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Glossary of Intellectual Property Law Terms

Understanding the complexities of intellectual property (IP) law is essential for navigating the legal landscape that protects inventions, creative works, and brand identity. This glossary provides clear and concise definitions of key intellectual property terms used in the field of IP law. Whether you are a legal professional, a business owner, or an innovator, this resource will help you grasp the fundamental concepts and terminology that underpin intellectual property rights and their enforcement. Dive in to enhance your knowledge and confidently manage your intellectual assets.

A

Abstract

Summary of the essential elements of a patent or patent application.

Actual Filing Date

The date on which a patent application is officially filed with the patent office.

After Final Consideration Pilot (Video)

A USPTO program allowing applicants to request additional consideration of a response to a final rejection.

Amazon Brand Registry Program

A program by Amazon that helps brand owners protect their registered trademarks on Amazon.

Amazon’s Utility Patent Neutral Evaluation Procedure

An Amazon program for resolving disputes regarding utility patent infringement of products sold on its platform.

Amendment to Allege Use (Video)

A USPTO process allowing a trademark applicant to provide evidence of the mark’s use in commerce.

Amendments to Patent Applications

Changes or modifications made to a patent application after its initial filing.

Annuity Fees

Payments required to maintain the validity of a patent.

Anti-Trafficking in Trademarks

Regulations prohibiting the sale or transfer of a trademark to another party for deceptive purposes.

Anticipation

A prior art reference that discloses every feature of a claimed invention, preventing a patent from being granted.

Assignment of Copyright

The transfer of copyright ownership from one party to another.

Attorney-Client Privilege

A legal principle ensuring confidentiality between a client and their attorney.

B

Best Mode Requirement

A specification requirement in patent law that the inventor must disclose the best method they know of performing the invention.

Blackout Period

A period during which certain activities, such as trading of securities or enforcing a trademark, are restricted.

Branding

The process of creating a unique name, design, or symbol that identifies and differentiates a product or company.

C

Cancellation Proceeding

A legal process requesting the removal of a trademark from the register.

Cease and Desist Letter (video)

A communication demanding that an individual or entity stop an illegal or allegedly infringing activity.

Certification Mark

A mark used to certify the characteristics of a product or service, such as quality, origin, or material.

Claim

A statement defining the scope of the invention in a patent application.

Claim Chart

A tool used in patent litigation or prosecution to compare features of a patent claim with prior art or an accused product.

Code of Federal Regulations

The codification of the general and permanent rules published in the Federal Register by the executive departments and agencies of the federal government.

Collective Mark

A trademark or service mark used by members of a collective group or organization.

Common Law Trademark

A type of trademark that is not registered but gains protection through use in commerce.

Compilations

A collection of pre-existing material or data arranged in a way that constitutes a new work.

Composition of Matter

A category of patentable subject matter that includes chemical compositions and compounds.

Conception of Invention

The formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.

Concurrent Use Application

A trademark application seeking registration for concurrent use with another user of the mark.

Concurrent Use Proceeding

A legal process to determine the right to register a trademark when multiple parties claim concurrent use.

Consent Agreement

An agreement between parties allowing coexistence of similar trademarks without likelihood of confusion.

Continuation

A patent application filed during the pendency of an earlier application, claiming the same invention.

Continuation in Part

A type of patent application that adds subject matter not disclosed in the parent application.

Continuation Patent Application — Advantages

Continuations may provide advantages such as extending the patent prosecution process and refining claims.

Contributory Infringement

A form of indirect patent infringement where a party contributes to another’s infringement.

Copyright Definition

The legal right that grants the creator of original work exclusive rights to its use and distribution.

Copyright Deposit

A copy of a work submitted to the copyright office to complete the registration process.

D

Deceptive Trademarks

Marks that are likely to mislead or deceive consumers about the nature or quality of the product.

Declaratory Judgment Lawsuit

A legal proceeding to determine the rights of parties without ordering any specific action or awarding damages.

Deferred Patent Prosecution

A procedure allowing applicants to delay examination of a patent application.

Dependent Claim

A type of patent claim that references and further limits another claim.

Design Patent

A patent protecting the ornamental design of a functional item.

Design Patent Accelerated Examination

A program offering faster examination for design patent applications.

Divisional Patent Application

An application that is divided out from a pending patent application, disclosing distinct inventions.

Domain Name Dispute Resolution

The process of resolving disputes regarding the registration and use of internet domain names.

Domestic Representative

A representative appointed within the United States for handling legal proceedings related to patents and trademarks.

Double Patenting

The improper issuance of two patents for the same invention or overlapping inventions.

E

Effective Filing Date

The date establishing the priority of a patent application.

Enablement

A requirement that a patent application must describe the invention in sufficient detail so that one skilled in the art can make and use it.

Ensnarement Defense

A defense in patent infringement cases arguing that the accused product or process is outside the scope of the patent’s claims.

Estoppel in Patent Law

Prevents a party from making assertions contrary to what is established as the truth in legal or equitable proceedings.

Ex Parte Appeal

An appeal to the Patent Trial and Appeal Board (PTAB) made by an applicant without an adversary.

F

Fair Use of Copyright

A doctrine allowing limited use of copyrighted material without permission for purposes such as commentary, criticism, news reporting, or education.

False Advertising

The practice of making misleading or untrue claims about a product or service.

False Marking of Patent

The illegal act of marking a product with a patent number that does not cover the product or is expired.

Famous Trademarks under Federal Law

Trademarks that have acquired extensive recognition, providing broader protection against infringement and dilution.

Famous Trademarks under Florida Law

Specific recognition and legal protection under Florida state law for trademarks that are widely known within the state.

Fanciful Trademark

A mark that is invented for the sole purpose of functioning as a trademark, with no other meaning.

Federal Circuit

A specialized appellate court with nationwide jurisdiction in various areas, including patent law.

Federal Trademark Registration

The process of registering a trademark with the United States Patent and Trademark Office (USPTO).

Filing Basis for Trademarks

The basis upon which a trademark application is filed, such as use in commerce or intent to use.

First Action Interview Program (video)

A USPTO initiative allowing applicants to discuss their application with an examiner before the first official action.

Formal Patent Drawings

Drawings required in a patent application that comply with specific USPTO standards.

Functional Patent Claim

A type of patent claim that defines an invention based on its function or effect.

G

Generic Misspellings

Misspelled versions of generic terms that cannot be registered as trademarks.

Generic Terms (Trademarks)

Terms that are common and describe a class of goods or services, and thus cannot be protected as trademarks.

Group Art Unit

A unit of examiners at the USPTO that specializes in examining a particular type of patent application.

Grounds for Rejection (Trademarks)

Reasons why a trademark application may be rejected, such as likelihood of confusion or descriptiveness.

H

Haar Doctrine

A principle established by the European Patent Office to prevent an applicant from filing multiple requests for examination and appeal.

Hatch-Waxman Act

US legislation establishing procedures for obtaining approval for generic versions of patented drugs.

High-Tech Patent Litigation

Lawsuits involving high-tech industries, often with complex technical issues and large amounts of damages at stake.

Holding Company

A company created to control other companies and hold their assets, usually for tax or strategic purposes.

I

Importation Patent Infringement

The act of bringing a patented invention into the United States without permission from the patent owner.

Inter Partes Review (IPR)

A trial proceeding held by the Patent Trial and Appeal Board (PTAB) to review the validity of a patent.

International Application under PCT

An application filed under the Patent Cooperation Treaty (PCT) that allows simultaneous filing in multiple countries.

Inventive Step

A requirement in patent law that an invention must not be obvious to a person skilled in the art.

Invention Assignment Agreement

A contract between an inventor and another party, transferring ownership of the invention and associated intellectual property.

K

Key Characteristics of Design Patents

Design patents protect only the non-functional, ornamental design of a product.

L

Label Requirement for Trademarks

The requirement that a trademark should be displayed with appropriate symbols or words indicating its status as a registered trademark.

Language Restriction (Patent Applications)

Restrictions on language usage in patent applications, such as the requirement to use English or provide translations.

Leading Trademark Registration Firms (video)

Companies that specialize in assisting clients with registering trademarks, providing services such as trademark searches and filing applications.

Legally Abandoned Patent

A patent application that has been abandoned due to failure to respond to a USPTO office action or other non-compliance.

Licensing of Intellectual Property

The process of granting permission for another party to use intellectual property under specified terms and conditions.

M

Machine-Readable Recordable Medium Patents

Patents related to technology that allows computer programs or data to be stored on physical media like CDs or DVDs.

Madrid Protocol

An international treaty allowing for the centralized filing of trademark applications in multiple countries.

Markman Hearing

A hearing to determine the meaning and scope of patent claims, often used in patent infringement cases.

Means-Plus-Function Claim

A type of claim in a patent that defines an invention by its function rather than its structure.

N

Non-obviousness Requirement

The requirement that an invention must not be obvious to a person skilled in the art in order to be patented.

Non-Trivial Problem

A problem that cannot be solved by laypersons or non-experts, and therefore may be considered for patent protection.

Novelty Requirement

The requirement that an invention must be new or different from prior art in order to be patented.

O

Obviousness-Type Double Patenting (ODP)

A doctrine that prevents a patent owner from obtaining multiple patents for the same invention.

Official Action (Patents)

An action taken by a patent examiner, usually in the form of an office action or final rejection, during the examination process.

Office Action Summary (Patent)

A written communication from a patent examiner outlining any rejections or objections to claims in a patent application.

Online Trademark Search

A search of the USPTO database for registered and pending trademarks, used to determine potential conflicts with a proposed trademark.

P

Patent Cooperation Treaty (PCT)

An international treaty allowing simultaneous filing of patent applications in multiple countries.

Patent Infringement Litigation (video)

Legal action taken by a patent owner against someone who is using their patented invention without permission.

Patent Pending Status

The status of a product or process that has a patent application filed but not yet granted.

Plant Patents

Patents granted for new plant varieties that are distinct, uniform, and stable.

Post-Grant Review (PGR)

A trial proceeding held by the Patent Trial and Appeal Board (PTAB) to review the validity of a patent within nine months of its issuance.

R

Reissue Patents

Patents issued for an invention that was already granted a patent but has since been deemed defective or in need of correction.

Renewal Fees (Patents)

Fees paid to maintain a patent in force after it has been granted. Failure to pay these fees can result in expiration of the patent.

Revival of Abandoned Applications

The process of restoring an abandoned patent application to active status by satisfying USPTO requirements.

Royalties (video)

Payments made by a licensee to a licensor for the right to use their intellectual property.

S

Section 102 Rejections

Rejections of patent applications based on prior art or lack of novelty, under Section 102 of the Patent Act.

Section 103 Rejections

Rejections of patent applications based on obviousness, under Section 103 of the Patent Act.

Single-Party Patent Infringement

The act of using or selling a patented invention without permission from the patent owner.

Specification (Patents)

The part of a patent application that describes the invention in detail, including its purpose, structure, and operation.

Statutory Invention Registrations (SIRs)

A mechanism for disclosing and protecting inventions that do not qualify for patents due to being already known or obvious.

T

Three-Year Statutory Bar

A restriction on filing a patent application more than three years after public disclosure of the invention.

Trade Dress Protection

Protection for the overall appearance and image of a product or service, similar to trademark protection but focusing on visual elements rather than words.

Trademark Clearance Searches

Searches of USPTO database and other sources to determine whether a proposed trademark is available for use.

Trademark Infringement Litigation (video)

Legal action taken by a trademark owner against someone who is using a similar or identical mark without permission.

Trade Secret Misappropriation

The theft or unauthorized use of trade secrets, such as confidential business information or know-how.

U

Use Requirement for Trademarks

The requirement that a trademark must be in use in commerce before it can be registered with the USPTO.

Utility Patents

Patents granted for new and useful inventions or processes that have a practical application.

Utility Requirement (Patents)

The requirement that an invention must have a specific and useful purpose in order to be patented.

V

Valuation of Intellectual Property

The process of determining patentability for monetary value of intellectual property for purposes such as licensing, sale, or litigation.

Virtual Marking

A method of marking patented products by displaying a web address on the product instead of the patent number.

Voluntary Surrender of Patent Rights

The act of voluntarily giving up ownership and rights to a patent, usually done through a written agreement between parties.

W

Willful Patent Infringement

The intentional and knowing use or sale of a patented invention without permission from the patent owner.

Written Description Requirement (Patents)

The requirement that a patent application must include a written description of the invention in sufficient detail for someone skilled in the art to understand and practice it.

World Intellectual Property Organization (WIPO)

An international organization dedicated to promoting intellectual property rights and providing services for the registration, protection, and management of IP worldwide.

Worldwide Patent Applications

Patent applications filed under the Patent Cooperation Treaty (PCT) that designate multiple countries for patent protection. Overall, filing a PCT application can be a cost-effective and efficient way to obtain patent protection in several different countries.

X

Xenobiotic Patents

Patents granted for inventions related to foreign or synthetic materials used in pharmaceuticals, agriculture, and other fields.

Y

YouTube Copyright Infringement (video)

Copyright infringement on the online video platform YouTube, which has specific policies and procedures in place for handling copyright claims.

Z

Zero Tolerance for Counterfeiting Policy

A policy that takes strong and immediate action against counterfeiting, including enforcement and prosecution of those infringing on intellectual property rights. This policy is especially important for protecting trademarks and preventing the sale of counterfeit goods to consumers. Zero-tolerance policies send a clear message that intellectual property rights will be protected and enforced.

Looking to Patent an Invention?

Please contact Arlen Olsen at Schmeiser, Olsen & Watts LLP at aolsen@iplawusa.com.   

About the Author 

Mr. Olsen, a former adjunct professor of intellectual property law, has over 25 years of experience in all aspects of intellectual property law. Mr. Olsen is a founding Partner of Schmeiser, Olsen & Watts LLP and a former United States Patent Examiner. Mr. Olsen has prosecuted numerous patents that have been litigated and received damages in excess of $60 million dollars. Additional activities include teaching seminars and appearing as a guest lecturer on intellectual property matters for corporations and educational institutions and evaluating and consulting with clients regarding the scope, enforcement and protection of intellectual property rights.