the U.S., such searches include a review of the records of the U.S. Patent and Trademark Office, the records of the Secretaries of State for all fifty states, American Samoa and Puerto Rico, a review of domain name registrations and any associated websites, and a review of a variety of common law and Internet resources.  Broader searching may be performed for clients who will be marketing their products internationally.

GENERIC TERM—The name for, or a term synonymous with, the name of a general class of a product or service such as “apple” for the fruit.  Such terms are incapable of serving as a trademark for such goods because they do not indicate source.

INCONTESTABLE—If the owner of a trademark registration continuously uses the mark on or in connection with the goods or services covered by the registration continuously for five years subsequent to the date of registration and meets certain other requirements, the right of the owner to use the mark on such goods or services becomes incontestable and the defenses available to an alleged infringer are more limited.

INFRINGEMENT—Without the consent of the owner of a mark either: (a) using any reproduction, counterfeit, copy or colorable imitation of a mark in connection with the sale, offering for sale, distribution or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.

MADRID SYSTEM—A system for registering a mark simultaneously in more than 80 countries.

MARK—A shorthand term referring to trademarks, service marks, collective marks, and certification marks.  A mark may be a word, name, symbol, device, or any combination thereof.

NOTICE OF ALLOWANCE—A communication issued by a trademark examiner announcing that an intent-to-use trademark application has been allowed and a registration will be granted if an acceptable statement of use is filed on a timely basis.

OFFICE ACTION—A communication issued by a trademark examiner of the U.S. Patent and Trademark Office including his or her finding related to a particular trademark application.

OPPOSITION—A proceeding initiated prior to registration of a mark on the Principal Register to prevent the registration based on a petition filed by a party who claims it will be damaged by the registration.  Unless an extension of time is secured, a notice of opposition must be filed within a thirty-day period beginning on the date of the publication of the mark by the U.S. Patent and Trademark Office.

PRINCIPAL REGISTER—A register of marks maintained by the U.S. Patent and Trademark Office.  Registration on the Principal Register creates certain presumptions in favor of the owner of the mark which may become incontestable in time.

PROSECUTION HISTORY—The U.S. Patent and Trademark Office file pertaining to the proceedings related to a particular application for registration of a mark.  Sometimes the prosecution history is referred to as the “file history” or “file wrapper”.

RENEWAL—An application filed to maintain an existing registration in full force and effect.

SCREENING SEARCH—A cursory or quick search undertaken to see if others have registered substantially the same mark for related goods.  These are performed prior to conducting a full trademark search as a cost-saving effort.  If the screening search uncovers issues of concern, the cost of the full trademark search can be avoided.  Screening searches may be used to eliminate a mark from further consideration, but are not sufficiently thorough to clear a mark for use.  See “Full Trademark Search”.

SERVICE MARK—A word, name, symbol, device, or any combination thereof, used to identify and distinguish the services provided by one person or company from services of another and to indicate the source of the services.

STATEMENT OF USE—A declaration filed with the U.S. Patent and Trademark Office in connection with an application for registration filed on an intent-to-use basis demonstrating use of the mark, which is the subject of the application, has begun on or in connection with goods or services listed in the application.

SUGGESTIVE MARKS—A term which suggests, rather than describes, the features or attributes of a product.  Such terms are immediately protectable as trademarks and no showing of acquired distinctiveness is required.

SUPPLEMENTAL REGISTER—A second register of marks maintained by the U.S. Patent and Trademark Office to give notice of a claim of trademark ownership.  A registration on the Supplemental Register does not carry with it the same presumptions arising from registration on the Principal Register.

TRADE DRESS—Originally, trade dress only included the packaging for a product.  Trade dress now also may include the design of a product, i.e., the total image and overall appearance of a product.  Trade dress may include features such as the size, shape, color, color combinations, texture or graphics employed.  To register trade dress as a mark, the alleged trade dress must be non-functional and must also be distinctive.  Trade dress is functional and cannot serve as a mark if it is essential to the use and purpose of the article or if it affects the cost or quality of an article.  While trade dress in the form of product packaging may be inherently distinctive, and therefore be registered in the absence of proof of secondary meaning or acquired distinctiveness, the Supreme Court has held that a product’s design can never be inherently distinctive and proof of secondary meaning or acquired distinctiveness is always required.

TRADE NAME—A type of mark used to identify a company, partnership, or business. 

TRADEMARK—Any word, name, symbol, device, or any combination thereof, used to identify and distinguish the goods of one party from those of another and to indicate the source of the goods.

U.S. PATENT AND TRADEMARK OFFICE—An office of the U.S. Department of Commerce charged with responsibility for awarding patents and registering trademarks in accordance with the laws of the United States. We handle matters before the U.S. Patent and Trademark Office for clients in Minnesota, in the Midwest, in the United States and throughout the world.

USPTO—United States Patent and Trademark Office.  We handle matters before the U.S. Patent and Trademark Office for clients in Minnesota, in the Midwest, in the United States and throughout the world.