Since I am not writing for an audience of lawyers, I try to write plainly. But, often I am not entirely successful and slip into jargon. If you are not familiar with any of the words or phrases I use in my other posts, please look here for definitions. Please let me know if there is anything I have left out of this list.
Appeal Board – Shorthand for the Board of Patent Appeals and Interferences (BPAI). The Board consists of Administrative Patent Judges (APJs), typically long-time Examiners with good records. An examiner’s second rejection of one or more claims can be appealed to the Appeal Board.
Claims – A patent application must include a section that specifically sets out what the inventor claims is entitled to patent protection as a new, non-obvious invention. The section begins “I (or We) Claim:” and a numbered list follows. Each number is referred to as a “claim” and is examined separately by the Examiner for compliance with the patent law.
Examiner – An examiner is an employee of the United States Patent and Trademark Office and examines either patent or trademark applications for compliance with the law. If the application is not in compliance with the law, an Office Action is sent out by the Examiner explaining why. If the application does comply with the law, it will be allowed to issue as a patent or registered trademark, as the case may be.
Office Action – This is a document sent to the applicant or applicant’s representative from the Examiner at the Patent Office explaining why a patent application is not in condition for allowance. An Office Action is only sent if one or more of the claims of an application is rejected. If all the claims are in condition for allowance, the Examiner will instead send a Notice of Allowance.
Patent Prosecution – The process of applying for and receiving a patent from the United States Patent and Trademark Office (USPTO or just “PTO”). Preparing and filing an application, responding to Office Actions, and appealing to the Appeal Board all fall into this category. Sometimes, due to the word “prosecution,” someone will think this refers to suing people who infringe patents, but it doesn’t. That would be patent litigation.
PTO – Short for United States Patent and Trademark Office. This is an agency of the United States government and a division of the Commerce Department. It is responsible for examining patent and trademark applications for compliance with the law.
{ 0 comments… add one now }