Glos∙sa∙ry
/ˈɡlɒs(ə)ri/
a list of terms in a special subject, field, or area of usage, with accompanying definitions.
e.g.
Plain language definitions of terminology used in intellectual property.
There’s a lot of jargon that gets used when talking about intellectual property, particularly with patents. We’ve put together a list of some of them with some relatively simple definitions to help cut through the confusion.
With legal terminology, the detail is important, so these definitions are only intended to be used as a guidance and are not legal advice. If you have any questions about how these terms relate to your own intellectual property needs, please contact us.
A
applicant
/ˈaplɪk(ə)nt/
The legal entity (e.g. person or company) that has filed a patent application at a patent office.
application
/ˌaplɪˈkeɪʃn/
A patent filing that has been filed at a patent office but has not been granted.
assignment
/əˈsʌɪnm(ə)nt/
A document that transfers a right or property (e.g. ownership of a patent application) from one person or company (the assignor) to another (the assignee).
B
branding
/ˈbrandɪŋ/
The overall perception, image, or impression associated with a product or company. This can be protected with trade marks and design rights.
C
claims
/kleɪmz/
The part of a patent application or granted patent that precisely defines what is covered by the patent. The claims are the most important part of a patent for determining what is and what is not within the scope of the legal rights that arise from the patent.
D
description
/dɪˈskrɪpʃn/
The part of a patent application or granted patent that contains technical information to support what is covered by the claims, such as definitions of technical terms and experimental data.
design right
/dɪˈzʌɪn rʌɪt/
A registered or unregistered right that protects the shape or appearance of something.
E
enablement
/ɪˈneɪblmənt/
The requirement for patents and patent applications to describe the claimed invention in enough detail for someone in that technical field to reproduce it, i.e. to provide an enabling disclosure of the invention.
examination report
/ig-ˌza-mə-ˈnā-shən rɪˈpɔːt/
Also called an “office action” or “official action”, a letter from a patent office that contains a patent examiner’s opinion on whether or not a patent application can be granted in its current form.
F
filing date
/ˈfʌɪlɪŋ deɪt/
The date on which a patent application is filed (or is treated as having been filed; see priority); the date at which the claims of the patent application must be novel and inventive in order to be valid.
freedom to operate
/ˈfriːdəm tə ˈɒpəreɪt/
Also called “freedom to practice”, the ability to carry out certain acts (e.g. making a product, using a process) without infringing any patents or other intellectual property rights that belong to other people. Having a granted patent does not in itself provide the patent owner with freedom to operate with respect to the patented invention.
G
grant
/ɡrɑːnt/
A patent that has been granted has been deemed by a patent office to meet its requirements for patentability, and gives the patent owner certain legal rights, particularly the ability to enforce the patent against other people (see infringement); cf a patent application, which is one that has been filed but which has not been granted.
H
hearing
/ˈhɪərɪŋ/
A procedure, either in person or remotely, where a patent applicant or their representative (see patent attorney) has a meeting with one or more patent examiners, and potentially other people, to discuss a particular application or granted patent; also referred to as “oral proceedings”, particularly in the context of the European Patent Office.
I
infringement
/ɪnˈfrɪn(d)ʒm(ə)nt/
In the context of patents, infringement refers to actions by one person that are covered by the claims of a patent owned by another person, where the first person does not have the patent owner’s permission to do these actions. In these circumstances, the patent owner has the right to ask a court to use its powers to address this, e.g. by ordering the infringer to pay money to the patent owner as compensation for the infringing acts.
invalidity
/ˌɪnvəˈlɪdɪti/
A granted patent can be revoked (i.e. made to no longer have any legal effect) if reasons are given to a patent office or court for why the patent does not meet the patentability requirements for a given patent office, i.e. why the patent is invalid. An invalidity opinion (or validity opinion) is a document provided by e.g. a patent attorney that contains arguments and evidence for why a patent may be found to be invalid.
invention
/ɪnˈvɛnʃn/
A technical solution to a technical problem. An invention may be an object, or a way of doing something. An invention may be an entirely new concept, or may be an improvement over something that already exists, or may be a combination of existing things arranged in a new way.
inventive step
/ɪnˈvɛntɪv stɛp/
Also referred to as “inventivness” or “non-obviousness”, one of the fundamental requirements for a patent to be granted. To be valid, the claims of a patent must usually define an invention that is not only new (i.e. novel), but which also would not have been obvious to invent before the patent was filed. The legal standard used to assess inventive step varies between different patent offices.
inventor
/ɪnˈvɛntə/
A person who came up with the “clever bit” of an invention. Whether or not someone who contributed to an invention is an inventor for the purposes of a patent application is a legally defined standard, unlike e.g. the authors named on a scientific journal article. For example, someone who creates a new and useful material would likely be an inventor, whereas someone who did the analysis of the material would not.
J
jurisdiction
/ˌdʒʊərɪsˈdɪkʃn/
The geographical area or territory in which a legal right (e.g. a patent) has a legal effect; e.g. the High Court of Justice in London has jurisdiction to hear patent cases and issue judgments relating to UK patents.
K
know-how
/ˈnəʊhaʊ/
A form of so-called “soft” intellectual property, i.e. one which is not registered with an intellectual property office, know-how refers to knowledge or information about a product, or expertise in carrying out a process, that is generally gained through practical experience with that product or process.
L
licence
/ˈlʌɪsns/
A legal agreement that gives someone permission to do something that would otherwise be an infringement of a legal right (e.g. a patent).
M
method
/ˈmɛθəd/
A method claim in a patent covers a way of doing something, e.g. a process for making something. A method claim may also cover any thing that is directly made by that method.
N
national phase
/ˈnaʃən(ə)l feɪz/
See PCT. The procedural stage of a PCT application where individual patents are filed in each country of interest.
novelty
/ˈnɒvlti/
A fundamental requirement for a patent to be granted. The invention defined by the claims must be new (i.e. novel) when compared to all other things that existed (or which have been described in enough detail that they could be made to exist) before the patent was filed.
O
office action
/ˈɒfɪs ˈakʃn/
Also called an “examination report” or “official action”, a letter from a patent office that contains a patent examiner’s opinion on whether or not a patent application can be granted in its current form.
opposition
/ˌɒpəˈzɪʃn/
A procedure through which a recently granted patent can be contested as being invalid (see invalidity). Often used to mean opposition proceedings at the European Patent Office.
P
patent
/ˈpatnt/
A patent is a legal right granted by a government (or intergovernmental organisation) that gives the patent owner exclusivity over an invention defined in the claims of the patent. The patent owner is given the right to prevent anyone else from making or using the invention covered by the patent without their permission.
patent attorney
/ˈpatnt əˈtəːni/
A qualified legal professional with a relevant technical background (e.g. one or more degrees in science or engineering) who can assist people with everything to do with patents.
patent office
/ˈpatnt ˈɒfɪs/
An organisation that has been given the legal authority (e.g. by a national government) to grant patents to those that apply for them. A patent office may also be responsible for other forms of intellectual property, such as design rights and trade marks.
PCT
/piː siː tiː/
The Patent Cooperation Treaty. This is an international agreement that creates a framework through which patent applicants can more easily file patent applications in multiple countries around the world.
priority
/prʌɪˈɒrɪti/
An internationally recognised right to have a patent application’s filing date be treated as that of an earlier-filed application to the same invention, with the same inventors.
publication
/ˌpʌblɪˈkeɪʃn/
A patent application is usually published 18 months after its filing date. Before the publication date, the contents of the patent application are not visible to the public.
Q
qualified
/ˈkwɒl əˌfaɪd/
A qualified patent attorney is one who has passed all of the relevant examinations to be recognised as a patent attorney in a particular jurisdiction. A part-qualified attorney is one who has passed some, but not all, of the relevant examinations.
R
regional phase
/ˈriːdʒən(ə)l feɪz/
See PCT, national phase. The procedural stage of a PCT application where individual patents are filed with one or more patent offices that are responsible for the granting of patents in more than one country (e.g. the European Patent Office).
renewal fee
/rɪˈnjuːəl fiː/
Also referred to as renewals or annuities, the periodical fee required by a patent office to keep a granted patent (or patent application) pending or in force in that territory. These fees are typically due annually, and usually increase over the twenty year maximum lifetime of a patent.
revocation
/ˌrɛvəˈkeɪʃn/
A patent may be revoked by a court or patent office as a result of it being found to be invalid during invalidity proceedings, or as a result of an opposition. A revoked patent no longer has any legal effect, and may be treated as having never had any legal effect.
S
search
/səːtʃ/
A search is an attempt to identify documents (e.g. patent applications, granted patents, websites, scientific literature) that could be relevant to a particular intellectual property right. For example, a patent office will carry out a search for prior art that is relevant to a patent application before deciding whether or not to grant the patent application.
skilled person
/skɪld ˈpəːsn/
Also referred to as a person skilled in the art, this is an imaginary person (i.e. a legal construct) that is used in various legal tests as the notional addressee for sufficiency and inventive step.
specification
/ˌspɛsɪfɪˈkeɪʃn/
The specification is the entire patent application document, including the title, description, claims, and any drawings.
state of the art
/ˌsteɪt əv ðɪ ˈɑːt/
All of the technical information that is available to the public before the filing date of a patent application.
sufficiency
/səˈfɪʃnsi/
Also referred to as “enablement”, the requirement that to be a valid, a patent must contain enough technical information that somebody who works in the relevant area of technology would be able to reproduce the claimed invention using that information, in combination with their own knowledge.
T
term
/təːm/
The term of an intellectual property right refers to the length of time for which it has legal effect. For patents, this is a maximum of twenty years from the filing date of the patent application.
territory
/ˈtɛrɪt(ə)ri/
See jurisdiction. The geographical area in which a legal right (e.g. a patent) has legal effect.
trade mark
/ˈtreɪd mɑːk/
A trade mark (or “trademark” outside of the UK) is a symbol, word, logo, or similar that identifies a product or service as originating from one particular source (e.g. from a particular company). Trade marks are used as part of a company’s branding.
trade secret
/ˈtreɪd ˈsiːkrɪt/
A form of so-called “soft” intellectual property, i.e. one which is not registered with an intellectual property office, a trade secret is knowledge or information that is commercially valuable because it is secret, that only a limited number of people have access to, and that steps have been taken to keep secret. An example of a trade secret would be the ingredient list of a soft drink, which has been kept confidential rather than protected in a patent.
U
utility model
/juːˈtɪl.ə.ti ˈmɒdl/
A utility model is a legal right that is available in some territories (e.g. Germany, Japan) that is similar to a patent, but with some combination of a shorter term, fewer or weaker consequences of infringement, a lower cost to obtain, and less strict patentability requirements when compared to a standard patent.
utility patent
/juːˈtɪl.ə.ti ˈpatnt/
A utility patent is what is normally referred to when the term “patent” is used. It is the type of patent that protects technical things, i.e. inventions. In contrast, a “design patent” is equivalent to a “design right” and relates to the appearance of an object.
V
validation
/ˌvalɪˈdeɪʃn/
The process by which a European patent application, when granted, is given the same effect as a national patent in the territory in which it is validated. The patent owner must choose which territories to validate the granted European patent in; the patent will only be in force in the territories in which it is validated.
W
withdraw
/wɪðˈdrɔː/
A patent applicant may choose to withdrawn a patent application if they do not wish to continue with the process of attempting to get it granted. A patent application may also become withdrawn by a patent office if the applicant does not reply to official letters or pay fees in time.
X
X
/eks/
In a search report from a patent office, a prior art document that has been put in category “X” is one which the patent office considers to be relevant for both novelty and inventive step.
Y
Y
/waɪ/
In a search report from a patent office, a prior art document that has been put in category “Y” is one which the patent office considers to be relevant for inventive step only (i.e. not relevant for novelty).
Z
zero
/ˈzɪərəʊ/
The number of items of patent terminology that I could think of that begin with the letter “z”.