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FAQ & Glossary

FAQ & Glossary

Q: What is a patent?
A: A patent is based upon the idea of a “contract” between society and the inventor. Society is interested to have the inventor disclose new knowledge and offers Patent rights as an enticement to the inventor. The inventor is interested in profiting from the new knowledge and uses the Patent rights to safeguard the possibility of profit.

Patent rights are awarded by Society (by government) to the inventor (often a corporate entity) following examination of an application according to established legal procedures.

The Patent rights are specific to the legal jurisdiction issuing the patent and limited to about 20 years from the earliest application date. Patent rights permit the owner to exclude others from making (practicing), selling, importing or using the invention in the relevant jurisdiction. Patent rights are “property” and can be transferred by sale or license. A license is analogous to a lease on a building. The license grants a right to use the patented invention, but does not transfer ownership.

Q: Once I have a patent, will the government protect my invention?
A: No. The owner of the patent must identify those that are violating their Patent rights and file a lawsuit. These lawsuits are referred to as “infringement suits”. An infringement suit is a civil suit and the owner of the patent rights can request monetary damages and/or an injunction to prevent continued violation of the Patent rights.

Q: How much does it cost to file a patent application?
A: The cost includes official fees, professional service fees and the cost of drafting (writing) the application. Official fees vary widely from jurisdiction to jurisdiction. As an example the filing fee for a Utility application for an individual or company that employs less than 500 people (small entity) in the United States is about $800 (as of Dec. 2014). The professional service fees add several hundred dollars to this amount. Drafting costs vary widely according to the complexity of the application but usually fall in the range of $2000 to $10,000.

Q: When am I protected by my patent?
A: There are two types of protection.

The first type of protection is against another party receiving a patent on the same invention from an application filed after yours. This first type of protection begins on the day you file the application.

The second type of protection is against another party practicing your invention. This type of protection begins only when the patent is granted, typically 3 years or more after the earliest filing date. This type of protection may begin at a different time in each jurisdiction. More importantly, this type of protection will never exist in a jurisdiction where you do not file an application. For Example, if you never file an application in Paraguay, you will never have this type of protection in Paraguay.

Glossary

 

Claims are single sentence definitions of an invention that appear at the end of a patent document. Each claim defines a “scope”. Claims are organized in nested sets with the claim of broadest scope in each set referred to as an “independent claim” (because it refers to no previous claim) and narrower claims which refer to a previous claim referred to as “dependent claims”.
Each patent application must include sufficient description to provide “Enablement” for all that is claimed. The description can include prose text, figures and experimental examples. The degree of detail required varies from field to field, but the general rule is that the description must enable one of ordinary skill in the art to practice the [claimed] invention.
“Specification” (Spec) is the entire written patent application filed in the patent office.  While the original claims are legally part of the specification, the term specification is often used to indicate all of the application except for the claims. It is the specification which must provide enablement for what is claimed.

 
Patent scopeindicates the nature of the invention protected by claims of a granted patent. Activity that falls within the “patent scope” is deemed to “infringe the patent” and one that engages in such activity is referred to as an “infringer”.  The term “scope” also arises in discussions of enablement: “Does the description enable the full scope of what is claimed.”
Each claim recites a series of “limitations”. In an apparatus claim, these limitations are typically physical components of the machine. In a method claim, the limitations are typically process steps.
An “embodiment” is something that falls within the scope of what is claimed. Some patents refer to “preferred embodiments” in the descriptive portion of the text. These “preferred embodiments” may correspond to dependent claims.  There is a relationship between the “scope” of what is claimed, the “embodiments” which are described and the degree of enablement. Embodiments which are described in an experimental example are more likely to contribute to enable than those which are simply presented as part of a written list.

 
A patent landscapeis an overview of published patents and patent applications dealing with the same technology spectrum as the proposed invention.
A “white space” is an area in the landscape that does not seem to be covered by the claims of any existing patent or application.
The term “design around” indicates an attempt by an R&D team to achieve the same effect achieved by an invention claimed in a patent without infringing the claim. Typically design around includes removing one or more claimed features or substituting a claimed feature with a different feature.

 

A claiming strategygoverns what type of protection is sought in the application.  For example if the invention is a defined chemical compound, the claiming strategy might be to claim the compound itself, methods of making the compound, methods of making related materials using the compound as starting material and an apparatus or system adapted for making the compound.

 

Prior art refers to any printed publication that is legally available during examination of the patent application or for the purposes of determining patent validity.  The rules vary slightly between jurisdictions so that a specific reference may be available as “prior art” in one jurisdiction and unavailable in another jurisdiction.

 
A priority document is an earlier application which establishes a date for a later application.

 
A Patent family is a group of patents related by one or more shared priority documents. A family typically includes applications/patents in multiple jurisdictions (e.g. US; EPO and Japan). In addition a family may include multiple patents in 1 jurisdiction (e.g. 2 in US and 4 in EPO).
Evidence of “Secondary considerations” can be helpful in establishing inventive step, usually during enforcement proceedings. Secondary considerations include commercial success (e.g. increased sales), long-felt but unsolved needs, failure of others, copying by competitors and unexpected results

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