COLUMN // PATENT
You Can’t Patent Jargon
To better learn how to protect your intellectual property, learning the language of patent law is vitally important.
Written by Kirk Teska
Patent attorneys are a weird mixture of lawyers, scientists, and engineers. We pick up the bad habits of both camps, especially when speaking to those not in the know. Can’t always follow what your IP attorney is telling you? Here’s a short list interpreting their jargon, starting with …
IP
That stands for intellectual property as a class. Could refer to different species such as patents, trademarks, copyrights, or trade secrets. Also, “IP Attorney” sounds fancier than “patent attorney.”
Drilling down different sections of what constitutes patent law are numbered, and each one limits the scope of what is and isn’t patentable. For instance, 101 is a patent law prohibiting patents for abstract ideas, laws of nature, and natural phenomenon. Usually, this section is most problematic in computer, internet, medical diagnostic, and the life science industries. 102 is a reference to the novelty requirement in patent law. If you hear “102,” it might mean there is a problem with your idea not being new and thus not patentable. 103 is the same as above except it covers obviousness. If your idea is new but also blatantly obvious, then it’s probably not patentable. 112 is another patent law, this time relating to the specificity of the patent, that often poses problems in the drug and life science industries where broad protection is desired but only a few examples are given in the patent.
By the way, if your patent attorney regularly begins sentences with “Pursuant to 35 USC § 101” (or § 102, or § 103, or § 112…) get rid of them quick.
PRIOR ART
Prior art is the body of knowledge which came before your patent application priority date. A prior art patent, paper, or product, for example, can render your idea not novel (102) and/or obvious (103). An Office Action (OA) from the Patent Office usually opining on a 102 or 103 rejection based on the Prior Art to which a response is required. You may also receive an NFOA (Non-Final Office Action) or FOA (Final Office Action). If you receive a FOA, a Request for Continued Examination (RCE) might be warranted to continue prosecuting the Patent Application.
PROSECUTION (PROS) is the back-and-forth OA/response cycle between a patent applicant and the Patent Office before a patent issues from a patent application. Be advised, it’s often adversarial, time-consuming, and expensive. The official record of prosecution is called the “patent prosecution history” or “file wrapper.” The Patent Office official who reviews and opines on your patent application in an OA. Is known as the EXAMINER.
PENDING
A patent is pending during the time after a patent application is filed with the Patent Office, during prosecution and before the patent issues. “Pat. Pend.” does not usually mean much until the patent issues (except the uncertainty of others who may not know exactly what will actually be protected until the patent issues). A RESTRICTION is a type of OA that opines a single patent application contains two or more inventions; one of which must be “elected.” A DIVISIONAL application is usually a specific type of patent application focused on a non-elected invention of another application subject to a restriction.
NOA
A Notice of Allowance (NOA) is how the Patent Office notifies you that your patent application will issue as a patent if you pay the required fees and submit the appropriate paperwork. Patent Prep and Pros has been successful! I should mention that PREP AND PROS is just a fancy way to say a patent attorney is involved in patent application preparation and prosecution.
“One patent application can breed several others all sharing the same PRIORITY or filing date resulting in a “family” of patents for a given entity’s technology.”
PSO
A PSO is a patent search of the prior art and an opinion based on the search regarding whether or not your idea is patentable (usually under 102 and 103). During the search process, you may hear about a Patent Cooperation Treaty, or PCT, which is a vehicle used to file a given patent application in a number of jurisdictions or countries. The World Intellectual Property Organization (WIPO) handles PCT filings and Pros.
In the United States, the U.S. Patent Office’s Patent Trial and Appeal Board, PTAB, is where you go during Pros in an attempt to overcome a rejection of your patent application. The PTAB also governs Patent Office administrative proceedings such as IPRs (Inter-Party Reviews) where two or more parties fight it out over whether a given patent should have issued in the first place based on the prior art.
A Freedom To Operate (FTO) study (and usually an opinion) can investigate whether your proposed product or service could infringe or violate someone else’s patent. FTOs are expensive, data intensive, and full of uncertainty unless the searching involved is filtered down. These also can run afoul of PATENT THICKETs, a portfolio of patents covering a given technology and its uses owned by a single entity.
CLAIM
The most important (and often most misunderstood) part of a patent is the claim: A single sentence setting out the metes and bounds of a given technology. At least one thing stated in the claim must be new (per 102) and unobvious (103). To infringe or violate a patent, a competitor’s technology would have to meet each and every thing (also called “elements,” “requirements,” or “limitations”) stated in a patent claim. Claim drafting (which includes claim amendments made during Pros) is both a science and an art.
Ideally you want your patent to make BROAD CLAIMS with a large scope of coverage. But don’t make the claims too broad such that a given claim is invalid, under 101, 102, 103, or 112. Conversely, you like to see your competitor’s patents make NARROW CLAIMS, which are easy to get from the Patent Office, but also easy to design around so there is no patent infringement.
MAINTENANCE FEES
Receiving the patent isn’t the end for process. The Patent Office requires MAINTENANCE FEES to be paid to keep a patent in force for its full TERM (usually 20 years from the priority date). In foreign countries, they’re called “annuities.” One patent application can breed several others all sharing the same PRIORITY or filing date resulting in a “family” of patents for a given entity’s (Company’s) technology. The oldest is usually the “parent” and its offspring are the “children.” CONTINUATION patent applications are often the vehicle used to produce a Patent Family. So are Divisionals. An ASSIGNMENT is a document used to record the legal transfer of patent rights between an inventor and usually her employer. In addition, OATH or DECLARATION documents are required to be signed by each inventor during Pros and filed with the Patent Office.
EMBODIMENT
A version or specific design of a given technology is called an EMBODIMENT. For example, a technology needing a power supply could be implemented with a battery, AC power, wireless power, wind, solar, etc., each of which is an embodiment of the invention. HARVESTING encourages employees to disclose inventions to management for possible patenting—a decision often made by a “patent committee.” PATENT RIGHTS include the right to stop others from making, using, selling, or even offering to sell a product that violates at least one claim of your patent. Patent litigation is extremely expensive.
A deadline when a patent application must be filed or else patent protection is barred is known as the BAR DATE. In the US, it’s within one year (“Grace Period”) of a public disclosure of an invention which includes selling a product embodying the invention.
With this cheat sheet, perhaps talking to your patent attorney will be a little easier. And also make you a little more patent savvy.
Kirk Teska is the managing partner of Iandiorio, Teska and Coleman, LLP, an adjunct professor at Suffolk Law, and the author of two books: Patent Savvy for Managers (NOLO) and Patent Project Management (ASME Press).
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