{"id":3885,"date":"2022-02-24T13:57:42","date_gmt":"2022-02-24T00:57:42","guid":{"rendered":"https:\/\/www.jamesandwells.com\/glossary-of-common-terms\/"},"modified":"2022-03-06T10:24:38","modified_gmt":"2022-03-05T21:24:38","slug":"glossary-of-common-terms","status":"publish","type":"page","link":"https:\/\/www.jamesandwells.com\/intl\/glossary-of-common-terms\/","title":{"rendered":"Glossary of common terms"},"content":{"rendered":"
ACCEPTED\/ALLOWED<\/strong><\/h6>\n

Refers to the status of a patent application which has been examined by the relevant patent office and approved for grant. In many jurisdictions, the application will then typically be advertised for a brief period to enable third parties to lodge an objection to grant (known as an opposition).<\/p>\n

ANNUITY<\/strong><\/h6>\n

See Renewal fees.<\/p>\n

ANTICIPATION<\/strong><\/h6>\n

An invention is said to have been anticipated, or lack novelty, if it has been disclosed or used. \u00a0A\u00a0valid patent\u00a0cannot usually be obtained if there has been anticipation before the priority date of that patent application.<\/p>\n

In most jurisdictions, anticipation of a patent application can occur by either prior publication or prior use.<\/p>\n

\u201cPublished\u201d means available to the public. \u00a0Usually, a document will be deemed available to the public if it can be inspected as of right \u00a0by members of the public (upon payment of a fee or otherwise), or could be downloaded from the internet at the relevant date.<\/p>\n

\u201cPrior use\u201d means use in a public manner.<\/p>\n

In some countries, including Australia and New Zealand, there are certain exceptions to prior publication and prior use such as prior use for the purposes of reasonable trial.<\/p>\n

APPARATUS<\/strong><\/h6>\n

A term often used in a\u00a0patent claim\u00a0to define a physical device or piece of equipment in a non-limiting sense.<\/p>\n

APPLICATION<\/strong><\/h6>\n

In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. \u00a0The terms \u201capplication\u201d, \u201cpending\u201d or \u201cpatent application\u201d are used to describe the status of the application up to grant.<\/p>\n

ASSIGNEE<\/strong><\/h6>\n

The party receiving a legal transfer of rights (from the assignor).<\/p>\n

ASSIGNMENT<\/strong><\/h6>\n

The legal transfer of rights from one party (assignor) to another party (assignee). \u00a0In many cases a specific assignment document is required to register the transfer of rights with a patent office.<\/p>\n

ASSIGNOR<\/strong><\/h6>\n

The party legally transferring rights (to the assignee).<\/p>\n

CLAIMS<\/strong><\/h6>\n

Numbered paragraphs at the end of a patent complete specification which define the scope of the invention protected by the patent. \u00a0The purpose of the claims is to define clearly and with precision the monopoly for which protection is sought so that others know the exact boundaries of protection.<\/p>\n

COMMERCIALISATION\/ COMMERCIALLY WORKED \/ COMMERCIAL DEALINGS<\/strong><\/h6>\n

Refers to the process of introducing a new product or service to the marketplace. For the purposes of a patent application commercial working can include taking orders for a product or service (even if in confidence). It is important to understand that commercial working of an invention before a patent application is filed may invalidate that patent application (see validity below).<\/p>\n

COMPLETE SPECIFICATION<\/strong><\/h6>\n

A document which contains a complete written description of the invention which the applicant seeks to protect. \u00a0The complete specification must end with one or more claims defining the scope of the invention. \u00a0To be valid it must also contain sufficient details to enable a skilled reader to put the invention into practice and disclose the best method for implementing the invention known to the\u00a0patent applicant\u00a0at the time the application is filed.<\/p>\n

DEED OF ASSIGNMENT<\/strong><\/h6>\n

A document which includes the legal terms of an Assignment.<\/p>\n

DEED OF LETTERS PATENT<\/strong><\/h6>\n

The official document which is issued when a patent application has been granted as a patent. This document gives the\u00a0patentee\u00a0the exclusive rights to make, sell, use or import the invention described in the patent.<\/p>\n

DISCLOSURE<\/strong><\/h6>\n
    \n
  1. Refers to the description of the invention provided in the specification accompanying a patent application. \u00a0For a patent to be valid, the invention must be described in enough detail to enable a person who is skilled in the field of the invention to put it into practice.<\/li>\n
  2. Refers to making an invention known publicly through any means. \u00a0This can include publication of the details of the invention or public use. \u00a0Great care should be taken with disclosing an invention prior to filing a patent application because it may affect the validity of the\u00a0granted patent. \u00a0In general, any disclosure prior to filing should be avoided.<\/li>\n<\/ol>\n
    DIVISIONAL APPLICATION<\/strong><\/h6>\n

    Refers to a patent application that is split out from another application. \u00a0The original is referred to as a \u2018parent application\u2019. \u00a0A patent is only allowed to protect one invention. \u00a0If an application has more than one invention then a divisional application can be filed so applications for each invention can be pursued. \u00a0In some countries including Australia and New Zealand, a divisional application can also be used to extend the time by which the application must be accepted.<\/p>\n

    EXAMINATION<\/strong><\/h6>\n

    The process by which a patent office determines whether to accept a patent application.<\/p>\n

    EXECUTE\/EXECUTED<\/strong><\/h6>\n

    Completion of a document by the party or parties to which the document relates to legally validate the document. Usually includes signing and dating (often in front of a witness).<\/p>\n

    EXTENSION\/EXTENSION OF TIME<\/strong><\/h6>\n

    Deadlines given to respond to matters in a patent prosecution can often, but not always, be extended. Obtaining an extension to a deadline may be useful for a number of reasons, including to delay costs or to keep competitors in the dark as to your intentions. Your IP advisor can tell you what extensions are available for any given deadline.<\/p>\n

    FORMALITIES<\/strong><\/h6>\n

    Formalities refer to the compulsory documentation required by a country\u2019s Patent Office during a patent prosecution. This includes any necessary forms, fees and authorisations that must be submitted with an application. Formalities are said to be complete once all appropriate documentation\/information has been submitted.<\/p>\n

    FREEDOM TO OPERATE (FTO)<\/strong><\/h6>\n

    Typically used in respect of a search performed on granted patents or pending patent applications to determine if a product or process infringes any of the claims. \u00a0If the search determines that there are no relevant granted patents then someone may be said to have freedom to operate (ie to operate a business making and selling the product or using the process). \u00a0Pending patent applications may affect freedom to operate in the future if granted. \u00a0Depending on the technology, the search may need to be expanded to include registered designs.<\/p>\n

    GRANT\/GRANTED PATENT<\/strong><\/h6>\n

    Refers to the status of an application which has proceeded through examination, acceptance and publication to grant. \u00a0At grant, the Deed of Letters Patent issues and it is possible to assert patent rights against third parties.<\/p>\n

    INFRINGEMENT<\/strong><\/h6>\n

    Refers to the commission of a prohibited act with respect to a patented invention without permission from the patentee. \u00a0\u00a0Remedies for infringement can include an injunction to restrain further infringement, payment of damages suffered by the patentee as a consequence of the infringement or payment by the infringer of any profit made by virtue of the infringement,.<\/p>\n

    INTELLECTUAL PROPERTY\/IP<\/strong><\/h6>\n

    Refers to the ownership of an intangible thing \u2013 the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. \u00a0Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. \u00a0Intellectual property encompasses patents, designs, trade marks and copyright.<\/p>\n

    INTELLECTUAL PROPERTY OFFICE\/IPONZ<\/strong><\/h6>\n

    The Intellectual Property Office of New Zealand (IPONZ ) is a Government agency that is part of the Ministry of Economic Development and is responsible for the examination, granting\/registration and administration of registrable intellectual property rights such as patents, designs and trade marks.<\/p>\n

    INTERNATIONAL PHASE<\/strong><\/h6>\n

    Refers to pendency of a PCT application. \u00a0In the international phase a PCT application is assessed for patentability by an international examiner and the applicant is given the opportunity to make amendments. \u00a0During this phase the PCT application is effectively pending in all countries that have signed up to the PCT. \u00a0See also National phase.<\/p>\n

    INVENTION<\/strong><\/h6>\n

    The product of the creative process of inventing. \u00a0In intellectual property law \u201cinvention\u201d is a legal term usually describing patentable subject matter. \u00a0In some jurisdictions, certain types of invention are excluded from patentability. \u00a0They include inventions which are contrary to morality (for example weapons of mass destruction) and methods of medical treatment (on public policy grounds that such methods should be available for health practitioners to use to the benefit of all society).<\/p>\n

    INVENTIVE STEP<\/strong><\/h6>\n

    A legal term to describe a non-obvious improvement over known technologies.<\/p>\n

    INVENTOR<\/strong><\/h6>\n

    The developer of an invention. \u00a0In the field of intellectual property, the word \u201cinventor\u201d is a legal term to describe the person (or each person of a group of people) who made the inventive step to arrive at the invention. \u00a0It is important to understand that this will not necessarily be the person who developed the invention to proof of concept or prototype stage. \u00a0If the concept itself is inventive then the inventor will be the person who conceived the concept. \u00a0Ascertaining the correct inventor(s) is important as he or she will need to be named in any patent application and there could be adverse consequences for omitting an inventor or adding someone who is not a true inventor.<\/p>\n

    IP AUSTRALIA<\/strong><\/h6>\n

    IPAustralia is an Australian Government agency that is responsible for the examination, granting\/registration and administration of registrable intellectual property rights such as patents, designs and trade marks. Includes the Patent, Designs and Trade Marks Offices.<\/p>\n

    LAPSE<\/strong><\/h6>\n

    For a granted patent to remain in force, regular renewal fees (sometimes called maintenance fees or annuity fees) need to be paid. \u00a0If these fees are not paid the rights given by a patent will no longer be enforceable; the patent is said to have lapsed. \u00a0Once a patent lapses, anyone is free to use the invention described. \u00a0However, renewal fees can sometimes be paid late so it is possible for a lapsed patent to be revived.<\/p>\n

    LICENCE<\/strong><\/h6>\n

    A legal document granting another party permission to use an invention that is the subject of a granted patent. \u00a0The details of a licence depend on the arrangement agreed by the parties, but normally a licence fee and\/or royalties will be payable.<\/p>\n

    MONOPOLY<\/strong><\/h6>\n

    A patent grants the patentee a monopoly in the invention that is the subject of the patent. \u00a0The monopoly extends to the exclusive rights to make, sell, use or import the invention.<\/p>\n

    NATIONAL PHASE<\/strong><\/h6>\n

    Refers to the process of using a PCT application to file applications in individual countries where protection is desired. \u00a0The advantage of filing a PCT application is that this step can be delayed by 30 or 31 months (depending on the country) from the first filed application for the invention \u00a0\u00a0Examination of the application will then proceed in each country separately. \u00a0Some countries will base examination on the assessment performed by the PCT examiner.<\/p>\n

    NOVELTY\/NOVEL<\/strong><\/h6>\n

    One of the requirements for patentability. \u00a0In patent law \u201cnovel\u201d simply means new or not previously known.<\/p>\n

    OBVIOUSNESS\/OBVIOUS<\/strong><\/h6>\n

    For a patent to be valid, it must not be obvious, and must involve an inventive step, over known technologies. \u00a0See novelty, anticipation and inventive step for further details.<\/p>\n

    OPPOSITION<\/strong><\/h6>\n

    In some countries, including Australia and New Zealand, once a patent application has been accepted, there is a period where the application may be objected to (or opposed), by a third party. If no opposition is made the patent application will proceed to grant.<\/p>\n

    Any party that has an interest in the subject matter of the patent can oppose acceptance. \u00a0The grounds that can be used to oppose a patent application include lack of novelty, lack of inventive step and insufficient disclosure of the invention.<\/p>\n

    Not all countries have an opposition period on patent applications. For country specific information, contact your IP advisor<\/p>\n

    OPPOSITION PROCEEDINGS<\/strong><\/h6>\n

    An opposition proceeding involves the submission of arguments and supporting evidence from both the applicant and the opponent and may be resolved in a hearing.<\/p>\n

    OWNER<\/strong><\/h6>\n

    A legal term to describe a person entitled to make an application for a patent. For example, the inventor, the assignee of the inventor, or the legal representative of a deceased inventor or his\/her assignee.<\/p>\n

    PATENT<\/strong><\/h6>\n

    A proprietary right in an invention which provides the owner with an exclusive right for a defined period (usually 20 years) to make, sell, use or import the invention. \u00a0In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge. \u00a0The patented invention may also be used by the public once the patent lapses.<\/p>\n

    PATENTABILITY<\/strong><\/h6>\n

    The extent to which an invention is able to satisfy the legal requirements to be the subject of a granted patent. \u00a0This is dependent on those aspects of the invention for which protection is sought, as defined by the claims of a patent application. In general, the claims of a patent must include at least one feature that is novel, involves an inventive step and is useful to be patentable. \u00a0A patent search can be carried out to assess whether an invention is patentable in view of known technology.<\/p>\n

    PATENTEE<\/strong><\/h6>\n

    The owner of a granted patent.<\/p>\n

    PCT \/ PCT APPLICATION<\/strong><\/h6>\n

    The Patent Co-operation Treaty is an international law treaty establishing a single procedure for filing a patent application in many countries. \u00a0During the international phase of the application it is assessed for patentability by an international examiner and the application can be amended as a result. \u00a0After the international phase is the national phase, in which applications are filed and examined in individual countries in which protection is required. \u00a0Filing a PCT application delays the filing of multiple individual applications in many countries until 30 or 31 months from the first filed application for the invention. \u00a0Not every country is a member of the PCT so you should always check with your IP advisor.<\/p>\n

    PENDING<\/strong><\/h6>\n

    See Application.<\/p>\n

    PRIOR ART<\/strong><\/h6>\n

    The collective term for information (documents and prior used products, processes etc) that has been made available to the public before a given date that might be relevant to the novelty of the subject matter of a patent application.<\/p>\n

    PRIORITY DATE<\/strong><\/h6>\n

    Usually, the date of filing the first application in which the invention is disclosed. The date at which the novelty and obviousness of a patent application are assessed. \u00a0Generally, it is better to seek as early a priority date as possible to reduce the amount of prior art that could affect the novelty of the invention.<\/p>\n

    PROSECUTE\/PROSECUTION<\/strong><\/h6>\n

    The carrying out of a legal proceeding. \u00a0The prosecution of a patent application refers to the process of filing the documents constituting the application and the process of examination of the application.<\/p>\n

    PROVISIONAL SPECIFICATION<\/strong><\/h6>\n

    A document which typically describes an invention and accompanies a provisional application. Provisional applications are typically the first filed application in Australia and New Zealand.<\/p>\n

    PUBLICATION\/PUBLISHED<\/strong><\/h6>\n

    At some point a patent application is published, meaning its contents are available for anyone to read. \u00a0In in most countries publication occurs 18 months after the application is filed.<\/p>\n

    RENEWAL FEES<\/strong><\/h6>\n

    Regular payment is required to maintain a granted patent. \u00a0 Non-payment of the fees will result in a patent lapsing and rights will be lost. \u00a0In certain circumstances renewal fees can be paid late.<\/p>\n

    REVOCATION<\/strong><\/h6>\n

    A procedure in which the validity of a\u00a0granted patent\u00a0is contested. \u00a0 \u00a0A revocation proceeding involves the submission of arguments and supporting evidence from both the patentee and the party seeking revocation and will usually be resolved in a hearing. \u00a0The grounds that can be used to revoke a granted patent include lack of novelty, lack of inventive step and insufficient disclosure of the invention.<\/p>\n

    SEARCH<\/strong><\/h6>\n

    A review of\u00a0patent databases\u00a0to look for relevant published patent specifications. \u00a0Typically, the search will be performed with respect to particular jurisdictions. \u00a0Patent searching can be carried out for a number of reasons. \u00a0The most common reasons are to determine whether an invention is novel or a party has freedom to operate in particular countries, in which case the search will only be concerned with patent applications and granted patents which remain in force in those countries. \u00a0Patent searching may also be conducted to identify relevant prior art which can be used to support a\u00a0patent opposition\/revocation, or by an examiner during examination of a patent application.<\/p>\n

    Patent searching can also be used to identify the activities of competitors or what products may be coming to market.<\/p>\n

    SPECIFICATION<\/strong><\/h6>\n

    The document that accompanies a\u00a0patent application. \u00a0It defines the scope of the invention in the claims and provides a detailed description of the nature, use and purpose of the invention. A specification may be provisional or complete and there are different rules applying to each.<\/p>\n

    USEFUL \/ UTILITY<\/strong><\/h6>\n

    To be patentable, an invention must be useful. \u00a0If it is useful it is said to possess utility. \u00a0In some countries this requirement is expressed as being \u2018capable of industrial application\u2019. \u00a0The invention simply needs to have some purpose or achieve something. \u00a0Generally this purpose must be expressed in the specification.<\/p>\n

    VALIDITY<\/strong><\/h6>\n

    A patent is valid if it is legally enforceable. \u00a0This means that it must fulfil the criteria of patentability and not be able to be invalidated by a\u00a0patent revocation proceeding. \u00a0It is possible that a granted patent may not be valid, or at least its validity could be questionable. \u00a0Ultimately, only the Courts can judge the validity of a granted patent.<\/p>\n

     <\/p>\n","protected":false},"excerpt":{"rendered":"

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