IP Dictionary

Abstract:
The abstract is a part of the patent application. It is a concise (preferably not containing more than 150 words) summary with the purpose of giving brief technical information about the invention. The abstract is to be used as technical information only and cannot be used for interpreting the scope of the protection sought.

Annuity fee:
Annuity fee is the same as renewal fee or maintenance fee. Applicants must pay maintenance or annuity fees –generally on an annual basis – to maintain the validity of the patent.

Claim:
Claims are the most important part of a patent application, since they determine the scope of the protection conferred by the patent or patent application. Every patent application must include at least one claim, and each claim can be one sentence only. A claim has to define the essential features of the invention in technical terms.

Contracting State:
Member states that are the part of the European Patent Organisation. There are 38 Contracting States in 2020, see the list of countries here: https://www.epo.org/about-us/foundation/member-states.html

European patent:
You can apply for a European patent at the European Patent Office (EPO) with a single filing, and eventually obtain patent protection in 38 countries – called Contracting States – and some extension states. In the European patent procedure you have to choose the countries after grant where you would like to validate and maintain the patent. Thus, the European patent becomes a bundle of national patents upon grant.
(You can find a full article about the European patenting process and its costs here.)

European Patent Convention (EPC):
The European Patent Convention, signed in 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted.

European Patent Office (EPO):
Executive body for the European Patent Organisation. Within the European Patent Office, examiners are responsible for examining and refusing or granting European patent applications. Headquarters location: Munich, Germany; founded: July 10, 1977. Website of EPO: www.epo.org.

Filing date:
The date of filing is the date on which the documents filed by the applicant contain the necessary documents. When it comes to European patent applications, the followings are required: an indication that a European patent is sought; information identifying the applicant or allowing the applicant to be contacted; and a description or reference to a previously filed application. The date of filing is a very important date for several reasons. It is the date from which the term of the patent is calculated, and the filing date will represent the date at which the invention’s patentability (novelty, inventive step, etc.) is assessed. Furthermore, it is the date from which the priority year is calculated.

First-to-file and first-to-invent rules:
First-to-file and first-to-invent are legal concepts that define who has the right to the grant of a patent for an invention. Now, the first-to-file system is used in all countries, which means that the grant of a patent for a given invention belongs to the person who first filed a patent application for that invention – regardless of the date of actual invention. (USA used to apply first-to-invent system, but they switched to the first-to-file system as of 2013.)

Industrial application:
Industrial application is one of the requirements of patentability. An invention is considered as susceptible of industrial application if it can be made or used in any kind of industry (in the sense of the EPC, agriculture is also regarded as an industry) and that the technical teaching disclosed in the application is reproducible.

Intellectual Property (IP):
IP refers to creations of the human mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. IP is protected in law by patents, design patents, copyright and trademarks, to name the most well-known IP rights. The possibility of applying for IP protection enables people to gain recognition and financial benefit from what they invented.

Intellectual Property (IP) strategy:
Creating an IP strategy means coming up with a long-term plan in order to achieve the best combination of IP rights and to gain the most value from these rights. An IP strategy has to cover all IP related questions: what kind of IP rights you need, where and when to file the applications, when to start licensing, etc. Your IP strategy will greatly depend on your goals, your budget, the size of your company and your business plan.

International patent application
See below the definition of Patent Cooperation Treaty (PCT), which is sometimes called international patent application. It is however, not a worldwide patent, only an option to file a large number of patent applications in the national phase. There is no such thing as a worldwide patent.

International phase
International phase is the first phase of a PCT application (followed by the national phase), handled by the World Intellectual Property Organization (WIPO). In the international phase, patent protection is pending under a single patent application. The international phase does not end with a granted patent. The PCT application dies off at the end of the international phase, if the applicant does not enter national phase in at least one member state.

Invention:
A unique or novel product, method, composition or process; something that has never been made before. Some people use the word “patent” as a synonym for a new invention, but it is incorrect. An invention is your new product or method, process, and the patent is the exclusive right you own over the invention.

Inventive step:
Inventive step is one of the requirements of patentability. An invention is only patentable if it is not obvious to the skilled person in the light of the state of the art.

Inventor:
The inventor is the natural person who invented the invention described in the patent application. In your European patent application you must designate the inventor(s). The inventor’s name is mentioned in the published European patent application, unless he waives this right. However, it is the applicant or proprietor who is entitled to exercise the right to the European patent.

License:
Licensing a patent (or a patent application) is a mutual agreement between the patent owner and a third party. Under a patent license agreement, the patent owner permits another individual/organization to commercially use, make, sell, import (etc.) the invention to which the patent or patent application relates for an agreed period of time in return for royalty payment(s). The parties can agree on the specifics (limitations, field of use, geographical territory, exclusivity, structure of payments, etc.) of the license agreement as they wish.
(You can find a full article about licensing here.)

Maintenance fee:
Maintenance fee is the same as renewal fee or annuity fee. Applicants must pay maintenance or renewal fees –generally on an annual basis– to maintain the validity of the patent.

National phase:
National phase is the second phase of a PCT application; following the international phase. National phase can be started in any PCT member states, which means more than 150 countries. The PCT application only continues in the national phase if the applicant chooses at least one member state and enters the national phase by filing the necessary documents at the patent offices of the chosen countries. The final deadline for entering national phase is 2.5 years from the priority day. In the national phase, the PCT application is handled and examined at the local patent offices - according to the usual treatment of patent applications - in the countries chosen, and all of the local time limits, laws, rules, and procedures must be observed. Thus, the decision on granting patents is made exclusively by the national or regional Offices. A national phase can be started at the European Patent Office as well, this route is often called “Euro-PCT”.

Non-Disclosure Agreement (NDA):
NDA is a Confidentiality Agreement between the owner of the information (Owner) and a company receiving it (Recipient), which is to be signed when confidential information has to be shared before a patent application is filed. The Agreement can set out how the Recipient must look after the information and what the Recipient is or is not allowed to do with the information (e.g. use it only for a permitted purpose and not tell anyone else). The Agreement can also state how long the information must be kept secret. After the Recipient has signed the NDA, the Owner can share the confidential information with the Recipient with improved peace of mind.

Novelty:
Novelty is one of the requirements of patentability. An invention is considered to be new if it does not form part of the state of the art. (State of the art is everything that was made available to the public anywhere in the world by any means before the date of filing or date of priority, if it is claimed.)

Official fee:
Official fees are fees charged by patent offices for actions such as filing, search, substantive examination, maintenance fees, issuing grant, etc. You have to pay these fees irrespective of whether you have a representative.

Office action:
An office action (communication from the patent office) will be sent to you by the EPO during the substantive examination stage if there are any objections with regard to the patentability of your application and/or invention. Such a communication will include an invitation to file observations, to correct any deficiencies and, if necessary, to submit amendments to the description, claims and drawings. The communication will give reasons for any objections raised, and will provide evidence and facts to support the objections. It will also state the period within which you (or your patent attorney) must reply. Failure to reply in due time will cause the application to be deemed withdrawn.
(You can find a full article about office actions here.)

Opposition:
After a European patent has been granted, it may be opposed by third parties – usually the patent proprietor’s competitors – if they believe that it should not have been granted. This could be on the grounds, for example, that the invention lacks novelty or does not involve an inventive step. Notice of opposition can only be filed within nine months of the grant being mentioned in the European Patent Bulletin. Opposition is the last chance to attack a European patent as a single entity in a single forum. Later, the patent can only be challenged in national courts and a ruling in one country has no effect on the patents for the same invention in other countries.

Paris Convention:
Paris Convention is a multilateral arrangement, which – in its Article 4 – introduced the concept of priority right for applicants in 1883 on international level. Paris Convention states that an applicant filing an application for an intellectual property right may claim priority for any subsequent identical application within twelve months (starting from the date of filing of the earlier application). The main effect of priority right is that when the novelty and inventiveness of the subsequent application is examined, the earliest date (filing date of the first application) will be considered as the effective date for determining the state of the art. Simply put, this means that any prior art documents published after the earliest date will not be cited in the search report, and thus cannot take away the novelty [there is an exception defined in Art.54(3) EPC].

Patent:
An exclusive, territorial right granted for an invention for a limited time.
(You can find an article with the title “What can you patent” here.)

Patent applicant:
The individual/company who filed a patent application in order to obtain a patent over his invention. (Once his patent is granted, he will become the patent proprietor.)

Patent application:
A patent application is a request filed at a patent office in order to obtain a patent for an invention described in the patent application.
(You can find a full article about the parts of a patent application here.)

Patent attorney:
Patent attorneys are qualified to represent clients before patent offices in order to assist them in obtaining Intellectual property rights, such as patents. Furthermore, patent attorneys are qualified to advise clients regarding IP and act in all matters and procedures relating to patent and trademark law. In most jurisdictions, in addition to the IP studies, they are required to have both legal and technical background.

Patent Cooperation Treaty (PCT):
PCT is an international patent law treaty signed in 1970, providing a unified procedure for filing patent applications in up to 153 countries. (See the full list of countries here: https://www.wipo.int/pct/en/pct_contracting_states.html.) Instead of having to decide the list of countries and then file your application in X countries in X languages, using X patent firms and paying the fees of X patent offices, you can file a single PCT application and then decide about the countries at a later stage, when you have more knowledge of the market, of your customers, etc. So, with a single filing (made in one language) and a one-time payment you are provided with a date of filing, and the possibility to start national phase in any of the PCT member states 30 months (2.5 years) later. PCT saves you both time and money and lets you focus on your invention in the initial period.
(You can find a full article about PCT here.)

Patent office:
The authority that examines patent applications and refuses or grants patents. Another task of a patent office is to maintain a patent database where they register the rights and keep up-to-date information about the patents and patent proprietors. Most patent offices are national organizations, such as the German Patent Office or the United States Patent and Trademark Office (USPTO). However, there are regional patent offices as well, like the European Patent Office (EPO).

Patent pending:
Patent pending means that an inventor has filed a patent application on his/her invention, but the patent is not yet granted.

Patent proprietor:
The registered owner of an exclusive patent right. (See also patent applicant.)

Prior art search:
A prior art search should be conducted before filing a patent application in order to assess the patentability (novelty and inventive step) of your invention before investing in an expensive patent application process. If, during the prior art search you discover that your invention is not new, you can find opportunities how to improve your invention by finding out the gaps in the existing technology. Furthermore, by conducting a patent search, you can find your competitors' patent applications and the search may also reveal the trend in a particular technical field.

Priority:
Priority right is introduced by Paris Convention. It safeguard inventors’ interests by providing them with time. Priority right offers 12 months to file any patent applications for the same invention. This period of 12 months is often referred to as "priority year". The priority year is counted from the first filing, irrespective of whether the first filing was a European patent application or a national one (or even a utility model application). The main effect of priority right is that when the novelty and inventiveness of the subsequent application is examined, the earliest date (filing date of the first application) will be considered as the effective date for determining the state of the art.

Publication:
18 months after the filing date (or priority date, if priority is claimed) every patent application is published and becomes available to the public.
(You can find a full article about publication here.)

Royalty:
Royalties are future payments to compensate the licensor for licensing his patent rights. 

State of the art:
The state of the art comprises everything made available to the public anywhere in the world by means of a written or oral description, by use, or in any other way, before the date of filing or priority.

Substantive examination:
Substantive examination considers the patentability of a patent application and the invention it relates to. During the substantive examination the patent office examines whether the invention satisfies the requirements of patentability. In the European patenting procedure, the substantive examination covers the following questions: whether the invention is new, involves an inventive step, is capable of industrial application and does not fall within excluded subject-matter and some other requirements, such as whether the invention as disclosed in the application can be reproduced, the clarity of the claims, or whether any amendments go beyond the disclosure of the application as originally filed.
(You can find a full article about substantive examination here.)

Technology transfer:
Technology transfer is the process of developing innovation and research from an organization into potentially patentable and licensable products or services for the marketplace, either through licensing to a company in the industry or through a start-up company.

Trademark:
Trademark is a type of intellectual property; it is a recognizable sign, design, or expression capable of identifying and distinguishing the goods or services of one enterprise from those of other enterprises. Well-known examples of trademarks are Apple, Nike, Adidas and Toyota. A registered trademark entitles its owner to the exclusive right to use the trademark.

Trade secret:
Trade secret is confidential business information which provides its owner a competitive edge over its competitors. A trade secret is any practice or process of a company that is known only to a limited group of persons in the company. Read more here: https://www.wipo.int/tradesecrets/en/

Transfer:
Transferring a patent application or a patent basically means to give the rights attached to the patent application or the patent to a third person. By transferring the patent application or the patent you assign all of the rights, title and interests coming with the IP right to the assignee in return for a lump sum payment.
(You can find a full article about transfers here.)

TRIPS Agreement:
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international legal agreement between all the member nations of the World Trade Organization (WTO). It sets down minimum standards for the regulation by national governments of many forms of intellectual property (IP) as applied to nationals of other WTO member nations.

Unitary patent:
Unitary Patent entered into force on 1 June 2023. It is a single European patent with unitary effect in the European Union Member States that have ratified the agreements, which is currently 17 countries only. After a European patent is granted, the patent proprietor can request unitary effect, thereby getting a Unitary Patent - without the validation procedure - which provides uniform patent protection in all the EU Member States that signed the agreement.
(You can find a full article about Unitary patent here.)

Validation:
Validation is an administrative but –in most countries– a mandatory step after the grant of a European patent. Validation is the process of registering your granted European patent at the national patent offices of the Contracting States where you would like to own an enforceable right. You can choose any number of member states that are part of the European Patent Organisation. (There are 38 Contracting States in 2020, see the list of countries here: https://www.epo.org/about-us/foundation/member-states.html) Since your patent has already been granted by the EPO, the national patent offices will not examine your invention again. Most member states require you to appoint a local representative, file a translation of certain parts of the patent document and pay an official fee for the publication of your patent. (However, the validation process, requirements and costs vary country by country.)
(You can find a full article about validation here.)

World Intellectual Property Organization (WIPO):
WIPO is one of the 15 specialized agencies of the United Nations (UN). WIPO was created to encourage creative activity, to promote the protection of intellectual property throughout the world. WIPO administers several international treaties, one of which is patent cooperation treaty (PCT), which generates about 75% of WIPO's revenue. Headquarters location: Geneva, Switzerland; founded: 14 July 1967.