What part of Know don't you understand?
Copyright © 2003 James E. White
The following glossary of terms (grouped by related concepts) should make it clear that, in the inventing game at least, just taking words at their face value can get you in big trouble fast.
provisional patent--a mythical 1 year patent. There is no "provisional patent," there is a Provisional Application for Patent (PAP) which permits using "patent pending," holds (when done correctly) a priority date for one year, and puts the inventor under the gun to get a full (also called formal or non-provisional) patent application written, submitted, and paid for within 12 months or lose the priority date and often other rights as well. The PAP filing fee of around $65 for micro entities may be "cheap" but the disclosure and enablement requirements for the Provisional Application are just as stringent, but not so formal, as the requirements for the non-provisional application for a utility patent. Not only must a US application be filed at the end of one year so must a PCT application to reserve the rights to file foreign patent applications should you wish to do that (often you should not).
exclusive--a mythical sole right for an inventor to make and sell the inventor's own invention. Patent rights give inventors the right to exclude others from making, using, and selling what is newly claimed by their patent. A person with a broader, in-force patent, the law, and occasionally other things, can legally block an inventor from making, using, and selling their own patented invention. A patent gives only limited exclusory rights--it is not even a license to sue (or even threaten to) without a legal opinion of infringement.
product--a tangible thing (almost always in it's display packaging) that can be placed on a store shelf and sold. A product is usually the result of a manufacturing process but it is never an idea not yet built or even a model or prototype
prototype--something that can really be used to see if it works under real world conditions. Never a model or mock-up.
design--as in "design patent" it is only the ornamental appearance of some thing; the design patent never protects the thing itself, only the shown appearance. --as in "that was my third design" it is one possible construction of a claimed utility patented invention--hopefully a wide range of designs can be made that are still covered by the utility patent claims.
idea--a concept in your head or expressed in general terms (e.g., toilet seat lifter). "Ideas or mere suggestions" cannot be patented (or copyrighted or trademarked for that matter). Often not worth a dime a dozen even accounting for inflation.
invention--a specific, embodiment of an invention idea. No "idea" is an invention until it is either actually built or it is described in enough detail that someone of ordinary skill in the art could make (or do in the case of a process) one without undue experimentation that, in it's new essentials, is what you envisioned. It is very rare that an "invention" would be the only possible way of accomplishing something. To be patentable your invention must be new (novel), non-obvious, and useful, and be a process, machine, (article of) manufacture, or composition of matter, or an improvement thereof.
patent term--the period from the initial application whose priority date is being relied on to the date the patent expires. Usually a maximum of 20 years from that priority date in the case where the priority date was secured by a non-provisional application or up to 21 years where the priority date was secured by a provisional application. The term can occasionally, under special circumstances you should not count on, go beyond the 20 or 21 years by a few months. Far more often the inventor must relinquish ("terminally disclaim") part of the term on related patents just to get the related patents. The enforceable period for a patent however is from when it issues to when it expires. If your application is published before issue--and it's claims are close to those that do issue--new rules may allow you to collect "reasonable royalties" from post-publication but pre-issue "infringers" who have been notified of their possible "infringement." But only from the date you notified them.
18 month publication--a new (since 1999) rule which requires the USPTO to publish your patent application 18 months from your priority date. To avoid 18 month publication you must take specific action to request non-publication at the time you file your full application and declare that you will NOT be seeking foreign patents. If you later file foreign applications (including a PCT), within the allowed one year of your priority date, you must rescind your non-publication request within 45 days or your US application will be considered abandoned and any US patent that issues will be invalid.
disclosure--a "spilling of the beans" (i.e., telling someone about your invention) which may either be public or private. Public disclosure can significantly reduce your rights to filing for a patent. See also Disclosure Document and Non-disclosure.
Disclosure Document--a document submitted under the former Disclosure Document Program of the USPTO. The DD program was killed by Congress in 2007 to the benefit of patent practitioners who find it much more lucrative to have naive inventors file Provisional Applications for Patent which then provide a convenient expiration deadline near which the practitioner can really put the screws to the naive inventor.
Non-disclosure--or Non-Disclosure Agreement (NDA)--an agreement with someone that stipulates that they will keep your invention secret. This allows you to divulge your invention in relative safety so that the recipient of the disclosure can evaluate it for a possible licensing deal or whatever you are working toward.
publishing--technically it is making a description of your invention available in a printed form but more broadly it is often used to mean any instance of making your invention publicly known even including public use. Publishing, commercial use, on-sale, and even disclosures by those committed to secrecy are all acts that can tremendously limit--or eventually bar you entirely--from the right to file a patent application. They may not prevent you from getting a patent issued but if evidence of such bars are presented in court the patent would be declared invalid.
making public--see Publishing.
grace period--the main grace period is allowed only by the US and Canada and that is a 1 year period after your invention is publicly disclosed. The rest of the world allows no grace period. The US also allows many "grace" periods after you miss deadlines for patent paperwork or payments but it is never a good idea to plan on using one because it will usually cost you money and could cost you your patent.
PCT--Patent Cooperation Treaty, a treaty under which over 100 countries have agreed on a system for allowing the delay of filing patent applications, basic rules for filing, and other patent things. A PCT application never results in the mythical "worldwide" patent (or any patent) and it must be filed within 12 months of your priority date even when that date is being held by a Provisional Application for Patent. There is a frequent misbelief that the PCT application can be filed up to 12 months after your US patent issues--it is best to believe that after your US patent issues (and often well before that) you are too late to file a PCT application, or virtually any other foreign application, because the remote circumstances that might allow foreign filing after the cat is out of the bag won't apply to you. An actual patent application timely filed and generally identical, except perhaps in translation, to your approved PCT application's specification, drawings, and claims must be filed, with proper fees, etc., and prosecuted to issue in each country you wish to obtain a patent in.
Paris Convention--a patent convention held in 1883 and under whose 12-month-after-you-file-your-US-application rules you can still do your foreign filing in subscribing countries but you're probably far better off operating under the PCT rules.
patent agent--a person with sufficient technical and patenting knowledge that they are authorized to practice before the USPTO. The patenting knowledge must be demonstrated through successful passing of a test administered by the USPTO. The USPTO pretty much accepts agent applicants word that they have sufficient technical knowledge. A patent attorney is a patent agent who also is an attorney. You should always seek a patent practitioner (agent or attorney) with technical knowledge in the area of your invention--chemical technical knowledge, for example, when your invention is software probably won't be a good fit.
patent--a limited right to exclude others from your invention and, in conjunction with a legal opinion of infringement, a limited right to sue infringers of your patent claims. Also; a red ribboned document from the patent office that looks very pretty on the wall and that cost a bunch and took some trouble to get but that, 98% of the time and more, is worthless except as a conversation starter or decoration.
claim--a carefully worded sentence that spells out exactly what your invention is. You can have multiple claims that cover variants of your basic invention in your patent but you can't claim 2 inventions in one patent.
priority date--the date after which new public disclosures of art such as are described in your application cannot be used against your getting a patent--or to invalidate an issued patent. You can establish a priority date with a thorough and enabling Provisional Application (so long as you don't let the year full filing date it establishes lapse) or a non-provisional application (so long as you don't permit it's priority date to go abandoned either).
reduction to practice--can either be through actual making of the invention or what is known as "constructive" reduction to practice which is the filing of a patent application, formal or provisional.
constructive reduction--"presumed" reduction to practice via a disclosure, most commonly and usefully via either a provisional or full patent application, that is sufficient for one of ordinary skill in the art (or, in unlikely circumstances, to a judge trying to see your disclosure in such light [read: make it crystal clear]) to actually accomplish the invention without undue experimentation.
protects/protection--mythical powers attributed falsely to patents. Patents merely give their owners the limited rights to use the courts to defend their patent. The government that issued the patent does not (except for minor assistance with Customs seizures) enforce a patent. A patent holder with no income stream from their patent is usually in a very poor position to "protect" themselves or their patent in civil court.
infringement--is not a crime! It is not illegal to infringe a patent. It does infringe the patent holder's rights IF they chose to exercise them and the patent holder, at their own great expense and trouble, may ask the court to remedy the situation (usually monetarily) but the infringer will not be, and can not be, "punished" for violation of the infringement legal principle.
due diligence--an inve-S-ting term meaning that the investor studied the opportunity in the detail necessary to satisfy themselves that an investment was worth the risk--or not. Prospective licensees will examine you and your invention idea or patent and what they perceive to be the realities of the marketplace when doing their due diligence before signing any agreement. You must do your own due diligence in determining whether a prospective licensee has the breadth and depth to do justice to your invention.
diligent pursuit--the requirement that an inventor make all deliberate speed in reducing their invention to practice. An idea written in a notebook without being actively worked on is not being diligently pursued. Also see "first to invent."
"first to invent"--a principle recognized only in the United States of America up to March 16, 2013 and thus no longer applicable.
"first to file"--a principle whereby the first party to file a patent application on an invention is presumed to be the party that should be issued the patent for the invention. In most countries of the world that you would be interested in filing a patent application in, including the USA, the filer must also either be the inventor or someone, such as their employer, that has rights to the invention. The USA also has a 1 year grace period after any public disclosure so the inventor need not necessarily be the first to file as long as they are the first to publicly disclose AND file within the grace period. For more details see the "First to File" page of idearights.com.
conversion--has a very specific legal meaning with regard to Provisional Applications for Patent (PAP). The USPTO strongly discourages the "conversion" of a PAP to a full (or formal or non-provisional) patent application because to do so establishes the PAP's priority date as the filing date of the "converted" application thereby reducing the possible term by 1 year. Even if your PAP meets the formal and claim requirements for a full application you should refile it on-time as the full application and reference the PAP filing rather than "convert" it. Don't trust any patent practitioner that uses the word sloppily--usually to convince you that they should be paid (often about or above "half" price) to write a PAP for you that they can then "cheaply" (i.e., the second "half" plus) "convert" (their meaning, not the law's) by refiling or refiling with claims added as the full application.
manufacturer--could be you--even if you don't have a factory (in your garage or anywhere else). Usually an inventor either means a licensee that will take responsibility for manufacturer and sale of the invention or a subcontract (or just contract) manufacturer that will make the invention for the inventor at the inventor's expense. In the latter case the law sees the inventor as the "manufacturer" with all the liability that implies.
OEM--Original Equipment Manufacturer--the "source" that makes the completed goods available for purchase. This could be you regardless of where you have your parts made and assembled. Most of Motorola's goods are not made by Motorola but Motorola is the OEM, manufacturer, and source as far as the public and the law are concerned. When you order components or full units in OEM quantities you will be entitled to OEM prices--usually the lowest prices available from suppliers.
licensor--that's you, the invent-OR. The licensee is the party that licenses rights from a licensor via a license or licensing agreement.
So now you know, words in the patent game often mean far more than they would at first appear to in ordinary English. No? (Actually "yes.")
Copyright © 2004 James E. White
All Rights Reserved