Glossary of Patent Prosecution, Patent Brokerage, and Patent Assertion Terminology
Application Date – The date on which a patent application was submitted to the USPTO either in person, via mail, or online
Assignee – When a patent is sold, the new owner of the patent
Assignment – The recordation of the ownership of a patent by the U.S. Patent and Trademark Office. All patent assignments – like deeds to real property – are public records.
Assignor – The party who gives up ownership of a patent to a new assignee. The owner of a patent is the Assignee until he or she or it sells or otherwise relinquishes ownership of the patent and becomes the Assignor.
Business Method Patent – A patent that does not cover a device or apparatus, but covers a method of conducting business
Claim Chart – A document created by a team of patent and technology experts that maps the infringement of a specific product or service against every aspect of an Independent Claim in a patent. A Claim Chart is the evidence presented in a patent infringement lawsuit by the plaintiff to prove infringement of his or her or its patent.
Continuation – A patent application that is filed before a patent is granted to create a new patent application that shares the Claims and Priority Date of the prior patent filing. The purpose of a Continuation is to create a new patent that expands on the invention covered in the prior patent. It is a wise practice to file a Continuation before a patent is granted so that should the inventor or assignee discover something he or she or it wants to add to the original invention, the Continuation can be used to do that. A Continuation can be filed from a Continuation Application to create yet a third patent that shares the Claims and Priority Date of the first patent, and this process can be continued indefinitely. The only downside of a Continuation is that it does not have a full patent life of 20 years from its Application Date, but 20 years from its Priority Date, the Application Date of the original patent in the patent family.
Copyright – Protection of written works (such as books, plays, newspapers, and magazines), recordings (songs and motion pictures), and visual arts (such as paintings or other artwork). Copyrights convey to the copyright owner an exclusionary right – the right to prevent others from copying, offering for sale, performing, displaying or making derivative versions of a work of authorship. The duration of a copyright depends on several factors, but is at least 70 years.
Damages – What is paid to the plaintiff as the settlement of a lawsuit to compensate the plaintiff for the harm (or damage) done to him, her or it
Damages Expert – Third-party with documented expertise who helps calculate the economic damages suffered by the plaintiff in a lawsuit including lost income and use of the patented invention
Defendant – The business or other entity that is being sued for patent infringement. The term “defendant” is also used to describe a person charged with a criminal offense.
Defensive Patenting – Acquisition of a patent by a business to prevent competitors from using it in their products or to protect the company from patent infringement litigation and create a shield against patent claims.
Design Patent – A U.S. Patent that covers not how an invention works (that’s a Utility Patent), but the design, shape, ornamentation, or visual appearance of an item. A Design Patent should not be confused with a Trademark that covers the name or brand of a product.
Divisional – A patent application that is file before a patent is granted to create a new patent application that includes some of the Claims from the original patent filing and the original patent filing’s Priority Date.
Expired Patent – A patent that is no longer valid and enforceable because the period provided by law for a U.S. Patent (20 years from the Application Date or Priority Date) has run out
Forward Citation – A patent that cites a previously filed patent as Prior Art. The more Forward Citations a patent has, the more foundational is the invention covered by that patent.
Google Patents – A free service provided by the search engine Google that lists all U.S. Patents and published patent applications, as well as PCT and EPO Patent Applications and patent filings from about 40 nations. Many in the IP community find Google Patents (https://patents.google.com/) easier to use that the Patent Office website (www.uspto.gov).
Infringement Analysis (or Initial Infringement Analysis) – A detailed study of a patent by a team of patent and technology experts to identify infringers of the patent. An infringement analysis is often performed to decide what Claim Charts should be developed.
Intangible Assets – A common line item on a Balance Sheet that includes such assets as patents, trademarks, trade secrets, and good will
Intellectual Assets – Patents, copyrights, trademarks, service marks and/or trade secrets assigned to a business, as well as other non-tangible assets such as good will and know-how
Intellectual Property (or “IP”) – Patents, copyrights, trademarks, service marks and/or trade secrets
Intellectual Property Audit – A review of an entity’s intellectual property to ensure that all intellectual property is current and valid, that is being properly enforced, and what intellectual assets can be converted into intellectual property by filing for patents, copyrights, trademarks, or service marks.
Inter Partes Review – A review of the validity of a patent, or Claims in a patent, by a third party. Inter partes claims are sometimes filed by patent owners who believe that a newer patent should not have been granted as it essentially covers the invention in the filer’s patent or by an infringer who seeks to have the patent invalidated so it cannot be asserted against that filer.
IP Community – Patent attorneys, patent agents, patent brokers, patent litigators, IP counsel, IP directors, and others involved in the prosecution, monetization, and commercialization of patents and other forms of intellectual property
IP Consulting (or Intellectual Property Consulting) – A package of services provided to owners of patents, trademarks and service marks, copyrights, trade secrets, and other intellectual property that enables them to make better use of, and/or receive a better return of their investment in, their intellectual property.
IP Director – A manager at a business that is responsible for the acquisition of patents and the management of the business’s patent inventory
IP Portfolio Mining – Review and analysis of an entity’s patents, trademarks, and other IP inventory to determine which have value that can be returned to the entity and how.
IP strategy – Comprehensive mix of tactics and strategies such as knowing what the competitors’ patent portfolios are worth, identifying potential patent infringers and licensees, proposing strategic alliances, and identifying intellectual assets that have not been monetized or commercialized
Lapsed Patent – A patent that is no longer valid and enforceable because the assignee failed to pay a Maintenance Fee
Licensee – The part that pays a royalty in exchange for the use of a patented technology
License-to-Buy (or License-to-Acquire) – A Patent License Agreement that gives the licensee the option to acquire the patent for a pre-agreed-to price at any time. In most such agreements, the royalties paid by the licensee are credited in full or part against the purchase price.
Licensor – The patent owner that collects a royalty in exchange for the use of the patent technology
Maintenance Fee – Once a patent is granted, there are three Maintenance Fees that must be paid to keep a patent valid and enforceable. The first Maintenance Fee is due three-and-a-half years from when the patent is granted, the second Maintenance Fee is due at seven-and-a-half-years, and the third Maintenance Fee is due at eleven-and-a-half years. The Patent Office bills the assignee for each Maintenance Fee.
Non-Provisional Patent Application - A patent application that is usually filed by an inventor that will not be practicing the invention covered by the patent and that the inventor hopes to monetize. A Non-Provisional Patent Application is published shortly after it is filed. See Advice for the First-Time Inventor for more information about a Non-Provisional Patent Application.
Out-of-Court Settlement – An agreement among the parties to a lawsuit (both a patent infringement lawsuit and other civil lawsuits) to end the trial and provide compensation and other considerations
Patent Agent – A person who is not an attorney and has been approved by the U.S. Patent and Trademark Office to assist inventors in the prosecution of their patent applications
Patent Assertion – Enforcement of a patent by the owner of that patent or an agent of the owner of the patent through litigation against the infringer
Patent Assertion Firm – A business that specializes in asserting a patent or patents on behalf of the patentee. A patent assertion firm typically works on contingency and splits the revenue it generates with the client or patentee. A Patent Assertion Firm requires that clients seeking its service prepare and present Claim Charts to document the infringement before it considers representing the patent owner.
Patent Attorney – An attorney who has been approved by the U.S. Patent and Trademark Office to assist inventors in the prosecution of their patent applications
Patent Broker – A firm that represents the owner (or “assignee”) of a patent application, patent, patent family, or patent portfolio with the goal of selling, licensing, or otherwise monetizing the asset. A patent broker typically charges a modest fee on the front end and a larger fee on the back-end based on the revenue generated by its efforts.
Patent Commercialization – The generation of revenue from the practice (or use) of a patent by manufacturing and selling a product or service based on the technology covered by the patent
Patent Enforcement – Process that involves identifying infringers of a patent infringers and preparing Claim Charts so lawsuits can be filed against the infringers
Patent Infringement – Use of technology covered by a valid and enforceable patent without permission of the patent owner. The infringing product must “read” on all aspects of at least one Independent Claim in the patent. The infringing device or process may have other features besides those that are covered by the patent, but those additional features do not negate the fact that the product or process infringes the patent.
Patent Family – A group of patents that were created by filing Continuations or Divisionals so that all the patents share the same original root patent and the same Priority Date
Patent License – An agreement granting use of a patented invention to a third party so that party and produce and sell a product or service based on that patented invention in exchange for a royalty based on dollar or unit sales
Patent License Agreement – The document that details the terms and conditions of the licensing of a patent or patents. The terms and conditions are negotiated and ultimately agreed to by the licensor and licensee who both sign the agreement.
Patent Litigator – An attorney that represents plaintiffs and defendants in patent-related litigation
Patent Monetization – The generation of revenue from the sale or licensing of a patent or from other business arrangements such as an asset swap or joint venture
Patent Portfolio – A group of patents that can be from different filings and different patent granting authorities that cover a common inventions or different aspects of the same invention. Patent portfolios are often sold as a package to one acquirer, but the patents in the portfolio can be broken up and sold to multiple buyers.
Patent Prosecution – The process of taking a patent application through examination by the U.S. Patent and Trademark Office with the goal of being awarded a patent. Patent prosecution is performed by a patent attorney or patent agent. The term “prosecution” is also used when a district attorney or “prosecutor” tries a criminal case.
Patent Purchase Agreement – The document that details the terms and conditions of the sale of a patent or patents. The terms and conditions are negotiated and ultimately agreed to by the seller and buyer who both sign the agreement. It is often referred to as a “PPA.”
Patent Triage – A review of an entity’s patents to determine which are being practiced by the entity and which could or should be sold or licensed, and which should be abandoned or given away
Patent Trial and Appeal Board – The agency within the U.S. Patent and Trademark Office that hears inter partes and post grant appeals, and reviews requests for reviving lapsed patents. The agency is often referred to as the “PTAB.”
Patent Troll – Derogatory term used by infringers to describe Non-Practicing Entities that assert their patent rights
Patent Valuation – Putting a fair market worth on a person’s or entity’s patent(s) based on what similar patents have sold for, key dynamics of the patent such as Forward Citations, the technology of the invention, the market for a product or service based on the patent, and the industry into which such a product or service would be sold.
Patentee – The person, business, or other entity that owns the patent under discussion
Plaintiff – The owner of a patent that has been infringed and is suing the infringer in court.
Plant Patent – A U.S. Patent that covers a vegetable, fruit, flower, tree, or other botanical product
Post-Grant Appeal – A trial that reviews and determines the patentability of a patent's claims. Post-Grant Appeals are conducted by the Patent Trial and Appeal Board.
Prior Art – Patent filings and other documents that included in a patent application filing to explain similar, but not identical, to the technology of the invention covered by the patent application that is being filed
Priority Date – The date on which a patent application was first published. In the case of a continuation application, it is the date on which the first patent application in the patent family was filed. When a patent is asserted, its Priority Date is a critical factor in establishing when patent coverage can be back-dated to.
Provisional Patent Application – A patent application that is usually filed by an entity that will practice the invention covered by the patent to establish an early as possible Priority Date for the patent filing. After 12 months, the patent application will expire unless it is converted into a Non-Provisional Patent Application. See Advice for the First-Time Inventor for more information about a Provisional Patent Application.
Published Patent Application – A patent application that has been made public by the USPTO. The complete patent application appears at the Patent Office website and other patent sites such as Google Patents. Publishing a patent application makes it easier to monetize the patent application.
Section 101 Rejection – Rejection of a patent application because it fails to meet the requirements for patentability as defined in Section 101 of U.S. patent law.
Summary Judgement – A court's final decision in a civil case that ends the case without a trial. A party can request a summary judgment for the entire case or for part of it. Where a Summary Judgement comes into play during patent infringement litigation is when the court deems that a patent is not valid, is not being infringed, or that the plaintiff has failed to make a prima facie claim of infringement.
Term Adjustment – A period of time added to the life of a patent because the Patent Office was lax in its review of the patent application
Term Sheet – A typically one-page document that is used to prepare a Patent Purchase Agreement or Patent License Agreement. It summarizes all the key aspects of the agreement such as purchase price or royalties to be paid as well as other terms and conditions mutually agreed to by the parties to the agreement. It may go through several drafts until it is finalized.
U.S. Patent and Trademark Office (or “USPTO”) – The agency in the U.S. Department of Commerce that is responsible for reviewing applications for patents, trademarks, and service marks, and granting patents, trademarks, and service marks consistent with U.S. law. The Director of the U.S. Patent and Trademark Office is also the U.S. Department of Commerce Undersecretary for Intellectual Property
Utility Patent – The most common form of a U.S. Patent, it covers inventions. The other types of patents are Design and Plant.
