Patent Glossary

Bounty: a reward offered for a piece of fugitive information.

Bounty Hunters: information holders and sharers. People who respect and appreciate the power and value of knowledge. With BountyQuest, Bounty Hunters can harness their knowledge in order to actualize both its power and its value.

Bounty Posters: information seekers. People looking for a valuable piece of fugitive information and willing to pay a generous reward for its location.

Claims: the meat and potatoes of the patent application. A claim is a single sentence that describes one aspect of an invention; in a patent there can be hundreds of claims or only one. Since patent protection only covers what is exactly and explicitly laid out in the claims, they are, as you can imagine, incredibly important. Patent attorneys can spend months crafting these delicate sentences.

Copyrights: The 1976 Copyright Act permits the owner of a copyright to prevent others from reproducing, displaying, performing, or distributing ideas expressed in a fixed medium such as text, film, videotape, sound recording, computer disk, or 3-dimensional form. They protect only the form in which an idea is fixed, not the substance of an idea, which lies in the territory of patent protection. Copyrights do not need to be issued by or registered with a government agency except to be eligible for infringement litigation, in which case they must be registered with the Copyright Office of the Library of Congress The copyright is effective as soon as the work, published or unpublished, is “created in fixed form.”

Duty of disclosure: everyone involved in the patent process at any time — both during the procurement period and during potential litigation or re-examination – must disclose all information that may affect the validity of the patent. The obligation extends to the patent applicant or holder as well as accused infringers.

Doctrine of equivalence: invoked when a patent’s claim is not literally infringed, but (here comes the is the legal jargon) “the infringing device uses substantially the same means in substantially the same way to get substantially the same result”. This is a gray area without hard-and-fast rules, designed to prevent competitors from making trivial changes to an invention to escape infringement liability. Equivalence is determined by either comparing the claimed and accused devices as wholes, or by going through the claims element-by-element, depending on the circumstances and the opinions of the court. The doctrine of equivalence tends to favor the patentee, but this tendency is balanced out by use of prosecution history estoppel.

Infringement: when another party makes, uses, sells, offers for sale, or imports a patented invention without the permission of the patent owner. Infringement can occur with or without the accused’s knowledge of the patent.

Injunction: a court order barring a party from taking a certain action. In patent cases, these prohibited actions are making, using, selling, offering for sale, or importing into the U.S. a patented invention.

Invalidation: showing that an invention is not deserving of patent protection by providing evidence that it is not new, not useful, or is obvious. There are two venues for invalidating a patent: patent reexaminations before the Patent and Trademark Office (PTO) and patent infringement lawsuits before the courts.

License: a contract in which the owner of the patent grants another person or company permission to make, use, or sell the patented invention. Licenses may be exclusive (if a single manufacturer is licensed to develop the invention) or nonexclusive (if multiple manufacturers are licensed to develop it). Licenses can extend for the entire length of the patent or for shorter periods of time.

Patent: provides the patent holder, or patentee, the right to exclude others from making, using, selling, offering for sale, or importing an invention for 20 years from the date of the patent’s issuance. A patent is a government-sponsored monopoly, designed to reward the inventor by providing him with incentive to risk time, effort, and money in developing new technologies. In order to earn patent protection, an invention must be

Patentable material includes machines, processes, man-made items, compositions of matter, and improvements on any of these items – for all intents and purposes, “anything under the sun produced by man,” or the methods of such production.

Patentee: the person to whom a patent was issued.

PCT: Patent Cooperation Treaty; created a patent application that is standardized across the nations that signed it, which allows patent applicants to simultaneously seek protection for an invention in all countries involved.

PTO: Patent and Trademark Office; the government agency, located in Arlington, Virginia, that is responsible for issuing patents.

Prior art: it’s what we live for! It is technology or knowledge of technology, existing in the public domain, in the form of existing patents, trade publications, doctoral dissertations, etc., or a working example of the invention, that a patent encompasses in its claims (i.e. the patent applicant is claiming it to be a new invention, but it had already been invented by someone else).

Prosecution history estoppel: the other side of the coin from doctrine of equivalence; in patent infringement lawsuits, it tends to favor the accused infringer. If, during the examination of a patent by the PTO in the course of the issuance process, the patentee had to change his or her claims to avoid existing prior art and avoid a rejection of his application as not novel, the pantentee is held to those new limitations for the rest of the life of the patent. The patentee can’t go back later to the original, broader claims. Like the doctrine of equivalence, this is also not a hard-and-fast rule; in some cases, if the court determined that the restrictions made were unnecessarily broad, the patentee has been allowed to regain some ground that he or she might have given up to avoid prior art.

This is a confusing concept, so here’s a silly example. Clyde files a patent claiming a table with four legs, a table with four-and-a-half legs, and a table with five legs, but the PTO finds that there is already a patent on a table with four legs. In order to avoid this prior art, Clyde cuts out the “four legs” and the “four-and-a-half legs” claims, and he gets his patent on the remaining claim of a table with five legs. Later on, Bonnie gets a patent on a table with four-and-a-half legs (because really the prior art is only on a four-legged table). Clyde can’t sue Bonnie for infringement, even though he had claimed a four-and-a-half-legged table first, because he cut out that claim during his patent’s appeal process.

Trademarks: According to the U.S. Patent and Trademark Office (PTO), “A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.” Although trademark registration with the PTO is not required to establish trademark rights, registration is advantageous in the case of conflict. Unlike patent and copyright protection, trademark rights can potentially be of unlimited duration, lasting as long as the mark is in use by its owner.

Trade secrets: A trade secret is any information, design, device, process, composition, technique, or formula that is not publicly known, and that provides those who know it with a competitive business advantage. Trade secrets are potentially unlimited in duration, but protection is lost if someone else discovers the information either independently or by analyzing or dissecting a product (“reverse engineering”). Like copyright and trademarks, trade secrets do not need to be registered with or granted by any government agencies; the inventor or company holding the information merely has to make a reasonable effort to keep their secrets secret. Trade secret protection is a state right under the Uniform Trade Secret Act or similar state laws, and it mainly provides relief in the case of an information leak to competitors. In order to warrant such relief in a court case, information must be shown to be both commercially valuable and far enough removed from general knowledge that it is reasonably difficult to discover. Also, a company must show that it has been diligent in keeping its information secret. Since patented inventions are made publicly available upon granting of the patent, patent protection and trade secret protection are mutually exclusive; however, since patent applications are kept confidential until and unless they are approved, an invention can remain a trade secret if the patent application is rejected. Types of trade secrets include chemical formulas or recipes (such as soda or cosmetics formulas), and manufacturing processes or techniques (such as how to make fireworks or form the eye of a sewing needle).