wpe12.gif (34024 bytes)
U.S. Pat. # 3,000,000
(click to enlarge)

The Patent Guy  
Patent & IP services for innovative individuals and businesses

A Tiny, Hyper-linked Glossary
 of Important Patent Terms


  A regular utility patent application consists of a specification and one or more claims.  The claims appear at the end of the application as a collection of sequentially numbered sentences that tell the world what your invention is.  Sounds easy, but it's not.  Entire volumes have been written on the art of drafting claims.  

The claims represent the meat of the invention and, hence, the meat of the application and patent. If you are hailed into court to defend your patent, your claims will be put under the microscope and will likely make or break your patent protection.  

Disclosure document:  The conventional wisdom in the field of inventing is to keep a notebook of your idea and your progress in developing it.  Have a witness understand what's in the notebook and sign a description of each improvement.  Keep that witness on your good side because she may have to got to court for you if another inventor claims your invention.  

The PTO has a program that is very helpful if you don't have a reliable witness.  You may send a disclosure of your idea to the PTO and they will assign that disclosure a number and hold onto the papers for you for two years.  If you file your regular application before the two years is up, and if you refer to the disclosure you filed previously, then the disclosure documents become a part of your file.  This doesn't serve to establish a filing date, but it may be useful if a fight over priority arises later.  

The disclosure document is not a public disclosure, and so the 1 year no-file-no-smile clock does not begin to tick when you file the document.  After filing a disclosure document, if you then make a public disclosure, the no-file-no-smile clock does begin to tick.  In other words, filing a disclosure document doesn't mean you now have two years to try and sell your invention before you have to file your regular application.

Sorry folks, disclosure document program discontinued by USPTO.    

Examiner:  It's a lousy job but, hey, somebody's gotta' get paid for it.  Examiners are the PTO employees who do the donkey-work of reading all those applications and making the initial decisions as to which ones become patents and which ones get flushed.  Without the examiners there is no PTO.  And as every examiner will tell you, Einstein was a patent examiner in Germany, or Austria, or Switzerland, or somewhere.  This does not mean all examiners are geniuses, but don't tell them that.  At least not until you get your patent.

Once it is properly filed, your application will be assigned to an examiner and this person will be the person with whom you will correspond, suck up to, and ultimately come to love and/or hate.  They take a lot of grief, as you might imagine.  They are overworked, as you might imagine, but they are not underpaid.  And they are often wrong.  Some of them can be real jerks, but those I have dealt with, save one or two, have been polite, pleasant, and sincerely intent on doing a good job.  

Fee, Filing:  In order to get the patent process under way, you have to cough up a wad of dough called the filing fee.  You submit this fee to the PTO with your application; it is non-refundable once your filing date has been assigned.  Small-entity inventors presently pay only half of what the big guys pay.  Here is a table of USPTO small-entity fees.    

Fee, Issue: Once the examiner has thoroughly reviewed your application and you have successfully addressed all of the examiner's objections, a patent will be granted. Hopefully.  Before you get the patent in your hot sweaty hands, however, you have to pay the PTO a moderately large fee called the issue fee. Here is a table of USPTO small-entity fees.  Together with the filing fee, you are now out over $1000 in what your have paid the PTO alone.  Keep reading. 

Fee, Maintenance:
  The maintenance fees are fees you pay periodically during the life of your patent. Here is a table of USPTO small-entity fees.   The PTO does absolutely nothing for this money, it's just an easy way to get some grease for the wheels of the PTO.  In truth, the filing fee of a few hundred dollars doesn't cover the costs of examination, much less the cost to run the PTO.  Those inventors that succeed in getting a patent carry most of the load with maintenance fees.  Together with the filing fee and issue fee, the sum of all fees paid by a small entity during the life and prosecution of a patent is over $4000.  If you miss one of the three periodic maintenance fee payments, your patent will be canceled.   

File wrapper:  This is PTO-speak for a case-file.  Presently, when you file an RPA the PTO opens  a digital-file.  Even if you file a paper document, instead of a digital one, the paper is now scanned into the digital file.  All of the patents in the PTO have also been scanned into a digital patent database.   In this digital age, the term "file wrapper" is more likely to be said "image file wrapper"  (IFW).   After your patent is granted, the file-wrapper is retained by the PTO.  It can be accessed by the public and by the courts.  Anything in the file-wrapper can be admitted as evidence in court cases or in various proceedings before the PTO.   

Filing date:  The filing date is,essentially, the date upon which the PTO receives all the parts of your regular application (RPA) that are required to make it legal.  But if you have filed a provisional utility application (PPA), the filing date goes back to the date of that filing so long as you file a regular application within one year.  

Your filing date will come to have considerable significance in your life, maybe more significance than your birthday or anniversary.  For one thing this is the "birthday" of your patent.  Even though your patent might not issue for a number of years after this date, the 20 year clock that tics off the life of your patent begins to run.  This is also the date you are legally considered to have made your invention, or "reduced it to practice," unless you can prove an earlier date.  If you are considering foreign patents as well, this date may start a one year clock running that may prevent you from filing in the other countries.  And if you have made any public disclosures of your invention, your filing date must not be more than one year after your earliest disclosure.  

Office action:  Office actions are the official, written decisions made by the examiner while examining your application.  Generally there are only two types: non-final and final.  The first office action often states the examiner's grounds for rejecting all or some of the claims.  This is a non-final action, which means you get the chance to explain to the examiner why he/she is wrong or else amend your claims to get around the examiner's problems.  The second office action is normally final, which means it ends the application procedure.  If, during the process, one or more claims are allowed, you get a patent.  If no claims are allowed, you stay alive only by appealing to The Board of Patent Appeal and Interferences within the PTO or instituting one of a number of continuation procedures. 

Patent pending
:  The designation "patent pending" may be placed on your invention once you have either filed a provisional application or have been assigned a filing dateon a regular application.  This notifies the world that you are seeking patent protection and that you may, eventually, be able to sue them if they make, use, or sell your invention without your consent.  Don't use "patent pending" until you are entitled to.  It's a federal no-no.

Patent prosecution:   As with so many terms, "prosecution" means one thing in real life and another thing at the PTO.   While a patent application is being shuffled through the patent process it is being "prosecuted."  Sounds like it got busted for doing something naughty, but no one has come up with a more useful word.  Unlike a traffic violation, when it comes to patents you request prosecution, pay for it, and hope it's successful.   

Patent search:  A patent search is a search for patents that may defeat your application.  It is one way of finding out that someone skunked you.  Even if there are no patents that anticipate your invention, there could be other published sources that describe it.  See prior art.   

Even once your patent is issued, the search may still go on because in America no matter how late in the game it is, if someone can prove that you were not the first to invent your invention, your patent can be invalidated.  There is a growing herd of bounty hunters called "patent busters" who look far and wide for prior art to defeat patents that have already issued.  Consequently, almost no patent is ever 100% secure, which is why I have never heard of any professional patent searcher giving a guarantee for a patent search.

Finding a professional patent searcher is easy -- Google "patent search." 

Prior artAnything that is produced or published that relates to your patent and is published or invented before the date your invented you invention is considered prior art.  The worst prior art is the stuff that is said to "anticipate" your invention.  That means that one single patent or other reference discloses your invention completely.  In other words, you got there second.  Most often prior art is another patent, but it could be a magazine article, a sci-fi movie, or, as in one recent case, a children's book.  Yeah, Dr. Seuss can blow you out of the water.  At least in America.  In most other countries prior art is generally limited only to patents or other official documents on file with the government.  

Small entity
When President Reagan got on a roll and increased patent fees, he took pity on the little guy.  The small entity classification was concocted to let the little guy pay just half the fees the big guys pay.  The laws precisely defines "little guy," but if you're reading this you almost certainly are one.  If you think $4000 plus in filing, issue and maintenance fees is a bummer, once your company takes off and your reach large entity status, you'll be paying twice that much for your next patent.

  This word has a very special meaning in patent practice.  It doesn't mean the measurements of your invention specifically, but rather a description of your invention, including drawings, a written discussion of the field, and a fair disclosure of the best way you know to make and use your invention.  Your application may be rejected if the specification is not sufficiently detailed or if the claims do not claim what the specification says.  A specification is required by law, and everything you claim in your claims must appear in your specification.  The specification and the claims comprise your application and, eventually, your patent. 



Copyright 2000 - 2011.  Denis R. O'Brien        Hands off the trademark!  The Patent Guy is a registered trademark of Denis O'Brien