Intellectual Property Creators (Put me on your mailing list) Glossary of terms related to invention, patents, and patent law This glossary contains term which the average person may not be familiar with. It is not meant to contain precisely correct definitions, but rather general ones that give a roughly correct idea of what the word or phase means or terms to focus on useful distinctions (such as in businessman, entrepreneur, product developer and inventor). affidavit. A signed statement filed (with the patent office) putting appropriate facts or opinion on the record. Alternative Dispute Resolution (ADR): Alternatives to the court system to resolve disputes. This usually refers to mediation and arbitration. arbitration: a method of ADR whereby a mutually agreed to third part resolves a dispute. Normally both sides agree to be bound by the decision in contrast to mediation. argument: the process by which a lawyer or other person tries to pursued the court that based on the record to find for his side. The Attorney's Canon of Ethics (sic) require there be some basis in the record for such arguments. See bamboozle. amicus curie: A brief filed before a court by a party that is not a party to the lawsuit usually to speak to the desirably of legal precedents that may be made in the decision or the public interest. bamboozle: The process by which a lawyer with a poor case tries, often successfully, to persuade a judge or jury to find in his favor. This is often euphemistically referred to as "argument". Also bullshit. bullshit: See bamboozle. businessman: Someone who runs a business where products or services or brought and sold where the risks are not high, and whose primary compensation is usually salary as contrasted to an entrepreneur. CCPA (Court of Custom and Patent Appeals). This is the court that heard appeals from the patent office, but in 1981 it was been replaced by the CAFC which hears all patent cases. CAFC (Court of Appeals for the Federal Circuit). All patent decisions are appealed to this court rather than to the Appellate Courts throughout the United States. While the CAFC decisions can be appealed to, and overturned by, the Supreme Court, the Supreme Court takes few patent cases and so the CAFC is the court which primarily determines the patent law. certiori: The Supreme Court has discretion as to which cases it wants to hear and decide. To have the Supreme Court review a lower court decision, a litigant must petition the Supreme Court on a writ of certiori. If the Supreme Court grants the petitioners request for certiori, the litigants prepare appeal briefs and the Supreme Court hears the case. The Supreme Court grants certiori on about 1% of the certiori petitions. claim: A patent consists of a specification and on or more claims. Each claim is a single sentence in a legalistic form which defines a claimed invention by defining its periphery. A valid claim is one which reads on the invention described in the specification but does not read on any prior art. declaratory judgment: A lawsuit filed to determine where the plaintiff is in doubt as to his legal rights. With respect to patents, this is a lawsuit filed by someone against the patentholder asking the court to declare that the inventors patent is invalid or that the plaintiff is not infringing the patent. The possibility of such a lawsuit is a source of concern for poorly financed patentholders who must be careful least something they do be seen as accusing others of infringement requiring them to defend against a lawsuit often at a distant location and at great expense. dicta: part of a courts decision which was not necessary to reach a decision. As such it has relatively low weight as precedent. doctrine of equivalents: A doctrine which says that even if a patent claim does not literally read on a possibly infringing device, it can be read more broadly providing it does not read on the prior art. It is designed to allow the inventor to assert a patent where the differences between the inventor's and an infringer's product are not substantial. (See Hilton Davis Chemical Company v. Warner-Jenkinson Company, Inc. 93-1088) en banc: Normally an appellate court such as the CAFC randomly assigns a panel of three of the court's full complement of 12 (or more) judges to consider each case. When the whole court considers a case it is called an en banc decision is generally done to address fundamental and controversial issues that have been before the court and so has very strong value as precedent. entrepreneur: Someone who brings together the resources needed to make a business, usually one he started, grow and whose primary compensation is as in equity in the company because of the high risks involved as distinguished from a businessman. ex parte: a procedure between a single party and a decision maker, as opposed to inter partes which is a procedure between a two parties with a decisionmaker. The patent prosecution process is an ex parte procedure. first to file: In the European patent system, the patent is awarded to the first person to file an application on that invention independent of who was the first to invent. (See First to File versus First to Invent ) first to invent: In the United states the patent is awarded to the first person to make an invention independent of who the first to file an application for that invention. (See First to File versus First to Invent ) infringement: enroach or trespass on the rights of others, usually involving intellectual property.. A device infringes on a patent if the claims of a valid patent read on that device. interference: A procedure declared by the patent office when it appears that two or more people made the same invention at roughly the same time. It is an expensive, lengthy court-like proceeding designed to determine who was the first true inventor. About 1/10 of 1% of patents are involved in interference proceedings. inter partes: a procedure between two parties and a decision maker, as for example a court proceeding, in contrast to ex parte. in re Pardo: an important precedence which says that something does not cease to become patentable merely because the point of novelty is in an algorithm. inventor: Someone who has a new idea and pursues its development. Inventors apply for patents on their inventions as a part of their developing their invention. Many inventors are also product developers, entrepreneurs and businessmen and most inventors find it good marketing practice to sell themselves as product developers or, entrepreneurs or businessman, as the term inventor often having a bad connotation to a businessman. large entity: Not a small entity. mediation: A method of alternative dispute resolution in which a mutually agreed on mediator works with the disputing parties to help them reach an agreement. While mediation has a high rate of success in resolving disputes, in contrast to arbitration, a mediator has no authority to force a decision on the parties. . patent: A document issued by the Patent office that purports to give an inventor the exclusive right to make use and sell an invention as specified in the claims of that patent. A patent, which is the mature form of a patent application, consists of drawings of the invention, a specification explaining it, and claims which define the scope of exclusivity. patent application: a document submitted by an inventor to request he be issued a patent. It consists of the elements of a patent but will likely be modified during patent prosecution.. precedent: Earlier legal rulings. One of the rock solid shifting principles of law is stare decises (that which has been decided stands). Once a principle has been determined in a case all other cases must follow the same principle. In fact such decisions can change, but rarely and with due consideration. (A well known example is Brown v. Board of Education (1954) which overruled Plessy v. Furgesson(1896)). prior art: (a) In a broad sense, technology that is relevant to an invention and was publicly available (e.g. described in a publication or offered for sale) at the time an invention was made. (b) in a narrow sense, any such technology which would invalidate a patent or limit its scope. The process of prosecuting a patent or interpreting its claims largely consists of identifying relevant prior art and distinguishing the claimed invention from that prior art. product developer: Someone who develops a product usually including visualizing what that product should be and assembling the resources needed to design and develop the product in contrast to an entrepreneur. A product developer may be an inventor. pro se: To pursue a case without being represented by a lawyer. A risky and dangerous tactic, but arguably less risky, and certainly less expensive, than being represented by a lawyer. prosecution: The process in which an inventor or his lawyer engage with the patent office to obtain a patent and determine the scope of its claims. PTO (Patent and Trademark Office). The office of the Department of Commerce that is responsible for examining and issuing patents. read on: A claim reads on something, if every element of that claim is present in that which it reads on. If a claim reads on prior art , then the claim is invalid. A claim must read on an accused device for infringement to occur. record: That evidence which is before the court or patent office on which a decision can be made. In a patent prosecution that consists of such things as the inventors oath, the patent application, any affidavits submitted, and any prior art . small entity: The patent statutes distinguish two type of applicants, small entities and large entities for the determination of fees. Small entities often pay about half of what a large entity would for the same service. A small entity includes companies with less than 500 employees and non-profit and academic institutions. Often the term is used informally to distinguish the smaller, new and more entrepreneurial inventor entities, from the older, larger established ones. specification: That part of the patent which describes the invention in sufficient detail so that someone knowledgeable in the art could practice it. It is the main part of the patent. valid: A valid patent is an issued patent that is not invalid for one of several reasons, the most common of which is that one or more of its claims read on prior art that was not considered by the patent office during patent prosecution. While only a court can hold a patent is invalid, many patents are informally referred to as being invalid to indicate that a court would likely rule them so. (Last updated on 10/06/98) Intellectual Property Creators IPC Home Page 101 First St., Suite 425 Los Altos, CA 94022 Voice: 650/948-8350 email: ipc@heckel.org © Paul Heckel 1995-7 (To see an alphabetic list of all the files On the IPC Website )