ABANDONMENT

An actual or implied giving up of an application or invention by some positive act or failure to act within a reasonable or statutorily fixed time.

AMENDMENT

An answer to an office action by a United States Patent and Trademark Office Examiner, usually modifying, correcting, striking, or adding claims, or correcting drawings and/or distinguishing prior art in an attempt to overcome objections to allowance of the application.

ANTICIPATION

A term used usually in the consideration of an invention with respect to novelty. This refers to prior knowledge, established as by publication or use of the invention at a date prior to the claimed date of invention and thus indicating that the present invention lacks patentable novelty.

APPLICATION

Complete papers submitted to the U. S. Patent and Trademark Office seeking a patent including oath, specification, claims, and drawings.

ART OR PRIOR ART

A term used in consideration of the problem of patentable novelty encompassing all that is known prior to the filing date of the application in the particular field of the invention, represented by already issued patents and publications.

ASSIGNEE

One who receives rights in a patent from another by an assignment (the signing over of a right).

ASSIGNOR

One who assigns rights to a patent by an assignment.

BAILMENT

An agreement under which the bailee/licensee is permitted to use the tangible property of the bailor/ licensor under defined terms and conditions.

BASIC PATENT OR PIONEER PATENT

A broad patent that is the first in a given area.

BROAD CLAIM

A statement in a patent describing extensive variations of the invention. Such a statement usually includes a broad range of alternatives by its implication without using an alternative form of presentation.

BUSINESS INCUBATOR

A program that assists entrepreneurs to develop a business. The primary features are flexible and affordable space, access to shared office services, professional business management assistance, and a supportive entrepreneurial environment.

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CIP

Abbreviation for "Continuation-in-Part". When one wishes to add new material to a pending patent application the resulting application is referred to as a CIP.

CLAIM

A numbered paragraph or paragraphs at the close of a patent application specifically stating what the inventor alleges as the invention. The claims define the legal scope of a patent.

CONCEPTION

The initial step in invention. The formulation of the idea which is the basis of the patent application.

CONTINUATION

Unlike a CIP, a continuation application does not add any new material. A continuation application may be filed, for example, after a final rejection by the U.S. Patent and Trademark Office in order to maintain benefit of the original filing date.

CONTRIBUTORY INFRINGEMENT

Aid to another in infringing a patent (e.g., selling the infringer an essential portion required for the completed infringing device, material, article or process).

COPYRIGHT

The exclusive right to the publication, production or sale of the rights to literary, dramatic, musical, artistic works or software.

DATE OF APPLICATION

The date upon which duly executed application papers are received in the U.S. Patent and Trademark Office.

DATE OF PATENT

The effective date of the patent. It is the date of printing of notice of the patent grant in the Official Gazette of the U.S. Patent and Trademark Office.

DECLARATION

A statement executed in a patent application stating among other things that the applicant has made the invention described therein.

DISCLOSURE

A statement indicating the character of an invention, its construction, operation, and application. A full disclosure is a statement sufficient to indicate, to a person skilled in the art, the necessary information to practice an invention.

DIVISIONAL APPLICATION

Only one invention may be claimed in a patent application. If the patent examiner determines that an application contains more than one invention the applicant will be asked to "elect" which invention will be prosecuted. The remaining invention(s) may then be prosecuted by means of a divisional application.

DUE DILIGENCE TERMS

An investigation undertaken in the course of an intellectual property transaction to verify and determine the ownership and scope of intellectual property legal rights being sold, licensed or used as collateral. The purpose of a due diligence investigation is to provide the data needed to analyze and assess the business and legal risks associated with the intellectual property rights that are the subject of the transaction.

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ENABLEMENT

The disclosure of technical information that facilitates the creation of an operating version of an invention.

EXAMINATION

The study of a patent application in the U.S. Patent and Trademark Office to determine whether or not it is in proper form and of such a character that the invention described therein can be patented.

EXAMINER

An officials of the U.S. Patent and Trademark Office whose responsibility is to pass on the patentability of patent applications.

EXCLUSIVE LICENSE

This is an agreement granting to one party exclusive rights under an issued patent, with the licensor giving up by the terms of the license the right to offer and give a license to any other party.

FIELD OF USE LICENSE

A license to rights in intellectual property which is limited to a defined use.

FINAL REJECTION

The USPTO's final opinion as to the patentability of an invention.

INFRASTRUCTURE

An basic underlying framework or features of a system.

INFRINGEMENT

Using the invention described in a claim of a valid patent without license or consent of the owner of the patent rights.

INOPERATIVENESS

The failure of the invention to work due to either mechanical or methodical imperfections or due to incomplete or erroneous description of the invention in the disclosure.

INTERFERENCE

A proceeding for the purpose of determining which of two or more applicants for patents on the same invention is the legally recognized inventor. Such an action may take place between two or more applicants, two or more holders of patents, or an applicant and a patentee.

IPR HYGIENE

Intellectual Property Rights Hygiene is the process of ensuring that all sponsors of research that results in intellectual property protection and licensing are credited or compensated.

ISSUE DATE

The date on which the patent actually issues. This is not to be confused with the filing date which is the date the patent application was physically received by the U.S. Patent and Trademark Office.

JOINT INVENTOR

One of two or more who make joint inventive contributions to an invention.

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LICENSE

A right to use an invention as well as the instrument which grants that right. It allows the licensee to do things without which license would constitute infringement on the part of the licensee.

LICENSEE

The entity which is granted rights to intellectual property by the owner of that property.

LICENSOR

The owner of intellectual property which grants rights to another (the licensee) through a license.

LIFE OF A PATENT

20 years from the date of filing.

MAINTENANCE

The patent fees due at 4, 8 and 12 years needed to keep a U. S. utility or plant patent in force for its full life.

MATERIALS TRANSFER AGREEMENT

An agreement that provides the understanding that the materials are made available only for scientific work.

METES AND BOUNDS

The legal description of the exact property which is covered by a patent (the Claims).

NON EXCLUSIVE LICENSE

A grant under a patent with reservation by the licensor to make a similar grant to others.

NON OBVIOUS

In order for a patent to be granted, the claimed invention must be "non obvious" to one of "ordinary skill in the art". In other words, if one obtains a new and unexpected result, the invention is said to be non obvious.

NOTICE OF ALLOWANCE

When the Patent Examiner has determined that a patent application has met the statutory requirements for patentability the U.S. Patent and Trademark Office will issue a "Notice of Allowance." This indicates that the patent will "issue" at some future date.

NOVELTY

A requirement for patentability. If an invention has been used or was known to others it is probably no longer novel and therefore not eligible for patent protection.

OFFICE ACTION

(First) The Patent Examiner's conclusion about the patentability of an invention (Second) The Patent Examiner's second conclusion to an applicant's appeal.

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PATENTABILITY

An examination of the publications and patents in the U.S. Patent and Trademark Office to determine the probable patentability of the invention.

PATENTABILITY SEARCH

A search of existing patents and, perhaps, other publications to determine if the invention is novel and non obvious and thus patentable.

PLANT PATENT

A patent granted to creators or discoverers of new and distinct, asexually propagated plants.

PRIOR ART

The total body of knowledge which teaches or otherwise relates directly to an invention.

PRIORITY

A term used to designate, in the United States, the date an invention was first conceived and reduced to practice. Also throughout the world, priority refers to the date a patent application was filed.

PROSECUTION

The overall process engaged in by a patent attorney before the U. S. Patent and Trademark Office. One is said to prosecute an application.

PTO

Abbreviation for the United States Patent and Trademark Office. Also in common use is USPTO.

PUBLICATION

Any disclosure in a form readily accessible or distributed to the public.

REDUCTION TO PRACTICE

The completion and first practical operation of an invention.

REJECTION

An office action by the Patent Examiner stating to the applicant, or his attorney, that an application is not allowable for some reason.

ROYALTY

Payment for use of an invention, usually a stated percentage of sales.

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SEARCH

A study of available information in the field for the purpose of determining if any prior discovery makes the subject invention incapable of being patented or, if patentable, whether it infringes a prior issued patent.

SPECIFICATION

The written description of an invention describing the invention in sufficient detail that another person could duplicate it.

TECHNOLOGY LICENSING

The process by which patentable intellectual property is made marketable and is licensed or otherwise disposed for use by the pubic.

TRADEMARK

A symbol, design, word, letter or other device protected by law and used to distinguish a product or products from those of competitors.

UNPATENTABLE

Descriptive of an invention not involving sufficient departure from what was known before in the art or that for some other reason is not the proper subject matter of a patent.

UNIVERSITY RESEARCH

All research conducted in the course of an inventor's employment with the University (including, but not limited to, the performance of a grant, contract or award made to the University by an extra mural agency) or with the use of University resources

USPTO

United States Patent and Trademark Office.

WORK-FOR-HIRE

When one is specifically hired to complete a task, such as write a discrete computer program, the resulting product is said to be a Work-for-Hire and thus owned by the individual or organization who paid for the work.