ACCEPTED/ALLOWED

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).

ANNUITY

See Renewal fees.

ANTICIPATION

An invention is said to have been anticipated, or lack novelty, if it has been disclosed or used.  A valid patent cannot usually be obtained if there has been anticipation before the priority date of that patent application.

In most jurisdictions, anticipation of a patent application can occur by either prior publication or prior use.

“Published” means available to the public.  Usually, a document will be deemed available to the public if it can be inspected as of right  by members of the public (upon payment of a fee or otherwise), or could be downloaded from the internet at the relevant date.

“Prior use” means use in a public manner.

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.

APPARATUS

A term often used in a patent claim to define a physical device or piece of equipment in a non-limiting sense.

APPLICATION

In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive.  The terms “application”, “pending” or “patent application” are used to describe the status of the application up to grant.

ASSIGNEE

The party receiving a legal transfer of rights (from the assignor).

ASSIGNMENT

The legal transfer of rights from one party (assignor) to another party (assignee).  In many cases a specific assignment document is required to register the transfer of rights with a patent office.

ASSIGNOR

The party legally transferring rights (to the assignee).

CLAIMS

Numbered paragraphs at the end of a patent complete specification which define the scope of the invention protected by the patent.  The 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.

COMMERCIALISATION/ COMMERCIALLY WORKED / COMMERCIAL DEALINGS

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).

COMPLETE SPECIFICATION

A document which contains a complete written description of the invention which the applicant seeks to protect.  The complete specification must end with one or more claims defining the scope of the invention.  To 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 patent applicant at the time the application is filed.

DEED OF ASSIGNMENT

A document which includes the legal terms of an Assignment.

DEED OF LETTERS PATENT

The official document which is issued when a patent application has been granted as a patent. This document gives the patentee the exclusive rights to make, sell, use or import the invention described in the patent.

DISCLOSURE

1. Refers to the description of the invention provided in the specification accompanying a patent application.  For 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.
2. Refers to making an invention known publicly through any means.  This can include publication of the details of the invention or public use.  Great care should be taken with disclosing an invention prior to filing a patent application because it may affect the validity of the granted patent.  In general, any disclosure prior to filing should be avoided.

DIVISIONAL APPLICATION

Refers to a patent application that is split out from another application.  The original is referred to as a ‘parent application’.  A patent is only allowed to protect one invention.  If an application has more than one invention then a divisional application can be filed so applications for each invention can be pursued.  In 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.

EXAMINATION

The process by which a patent office determines whether to accept a patent application.

EXECUTE/EXECUTED

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).

EXTENSION/EXTENSION OF TIME

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.

FORMALITIES

Formalities refer to the compulsory documentation required by a country’s 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.

FREEDOM TO OPERATE (FTO)

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.  If 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).  Pending patent applications may affect freedom to operate in the future if granted.  Depending on the technology, the search may need to be expanded to include registered designs.

GRANT/GRANTED PATENT

Refers to the status of an application which has proceeded through examination, acceptance and publication to grant.  At grant, the Deed of Letters Patent issues and it is possible to assert patent rights against third parties.

INFRINGEMENT

Refers to the commission of a prohibited act with respect to a patented invention without permission from the patentee.   Remedies 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,.

INTELLECTUAL PROPERTY/IP

Refers to the ownership of an intangible thing – 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.  Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon.  Intellectual property encompasses patents, designs, trade marks and copyright.

INTELLECTUAL PROPERTY OFFICE/IPONZ

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.

INTERNATIONAL PHASE

Refers to pendency of a PCT application.  In the international phase a PCT application is assessed for patentability by an international examiner and the applicant is given the opportunity to make amendments.  During this phase the PCT application is effectively pending in all countries that have signed up to the PCT.  See also National phase.

INVENTION

The product of the creative process of inventing.  In intellectual property law “invention” is a legal term usually describing patentable subject matter.  In some jurisdictions, certain types of invention are excluded from patentability.  They 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).

INVENTIVE STEP

A legal term to describe a non-obvious improvement over known technologies.

INVENTOR

The developer of an invention.  In the field of intellectual property, the word “inventor” 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.  It is important to understand that this will not necessarily be the person who developed the invention to proof of concept or prototype stage.  If the concept itself is inventive then the inventor will be the person who conceived the concept.  Ascertaining 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.

IP AUSTRALIA

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.

LAPSE

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

LICENCE

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

MONOPOLY

A patent grants the patentee a monopoly in the invention that is the subject of the patent.  The monopoly extends to the exclusive rights to make, sell, use or import the invention.

NATIONAL PHASE

Refers to the process of using a PCT application to file applications in individual countries where protection is desired.  The 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   Examination of the application will then proceed in each country separately.  Some countries will base examination on the assessment performed by the PCT examiner.

NOVELTY/NOVEL

One of the requirements for patentability.  In patent law “novel” simply means new or not previously known.

OBVIOUSNESS/OBVIOUS

For a patent to be valid, it must not be obvious, and must involve an inventive step, over known technologies.  See novelty, anticipation and inventive step for further details.

OPPOSITION

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.

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

Not all countries have an opposition period on patent applications. For country specific information, contact your IP advisor

OPPOSITION PROCEEDINGS

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.

OWNER

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.

PATENT

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.  In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge.  The patented invention may also be used by the public once the patent lapses.

PATENTABILITY

The extent to which an invention is able to satisfy the legal requirements to be the subject of a granted patent.  This 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.  A patent search can be carried out to assess whether an invention is patentable in view of known technology.

PATENTEE

The owner of a granted patent.

PCT / PCT APPLICATION

The Patent Co-operation Treaty is an international law treaty establishing a single procedure for filing a patent application in many countries.  During the international phase of the application it is assessed for patentability by an international examiner and the application can be amended as a result.  After the international phase is the national phase, in which applications are filed and examined in individual countries in which protection is required.  Filing 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.  Not every country is a member of the PCT so you should always check with your IP advisor.

PENDING

See Application.

PRIOR ART

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.

PRIORITY DATE

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.  Generally, 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.

PROSECUTE/PROSECUTION

The carrying out of a legal proceeding.  The prosecution of a patent application refers to the process of filing the documents constituting the application and the process of examination of the application.

PROVISIONAL SPECIFICATION

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.

PUBLICATION/PUBLISHED

At some point a patent application is published, meaning its contents are available for anyone to read.  In in most countries publication occurs 18 months after the application is filed.

RENEWAL FEES

Regular payment is required to maintain a granted patent.   Non-payment of the fees will result in a patent lapsing and rights will be lost.  In certain circumstances renewal fees can be paid late.

REVOCATION

A procedure in which the validity of a granted patent is contested.    A 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.  The grounds that can be used to revoke a granted patent include lack of novelty, lack of inventive step and insufficient disclosure of the invention.

SEARCH

A review of patent databases to look for relevant published patent specifications.  Typically, the search will be performed with respect to particular jurisdictions.  Patent searching can be carried out for a number of reasons.  The 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.  Patent searching may also be conducted to identify relevant prior art which can be used to support a patent opposition/revocation, or by an examiner during examination of a patent application.

Patent searching can also be used to identify the activities of competitors or what products may be coming to market.

SPECIFICATION

The document that accompanies a patent application.  It 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.

USEFUL / UTILITY

To be patentable, an invention must be useful.  If it is useful it is said to possess utility.  In some countries this requirement is expressed as being ‘capable of industrial application’.  The invention simply needs to have some purpose or achieve something.  Generally this purpose must be expressed in the specification.

VALIDITY

A patent is valid if it is legally enforceable.  This means that it must fulfil the criteria of patentability and not be able to be invalidated by a patent revocation proceeding.  It is possible that a granted patent may not be valid, or at least its validity could be questionable.  Ultimately, only the Courts can judge the validity of a granted patent.