Abandonment (US): An application that has been declared abandoned is dead and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response from an applicant to an Office Action letter within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances. See Request for Reinstatement.

Abridgement (NZ): A summary of the disclosure of a patent specification, formerly written by the Patent Office examiner.

Absolute novelty: A system whereby any prior publication or prior use anywhere in the world destroys the novelty of a patent.

Abstract (EP): A summary of the disclosure of a patent specification, written by the applicant.

Acceptance (NZ): The formal decision by the Patent Office that a patent should be granted.

Account of profits (EP): Alternative to damages, based on profits made by infringer.

Active Inducement to Infringe (US): One may be held liable for patent infringement as a result of actively encouraging another to infringe if such other does infringe, even though the inducer has not made, used, sold, offered for sale, or imported the patented invention.

Acquisition (ALL): The Acquiring, or takeover, of a company by buying up the company shares giving the buyer voting control of the company.

Address for service (UK): The address to which a court will send or serve all correspondence relating to a particular Patent application. See Contact Address.

Advisory action (US): An official action issued by the US examiner when a final rejection is being maintained.

Affidavit (UK): A signed and sworn statement putting certain facts or opinion on record. Such a document is often used as evidence in court proceedings

Aggrieved Person (UK): interested person: person prejudiced by the grant of patent.

AIPA (US): American Iinventors Protection Act of 1999.

AIPPI (ALL): The International Association for the Protection of Intellectual Property.

AIPLA (US): American Intellectual Property Law Association.

Allowance (US): This is the same as the UK concept of acceptance.

Alternative Dispute Resolution (ADR) (US): Alternatives to the court system to resolve disputes. This usually refers to mediation or arbitration. May include mechanisms set out in contracts.

Ambiguity (NZ): One of the grounds used for Revoking a Patent where an objection is made that the scope of any Claim of the complete specification is not sufficiently and clearly defined.

Amendment (UK): Alteration made to a patent specification during prosecution or after grant.

Amicus curie (UK): A brief filed before a court by a party that is not a party to the lawsuit usually to speak to the desirability of legal precedents that may be made in the decision or the public interest.

Analogous use (UK): "The application of a well-known thing to an analogous use is not the proper subject for a patent." But must have been an analogous use before the mere proposal; to use is not sufficient.

ANDA, Abbreviated New Drug Application, is the process of obtaining approval to market a generic drug. An ANDA contains information demonstrating that the generic drug is bioequivalent to the brand-name product and certification that the generic drug does not infringe on any patent for the brand-name product listed in the Orange Book or certification that the listed patents are invalid.

Anti-trust (US): Laws or regulations to prevent the abuse of monopoly

Anticipation (UK/US): Prior art which destroys the novelty of a claim by fully describing something falling within it.

Anton Piller Order (UK): Is a special type of injunction, which can be granted by the discretion of the court. An Anton Piller Order is granted where there is a real risk that the defendant may dispose of infringing items and documents relating to it's infringing activities.

With an Anton Piller order the court, in addition to granting an injunction against the defendant, also orders the defendant to allow the plaintiff's solicitors to enter its premises to look for, inspect and take away any infringing items and documents relating to the defendant's infringing acts.

This type of order is not granted lightly. It is only available where there is clear evidence that the defendant has incriminating evidence and may destroy such evidence before an application can be made to the court. Such an order can be obtained in a matter of hours.

Apparatus Claim (US): This refers to that part of a patent document called the Claims. An apparatus Claim provides a structural description of a piece of equipment that is embraced by the expression "machine" in the definition of patentable subject matter in the US Patent Statute. Drawings of the apparatus are essential.

Appeal brief (US): A summary of the arguments why the invention should be patentable, submitted to the board of appeals.

Applicant¹ (US): In the US applicants must be individuals. An application for patent is filed under 35 USC 111(a).

Applicant² (NZ): See s7 NZ Patents Act: may be person claiming to be the first and true inventor, or assignee of the first and true inventor, and may be made by that person alone or jointly with any other person. Universal term.

Apportionment of Profit (US): A measure of damages in patent-infringement litigation. Apportionment generally refers to dividing the profits on the sale of a particular piece of apparatus or a product according to the percentage of cost or sale price attributable to the patented invention. Where the whole of the product is covered by the patent, or where the patented component contributes all of the market value, apportionment of profit is not necessary.

Arbitration (UK): A method of ADR whereby a mutually agreed to third party resolves a dispute. Normally both sides agree to be bound by the decision in contrast to mediation.

Argument (US): The process by which a lawyer or other person tries to persuade the court, based on the record, to find for his side. The Attorney’s Canon of Ethics (sic) require there be some basis in the record for such arguments.

Article (NZ): Section 2 of the NZ Patents Act: includes any substance or material, and any plant, machinery, or apparatus, whether affixed to land or not.

Assignee (US): The person or company to whom ownership of the patent is transferred. Usually by assignment in writing. Note exception...Matrimonial Property Act. A Universal term.

Assignment (US): A transfer of ownership of a patent application or patent from one entity (assignor) to another (assignee). All assignments should be recorded with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.

Automatic prohibition: 30-month stay is the automatic prohibition of FDA action on an ANDA with a Paragraph IV certification if the brand-name company files a patent infringement suit against the generic applicant within 45 days.

Background of the Invention (ALL): A specific subsection of a patent application outlining the relative prior art and problems associated with a technology.

Belated opposition (NZ): An application to the Patent Office for revocation of a newly granted patent. Under s42 of the Patents Act – Revocation of Patent by Commissioner.

Berne Convention: A Convention for the Protection of Literary and Artistic Works. See http://www.wipo.int/treaties/en/ip/berne/index.html.

Best Endeavours (UK): A licensee must use best efforts to ensure that the product for which he holds the licence sells.

Best mode requirement: (US/UK/NZ) The obligation to describe the best way of carrying out the invention at the date of filing the application. It imposes on the inventor the requirement to disclose the best version of the invention, not an alternative second best another inferior version.

Bioequivalence is the Food & Drug Administration requirement that the active ingredient of a generic drug be absorbed into the body and metabolized in approximately the same amount over approximately the same period as the active ingredient of the innovator drug. Bio-equivalence is demonstrated in two ways. Dissolution testing determines if the generic drug product dissolves in approximately the same amount of time as the innovator product. Blood-level testing is done by giving the generic drug product to humans and measuring how much of the drug enters the bloodstream, how fast it does so, and how long it takes to leave the body.

Blocking patent (UK): See defensive patent.

BPAI (US): Board of Appeal Interferences.

Boiler plate (UK): Standard clauses in contracts.

Bolar Provision (US/UK/EU/NZ): An Exemption which states that it is not an infringement to make, use, offer to sell, or sell within- or import into - eg the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products. A specific 'Bolar' type exemption has been included in Directive 2004/27/EC which allows for: conducting the necessary studies and trials with a view to the application of [the abridged procedure for obtaining a marketing authorisation for generic medicinal products] and the consequential practical requirements shall not be regarded as contrary to patent rights or to supplementary protection certificates for medicinal products."
Other Countries having similar exemptions include,Australia, New Zealand, Argentina, Japan, Canada and Malaysia. The wording of the EU exemption is narrower than that for the US.

Budapest Treaty (ALL): A Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. See http://www.wipo.int/treaties/en/registration/budapest/index.html.

CAFC (US) (Court of Appeals for the Federal Circuit): All patent decisions are appealed to this court rather than to the Appellate Courts throughout the United States. While the CAFC decisions can be appealed to, and overturned by, the Supreme Court, the Supreme Court takes few patent cases and so the CAFC is the court which primarily determines the patent law.

Caveat (UK): A request to be informed of future events relating to a patent application or granted Patent. See Request for Information. .

Cease and Desist(US/UK/NZ): A letter written by a Patent owner to an alleged infringer, ordering the alleged infringer to stop making, using, selling, or offering for sale the patented Invention. The matter should never be ignored and may result in an injuction to stop the infringing activity. In many cases the order will come with a proposal to negotiate a license from the patent owner..

Celotex Order (UK/NZ): Arises with respect to extension of term of patent, it is a protective order for third parties beginning trade in the patented goods during the inter regnum.

Certificate of Correction (US): Issued upon patentee request due to a USPTO or applicant minor error in the patent such as printing, typographical, or clerical errors.

Certiorari (US): The Supreme Court has discretion as to which cases it wants to hear and decide. To have the Supreme Court review a lower court decision, a litigant must petition the Supreme Court on a writ of certiori. If the Supreme Court grants the petitioners request for certiori, the litigants prepare appeal briefs and the Supreme Court hears the case. The Supreme Court grants certiori on about 1% of the certiori petitions.

Chapter One (PCT): The first, mandatory phase under the Patent Cooperation Treaty (PCT). This phase includes an international-type search, issuance of an International Search Report and publication of the application and Search Report by the International Bureau of WIPO.

Chapter Two (PCT): Second stage in PCT. Extra fee for International Preliminary Examination Report (IPER) and defer national phase Entry for 30/31 months (country dependent).

Characterising clause (EP): The part of a German or European style claim that indicates the novel features of the invention.

Civil Procedure Rules (UK): The rules, which govern the procedure and format of proceedings before the courts. Hearings before the UK Patent Office are also based on the provisions of the Civil Procedure Rules.

CIP (US): See Continuation-In-Part below.

Claim (ALL): The part of a patent specification that defines the legal scope of the protection sought by an inventor. Each claim is a single sentence in a legalistic form that defines an invention and its unique technical features. A valid claim is one that reads on the invention described in the specification but does not read on any prior art. Each and every Claim must be clear and concise and supported by the description.

Classes (ALL): A term relating to both Patents, Trademarks and Designs. Classes allow technical and descriptive matter to be categorised and searched.

Clean hands doctrine (US/UK/NZ): The principle that equitable relief such as enforcement of patent rights by an injunction can be granted only to one who has acted in good faith.

Cognating (NZ): The combination of two provisional specifications into one Complete after Provisional (C.A.P.) application.

Collocation (UK): Admixture of known things, no synergy. See s2. cf combination.

Combination (UK): A number of parts interacting together. cf collocation. A Universal term.

Combining Prior Art (US): Under Section 102 of the US Patent Statute, a claim must be identically disclosed in a single prior-art reference in order to be rejected as being anticipated by prior art. Under Section 103 of the Patent Statute (which deals with the standard of obviousness) one is permitted to employ a single prior art reference, or may combine two or more references to render a claim obvious if such a combination would be apparent to one skilled in the art. In both cases a patent examiner can reject a patent application, or a patent claim can be ruled invalid by a court.

Community Patent (EP): A proposal for a single Patent application to be Granted for the whole of the 25 European Union States. Does not yet exist (2005).

Community Trademark (EP): A mechanism allowing a single application to be given uniform Trademark protection and to be enforceable in all 25 European States.

Comprising (ALL): The word "comprising" in a claim renders the claim open to allow for additional elements that could be added to the alleged infringing device without avoiding infringement. For example, if a claim stated that a chair had three legs and employed the word "comprising," a chair having four legs would infringe. At the other end of the spectrum is a closed claim, which uses the expression "consisting of." This means that in a product alleged to infringe, if meaningful additional elements are added to the features recited in a claim there is no infringement. These types of claims frequently appear in the chemical and metallurgical arts. A Universal term.

Common general knowledge (UK): Goes to obviousness. Allows you to rely on textbooks, lectures notes etc, as basis for what general state of the art is. An Expert Witness is required to confirm cgk status.

Common Law Rights (US): Property or other legal rights that do not absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual. Active Federal registration of trademark can provide a higher degree of legal protection and readily demonstrated evidence of ownership of a mark. Universal term.

Communicatee (NZ): Receiver of information from overseas, who may apply for a patent in NZ.

Complete Specification (NZ): A full description of an invention filed after an initial brief description.

Compulsory licence (UK): A licence which government authorities or courts force the patentee to grant to a third party. Universal term.

Conception (US): This is the creation of the mental concept of the invention. Invention is considered in two parts . First there is the Conception of the idea and secondly there is it's Reduction to Practice

Contact Address (ALL): The address to which a Patent or Trademark Office will send all correspondence relating to a particular application.

Continuation Application (US): This is a patent application directed toward the same invention as a prior application and filed while the prior application is pending, naming the same inventive entity. The continuation application is given the benefit of the earlier filing date of the application on which it is based.

Continuation-in-Part Application (US): Continuation-in-Part (CIP). An application filed during the lifetime of an earlier non-provisional application, often repeating a substantial portion or all of the earlier non-provisional application and adding matter not disclosed in the earlier non-provisional application .

Continuation Patent Application (US): CPA. Continued Prosecution Application. A continuation or divisional application filed in a design application under 37 CFR 1.53(d). NB: CPA’s may no longer be filed in utility and plant patent applications, effective 14 July 2003.

Continuation application (US): A new filing of a US application, with unaltered specification to allow presentation of new claims.

Continuation in part application (US): A new filing of a US application, with alterations or additions to the specifications.

Contracting State (EP/PCT): A national Patent Office that is party to the Patent Cooperation Treaty. See http://www.wipo.int/pct/en/.

Contributory infringement (UK): Infringement by supplying another with the means to infringe a patent. A Universal term.

Convention Country (ALL): A state, which is a member of the Paris Convention for the Protection of Industrial Property. A Universal term.

Convention year (US): A period of 12 months from a first application in a convention country within which applications having the effective date of the original filing may be filed in other convention countries. N.B. 6 months for TM and designs. A Universal Term.

Copyright (US): An Intellectual Property Right. An Automatic that protect works of authorship, such as writings, music, films, computer software and works of art that have been tangibly expressed. In the US, the Library of Congress registers copyrights. In the US the term of copyright last for the lifetime of the author plus 70 years. In most countries the term is the author’s lifetime plus 50 years.

Counterpart (US): An application filed in a foreign patent office that is substantially similar to (like) the patent application filed with the USPTO and is based upon some or all of the same invention. The two applications would generally have the same applicant. Called an Equivalent in other jurisdictions.

Cripps Question (UK): Test for Obviousness. Originally propounded by Sir Stafford Cripps in Sharpe & Dohme v Boots "Was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent, which consists of the chemical literature available...and his general chemical knowledge, that he could manufacture valuable therapeutic agents by....?"

Critical Date (US): This refers to the date of the initial placing on sale, publication, or public or commercial use of an invention. At the end of the one-year period, a US patent application cannot be filed because the statute bars such filing. A Universal term.

Crowded Art (US): This refers to an area of technology in which there have been a large number of prior inventions. In a crowded art, it takes less of an advancement to obtain a valid patent. A Universal term.

Declaratory judgement (UK): A lawsuit filed to determine where the plaintiff is in doubt as to his legal rights. With respect to patents, this is a lawsuit filed by someone against the patentholder asking the court to declare that the inventors patent is invalid or that the plaintiff is not infringing the patent. The possibility of such a lawsuit is a source of concern for poorly financed patentholders who must be careful least something they do be seem as accusing others of infringement requiring them to defend against a lawsuit often at a distant location and at great expense.

Dedication to the Public (US): A document signed by a patent owner filed in the U.S. Patent and Trademark Office giving up all patent rights. This is generally done when the owner believes the patent is invalid.

Defensive patent (UK): A patent that does not cover what the patentee is doing, but which helps to keep competitors away from his area of interest.

Deferred examination (AU/CA/MY): A system in which the examination of a patent application may be postponed for several years until requested by the applicant.

Delivery up (UK): A court order compelling an infringer to deliver infringing goods to the patentee for alteration or destruction.

Delphion (ALL): A subscription based searching tool with extensive data coverage including collections from all over the world. Delphion is the most comprehensive sources for finding and viewing patent information. See http://www.delphion.com

Demand (PCT): Form PCT/IPEA/401 that is filed with an International Preliminary Examining Authority (IPEA) demanding that an international application shall be the subject of an international preliminary examination.

De Minimis (UK): A Short form of the Latin De minimis non curat lex, a legal term meaning that "the law does not concern itself with trifles".

De Novo (UK): A legal term meaning "anew".

Dependent claim (US): A Claim that makes express reference to and depends on an earlier claim. Such a Claim by definition incorporates by reference all of the recitals of the earlier claim from which it depends. A Dependent Claim must be read as containing its unique one or more additional feature plus the recitals of every claim or claims from which it depends.

Depositions (US): In a US infringement suit, the pre-trial stage of taking down evidence on oath.

Description (ALL): That part of a Patent application giving sufficient instruction to enable a person of ordinary skill in the art to make or perform the invention. The description forms the basis for the Claims. The description can cover subject matter broader than the Claims. The Claims may never be broader than the description.

Designation (EP Patent Office, PCT): The naming of the countries and Regions for which a European or PCT application is being filed. In most instances all countries and Regions are designated.

Designated Office (EP/PCT): Designated Office. The national Office or intergovernmental organization of or acting for the Contracting State designated by the applicant under Chapter I of the Patent Cooperation Treaty.

Design Patent (US): A type of patent covering the new, original and ornamental aspects of an article of manufacture (product). The prime focus is on the overall appearance of the new product. An application will also contain a textual description of the product.

Dicta (UK): The part of a courts decision that was not necessary to reach a decision. As such it has relatively low weight as precedent. A.k.a. obiter dicta. cf ratio decidendi.

Diligent Searcher (ALL): A substantive search looking at the state of the art at the earliest date of Filing of the Patent. Using the “diligent searcher concept” the search agency conducts an investigation of the art without knowledge of the scope of the claims or of the "invention". The Diligent Searcher simply knows the problem the invention purports to solve. It is permissible to cast the problem using the terminology from the patent specification as long as it does not delineate the solution but simply sets the bounds for the search enquiry

Disclaimer (US): The exclusion of specific subject matter from the scope of protection claimed.

Disclosure (US): This term can refer either to an invention disclosure of an product or method that is not the subject of a patent application and may be use, display or an oral or written communication of a development. The term can also refer to portions of a patent application, generally those parts other than the Claims. A Universal term.

Discovery (US,UK): A court order to parties in an infringement action to produce relevant documents. Here the courts have the power to order a person who has not committed any infringing act, but who has innocently become involved in assisting others to commit infringement, to give full information and disclose the identity of the infringers.

This type of order for discovery against an innocent party enables a person to discover the identity of any infringer who is manufacturing, importing, supplying or putting the infringing goods into circulation. This type of action is more effective than numerous separate actions against individual retailers.

Doctrine of Claim Differentiation (US): This is a judicially created rule of Claim construction that states that when two claims in the same patent have an apparently similar or identical meaning, an effort should be made to adopt an interpretation that will give them a different (as distinguished from identical) meaning.

Doctrine of Equivalents (US): A doctrine which says that if a patent claim does not literally read on a possibly infringing device, it can be read more broadly providing it does not read on the prior art. It is designed to allow the inventor to assert a patent where the differences between the inventor’s and an infringer’s product are not substantial. (See Hilton Davis Chemical Company v. Warner-Jenkinson Company, Inc. 93-1088). A Universal Term.

Double Patenting (US): A doctrine that states that an invention cannot be twice patented. An inventor cannot obtain claims in two patents directed either to the same invention or to an obvious variation of the same invention. Where the inventions are identical, the second patent is invalid. With respect to obvious variations, this rejection can be overcome by filing a terminal disclaimer which states that the second or any additional patents to issue will expire on the same date as the first patent, thereby eliminating any improper extension of the period of exclusivity resulting from the second or additional patents.

Drawings (ALL): Patent drawings must show every feature of the invention as specified in the Claims. Omission of drawings may cause an application to be considered as incomplete. Apparatus Claims must be accompanied by drawings showing the inventive feature(s). This is also important for Provisional Applications.

Due Diligence (ALL): The process of investigation, performed by investors, into the details of a potential investment or agreement, such as an examination of operations and management and the verification of material facts.

Early publication (US/EP/PCT): Publication of an application before examination. Most countries, including the US now publish before examination 18 months from earliest priority. New Zealand is an exception and makes public the invention only after acceptance of an application.

Embodiment (ALL): A manner in which an invention can be made, used, practiced or expressed. It is generally considered to be non-limiting and fulfils the best-method obligation.

Enabling disclosure (ALL): A description sufficient to enable the reader to carry out the invention.

En banc (US): Normally an appellate court such as the CAFC randomly assigns a panel of three of the court’s full complement of 12 (or more) judges to consider each case. When the whole court considers a case it is called an en banc decision and is generally done to address fundamental and controversial issues that have been before the court and so has very strong value as precedent.

Enforceability (US): The right of the patent owner to bring an infringement suit against an alleged infringing party who, without permission, makes, uses or sells the claimed invention. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action. See 35 USC 286-296

Entitlement (UK): The right to own a patent or patent application. A dispute about entitlement can be resolved by bringing entitlement proceedings before the UK Patent Office or the courts.

ePAS (US): Electronic Patent Assignment System. See Also eTAS.

EPO (EP): European Patent Office. See http://www.european-patent-office.org/index.en.php.

Equivalence (US): The extension of the scope of a patent to cover something outside the literal wording of the claims.

Equivalent (EP/UK): An application filed in a foreign patent office that is substantially similar or equivalent to the first filed patent and is based upon some or all of the same invention. The two applications would generally have the same applicant and priority date.

Estoppel (US): The barring of a person from claiming a legal right because of an earlier act incompatible with his claim, e.g. File Wrapper Estoppel.

eTAS (US): Electronic Trademark Assignment System.

eTEAS (US): electronic Trademark Examination Application System - electronic trademark filing system. It allows the public to complete various trademark filings and transactions on-line. For example, eTEAS allows you to complete trademark Applications, preliminary amendments, amendments to allege use/statements of use in responses to Office Actions, and post registration filings online, and then submit them directly over the Internet, paying by credit card, electronic funds transfer or an existing USPTO deposit account.

European Patent (EP): Allows an applicant to file a single application covering all 25 EPC Contracting States. A European Application must be filed in an "Official Language", either German, French or English. In most contracting states for a Patent to take effect it must be validated for that Country.

Examination (ALL): A Scrutiny by an Official of a National Department or Region of an application to determine acceptability of a Patent, Trademark or Design. Patents are Examined to determine if an invention is novel, contains an inventive step (not obvious) and is industrial applicable (useful).

Exclusive licence (US): A licence that excludes use of the invention by all others, including the patentee himself. A Universal Term.

Exclusivity: 180-day exclusivity is the marketing exclusivity granted to the first applicant that files an ANDA with Paragraph IV certification.

Excusable Non-Use (US): A Trademark term relating to a Section 8 application for non-use. A sworn statement, filed by the owner of a registration, that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Section 8 of the Trademark Act, 15 U.S.C. 1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods:

(1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946), AND

(2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.

Once the USPTO accepts the Section 8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another Section 8 Declaration until the next statutory filing period.

Exhaustion of rights (EP): The principle that when the patented goods have been sold by the patentee, he has no further control over them. A Universal Term.

Ex parte (ALL): A procedure between a single party and a decision maker, as opposed to inter partes which is a procedure between a two parties with a decision maker. The patent prosecution process is an ex parte procedure.

Experimental Use (US): Under Section 102(b) of the US Patent Statute, there are a number of statutory bars which state that one cannot file a US patent application more than one year after the initial placing on sale, publication, or public use of an invention. If the use was, in fact, experimental use rather than public or commercial use, such use is not counted in computing the one-year period. The experimentation must be to verify that the invention works for its intended purpose as distinguished from other factors such as marketing research. In addition, exceptions are allowed for in Canada and NZ allowing manufacturers of generic products to circumvent patent infringement liability if they make, sell, conduct field trials or experiments in respect of a patented product, regardless of the extent of those activities as long as they can prove that the use was to obtain regulatory approval for the product.

Express Abandonment (US): A patent application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment becomes effective when an appropriate official of the Office takes action thereon. Express abandonment of the application may not be recognized by the USPTO before the date of issue or publication unless it is actually received by appropriate officials in time to act. Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one, which is removed from the USPTO docket of pending applications.

Expressio Unius est exclusio alterius (UK): A legal term meaning "the mention of one is to the exclusion of the other".

Extension or prolongation of term: Prolongation of a normally fixed term such as the life of a patent.

Fairly based [of a claim] (UK, NZ): The descriptive part of the specification or by a priority document that provides support for a later filed application or the monopoly being sought.

False Suggestion (NZ): One of the Grounds for Revoking a Patent where an objection is made that the patent was obtained on a false suggestion or representation".

File history or file wrapper (US): The dossier containing all papers relevant to the prosecution of an application.

File wrapper estoppel (US): A principle forbidding the patentee from asserting a scope broader than the literal wording of the claims if the claims are narrowed during prosecution to avoid prior art.

Filing Date (ALL): The date of receipt in the Office of an application which includes

(1) a specification containing a description and, if the application is a non-provisional application, at least one claim, and

(2) any required drawings.

Final rejection (US): An official action severely limiting further prosecution. An Office action on the second or any subsequent examination or consideration by an examiner that is intended to close the prosecution of a non-provisional patent application. An Applicant's reply under 37 CFR 1.113 to a final rejection is limited either to an appeal in the case of rejection of any claim to the Board of Patent Appeals and Interferences (37 CFR 1.191) or to an amendment complying with the requirements set forth in the Office action (37 CFR1.114 or 1.116). Reply to a final rejection must comply with 37 CFR 1.114 or include cancellation of, or appeal from the rejection of, each rejected Claim. If any claim stands allowed, the reply to a final rejection must comply with any requirements or objections as to form (37 CFR1.113(c)).

Fingerprint claim: A claim characterising a new product of an unknown structure in terms of its properties.

First to File (EP): In the European patent system, the patent is awarded to the first person to file an application on that invention independent of who was the first to invent. (cf First to Invent).

First to Invent (US): In the United States the patent is awarded to the first person to make an invention independent of who was the first to file an application for that invention. (cf First to File).

Foreign filing: Filing in countries other than the country of first filing.

Forum shopping (US): Legal manoeuvring to try to have a suit heard by a court thought favourable to one’s own side.

Franchise (ALL): Franchising may be defined as a business arrangement which allows for the reputation (goodwill), innovation, technical know-how and expertise of the innovator (franchisor) to be combined with the energy, industry and investment of another party (franchisee) to conduct the business of providing and selling of goods and services. The franchisee will operate under the franchisor's Tradename, usually with the franchisor's guidance, in exchange for a fee.

Fraud on the Patent Office: (US) Obtaining a patent by concealment or misrepresentation of the facts.

Generic drug (multisource pharmaceutical) is a pharmaceutical preparation that is essentially similar to an original product, involves an active ingredient that is no longer protected by patent, is approved for sale by a simplified registration, and is sold under a common name with little, if any, promotion.

Generic claim (ALL): A claim that covers a number of compounds defined by common structural features.

Geographical Indication (ALL): A sign used on goods that has a specific geographical origin and possesses qualities or a reputation that are due to that place of origin, e.g. "Roquefort" for cheese produced in France.

Gillette Defence (UK/NZ): Given to us in the Gillette Safety Razor V Anglo Trading Case (1913) where a defence to an alleged infringement was made that the infringement was obvious. The argument was that if the Patent in suit was read broadly it covered areas it wasn’t entitled too, if the Patent was read narrowly then there was no infringement.

Goodwill (ALL): The benefit and advantage of the good name, reputation and correction of a business with its customers, suppliers, and distributors". It is often referred to as the attractive force, which brings in custom.

Goodwill as the subject of proprietary rights cannot exist by itself. It has no independent existence apart from the business to which it is attached. In an acquisition, goodwill appears on the balance sheet of the acquirer in the amount by which the purchase price exceeds the net tangible assets of the acquired company. The most obvious form of goodwill is seen as the name, sign or trade marks under which a business trades and by which it is recognized in the market place.

Grace period (US/AU/MX): A period of time before the filing date of an application during which certain types of publication do not invalidate the application. From the date of first disclosure or publication, the US has a 12 month Grace period for filing an application.

Hague System (ALL): A system for the International Registration of Industrial Designs. See http://www.wipo.int/hague/en/.

How to Make (US): This is part of the obligation to provide a disclosure in the patent application that would enable one skilled in the art to practice the invention without engaging in undue experimentation.

How to Use: This is a similar standard to the "how-to-make" standard and relates to the use aspect of an invention, if appropriate.

Improvement Patent: Refers to a patent that is issued on an application filed later in time than a prior application and tends to build upon the previously disclosed invention or the previously disclosed and claimed invention.

Indefiniteness of Claim (US): Section 112 of the Patent Statute requires that the claims be sufficiently definite so as to provide a standard by which a third party could, with some degree of certainty, determine whether a given practice would or would not be an infringement of the claims.

Industrial Design (EP, UK): An industrial Design is the ornamental or pleasing appearance of an article. A Design can have 3-Dimensional (shape) or 2-Dimensional (pattern) when applied to an article.

Infringement (ALL): (1) Doing something forbidden by the grant of a patent to another. (2) Encroach or trespass on the rights of others, usually involving intellectual property. A device infringes on a patent if the claims of a valid patent read on that device. Infringement can be direct or Literal Infringement, infringement under the Doctrine of Equivalents, Contributory Infringement or Active Inducement to Infringe.

Infringer (ALL): Any party that who makes, uses, sells, places on sale, or imports into the country where the patent is in force the invention as claimed.

Independent Claims (US): Claims that do not depend from another are referred to as independent Claims.

Injunction (ALL): A court order obligating an offending party to cease doing an illegal act, such as infringing another party’s Intellectual Property Rights.

Innocent infringer (UK): An infringer who could not be expected to know of the existence of the patent, and consequently who does not have to pay damages.

INPADOC (ALL): A wonderful Resource for obtaining Patent Information. INPADOC is one of the most comprehensive patent collections in the world. Produced by the European Patent Office and updated weekly, this database contains patent family documents and legal status information from 65 WIPO signatories and 22 patent offices, respectively. See http://www.european-patent-office.org/inpadoc/.

In re Pardo (US): An important precedent that says that something does not cease to become patentable merely because the point of novelty is an algorithm. (Scheme or plan).

Insufficiency (UK): A ground of invalidity of a patent, if the description does not enable the reader to work the invention.

Intangible Asset (ALL): Something of value that cannot be physically touched, such as a brand, franchise, Trademark, Copyright, or Patent. The opposite of a tangible asset.

Intellectual Property (ALL): Creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.

Intellectual property is divided into two categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs.

Intellectual Property Regulations (37 CFR) Index (US): A list of the Rules concerning Patents, Trademarks, Designs and Copyrights in the US. See http://www.bitlaw.com/index.html

Integer (ALL): A distinct feature or element of a claim.

Interested person (UK): See aggrieved person.

Interference (US): A procedure declared by the patent office when it appears that two or more people made the same invention at roughly the same time. It is an expensive, lengthy court-like proceeding designed to determine who was the first inventor. About 1/10 of 1% of patents are involved in interference.

Interlocutory injunction or interim injunction (UK): A court order to (usually) cease certain acts eg alleged infringing acts pending the trial of the action. Continue with rest of definition. In seeking this discretionary remedy it is vital that the plaintiff act quickly. Delay may foreclose any chance of obtaining an injunction.

To obtain a pre-trial injunction a plaintiff will need to satisfy the court that there is a serious question to be tried and that if the defendant is not stopped now the damage to the plaintiff's business will be so great that there could be no adequate financial compensation

Internal priority (UK): the possibility of filing, within 12 months, an application claiming priority from an earlier application in the same country (e.g. C.A.P.).

International application (PCT): An application made under the provisions of the PCT.

Inter partes (UK): A procedure between two parties and a decision maker, as for example a court proceeding, in contrast to ex parte.

Inutility (UK): A ground of invalidity of a patent, if the claimed product does not give the promised results.

Inventive Step (EP/PCT): Inventive step goes to a feature that is non-obvious and is mandatory to gaining Patent rights.

Inventor (ALL): Someone who has a new idea and pursues its development. Inventors apply for patents on their inventions as a part of developing their invention. Many inventors are also product developers, entrepreneurs and businessmen and most inventors find it good marketing practice to sell themselves as product developers or, entrepreneurs or businessman, as the term inventor often having a bad connotation to a business man.

Inventor’s certificate (UK): Previous system for patents owned by state, giving the inventor some reward. Was in mainly Communist countries.

IPEA (PCT): International Preliminary Examination Authority.

IPER (PCT): International Preliminary Examination Report Released after Demand has been filed.

IPC: International Patent Classification is a hierarchical system in which the whole area of technology is divided into a range of sections, classes, subclasses and groups. The eighth edition of the IPC entered into force on January 1, 2006. See http://www.wipo.int/classifications/fulltext/new_ipc/.

ISA (PCT): International Searching Authority. There are 12 such authorities, the latest addition being that of Finland.

ISR (PCT): International Search Report. Usually within 16 months from priority date.

Jepson claim (US): Relates to a claim format. A claim in the German style that distinguishes the new from the old features. The new features are generally introduced by the words "the improvement comprising" or "the improvement consisting of" or "the improvement consisting essentially of".

Junior Party (US): The party in an interference who has the later US filing date.

Know-how (ALL): Unpatented technical or commercial information. Can be part of what are considered to be Trade Secrets.

Label licence (US): A statement that the purchase of the labelled goods gives a licence to use them in a patented process.

Language of the proceedings (EP): The language (French, English or German) in which a European patent application is filed.

Lapse (EP): A term used in some jurisdictions to show when an IP is no longer protected in a country or system due to failure to pay renewal fees or maintenance fees. In many cases a Patent can be reinstated with good reason and within a limited time period.

Large entity (US/CA): Not a small entity: In the US more than 500 employees. In Canada more than 50 employees.

Legal Status(ALL): The legal status of a patent publication includes information about events affecting the patent after the initial publication. Examples of legal status include the publication of a Patent, The publication of Equivalent Patents within the Patent Family, Assigments, Licenses, mortgages and most importantly whether the Patent is "in Force", Lapsed, Expired or if the Patent Term has been Extended

Letters Patent (UK): An ‘Open Letter’ from the sovereign to notify the grant, such as of a monopoly for a new invention.

License (ALL): A legal contract given by a licensor to a licensee the right to use a Patented invention, Trademark, Design or Copyrighted work.

Licences of right (EP/UK): An endorsement on a patent to the effect that anyone may have a licence upon reasonable terms.

Likelihood of Confusion (USA): A Trademark term. The statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.

The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are:

(1) the similarity of the marks; and

(2) the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

All other Examining Offices have a similar requirement.

Lisbon Agreement (ALL): for the Protection of Appellations of Origin and their International Registration. See http://www.wipo.int/lisbon/en/.

Literal Infringement (ALL): A term used to refer to an infringing article or process that contains every integer of a claim (literally).

Long-Felt Need (ALL): Refers to a known problem facing a particular technical area that has gone unsolved for a prolonged period. The presumption is if the solution had been obvious to those skilled in the art, they would have solved the problem.

Lost Profits (ALL): This is a measure of damages and is generally keyed to the profits that could have been the patentee’s, but were lost to the infringer. The alternate standard, where the patentee is either not in the business or cannot prove that profits made by the infringer would have been his or hers, is to employ the standard of the statute that is not less than a reasonable royalty.

Local novelty (NZ): The principle that a patent can be invalidated by prior publication only if the publication was in the country granting the patent.

Locarno Classification (ALL): The International Designs Classification System. See http://www.wipo.int/classifications/fulltext/locarno/enmain.htm.

Long felt want (NZ/UK): A rebuttal for allegation of obviousness. No one else had seen the solution to satisfy the want in the marketplace. Equivalent to Long Felt Need above.

Madrid Protocol (US/EP/UK/AU): A Trademark term. An mechanism that allows the owner of a Trademark registered in one country to apply for protection of that Trademark in other countries within the system. Administered by WIPO. See http://www.wipo.int/madrid/en/.

Maintenance fees (EP/US): Annual fees payable to keep a patent application pending. In the US, maintenance fees must be paid at 3.5, 7.5, and 11.5 years after issuance of a patent in order to keep the patent in force and maintain the exclusive right.

Man skilled in the art (UK): The hypothetical person to whom the patent specification is addressed.

Manner of new manufacture (UK): The term used in the Statute of Monopolies (q.v.) for the proper subject of a patent. Incorporated into the NZ Patents Act definition of Invention s2.

Marking (ALL): The placing the word "patent" or "patent pending" or "Patent application" along with the patent number on articles made by the patentee or a licensee. If the patentee fails to mark his or her products, then the patentee may recover only damages for infringement that occurred after the infringer has received actual notice through a charge of patent infringement. Mandatory in some countries before an infringement action can be issued. Also Called Notice.

Markush Group (US): A group of compounds or substituents defined for the purpose of a patent claim and lacking a common generic description.

Means Plus Function Claims (US): Goes to equivalence. This concept allows an applicant rather than referring to a component by a specific, limiting term or feature such as "a screw" or a "nail" but may instead refer to a feature as a means for accomplishing something. For example a "screw" or "nail" may be refer to as a "a fixing means for uniting A with B."

Mediation (ALL): A method of alternative dispute resolution in which a mutually agreed on mediator works with the disputing parties to help them reach an agreement. While mediation has a high rate of success in resolving disputes, in contrast to arbitration, a mediator has no authority to force a decision on the parties.

Mere paper anticipation: Misnomer. Part of Obviousness. An untried paper provisional is of little value.

Mere Descriptiveness (US): A Trademark term. A statutory basis (Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services.

The degree of descriptiveness can be determined only by considering it in relation to the specific goods or services. At one extreme are marks that are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks.

The major reasons for not protecting descriptive marks are:

(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and

(2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

Merger (ALL): The combining of two or more entities into one, through a purchase acquisition or a pooling of financial interests.

Minimum Documentation (PCT): The minimum requirement for a patent office collection that is used to find prior art documents (patents and periodicals) in order to assess novelty and inventiveness. See http://www.wipo.int/scit/en/standards/.

Moral Rights (USA/EP): Specific rights retained by the author of a copyrighted work to maintain the integrity of a work. Also gives the author the right to be named as the originator or creator of the work even after the copyright to it has been sold.

Mosaicing (UK): The combination of different pieces of prior art to put together all the features of claimed invention. Goes to obviousness.

Multiple Claim Dependency (ALL): A dependent claim that further limits and refers back in the alternative to more than one preceding independent or dependent claim. Acceptable multiple dependent claims shall refer to preceding claims using the terms "or, any one of, one of, any of, either." In the US, a multiple dependent claim may not depend on another multiple dependent claim, either directly or indirectly.

Multiple Inventions (US): This term refers to an application that endeavours to Claim more than one invention in a single application. In most instances an Objection will be the result. Separate inventions may be divided out as Divisional Applications and maintain their original Filing Date.

National phase (PCT): Leave PCT International Phase and file in one or more individual countries or regions.

NDA, New Drug Application, is the process of obtaining approval from FDA to market a new drug.

National route (EP/PCT): Obtaining patents in EPC countries by separate applications at national patent offices or filing elsewhere outside of the PCT.

Nice Classification (ALL): A Trademark term where good and services are divided into separate Classes according to a Nice Convention on International Classification. There are presently 45 Classes, 34 relating to goods and 11 relating to services. See http://www.wipo.int/classifications/nice/en/index.html.

No-contest clause (UK): A clause in a patent licence agreement in which the licensee agrees not to attack the validity of the licensed patent.

Non-Analysis Agreement (UK,NZ): An agreement to prevent the analysis of samples or reverse engineering. Such agreements are important as should any analysis be allowed and the constituents be found to be in the public domain they can be copied.

Non-convention application/filing (ALL): An application that does not claim priority from an earlier application, although one exists.

Non-exclusive licence (ALL): A licence that does not exclude the possibility of further licences being granted.

Non Final Office Action (US): An Office action made by the examiner where the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment.

On taking up an application for examination or a patent in a reexamination proceeding, the examiner is required to make a thorough study of the application and of the available prior art relating to the subject matter of the claimed invention. This examination must be complete with respect to:

(1) compliance of the application or patent under reexamination with the applicable statutes and rules,

(2) the patentability of the invention as claimed, and

(3) matters of form, unless otherwise indicated.

Non-staple (UK): An article of commerce whose only significant use is in a patented process.

Non-unity (EP/PCT): The condition of an application claiming more that one invention. Also referred to as Multiple Inventions.

Normal working (UK): Offering a licence to avoid the working requirement.

Notice of Allowance (US): A written notification from the USPTO that a specific application has been allowed. In the Case of a Trademark it indicates that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration.

Notices of allowance are only issued for applications that have been filed based on "intent to use".

The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned.

Notice of Appeal (US/CA): A document filed by the applicant in the USPTO to initiate an appeal of an Examiner’s rejection to the Board of Patent Appeals and Interferences.

Novelty (ALL): One of the essential conditions for patentability. It is a requirement that what is claimed is new. Novelty is present if no single document discloses every element of the Claimed invention.