Patent Terms Explained: Essential Definitions for Inventors and Business Owners

What Are the Most Important Patent Terms to Know?

Patent terminology includes specialized legal and technical language essential for understanding patent rights and prosecution. The most critical terms include: (1) Claims defining the legal scope of patent protection under 35 U.S.C. § 112(b), (2) Prior art encompassing all publicly available information before filing under 35 U.S.C. § 102, (3) Specification providing the written description and enablement under 35 U.S.C. § 112(a), (4) Prosecution referring to the USPTO examination process, (5) Obviousness analyzing whether inventions would have been obvious to skilled persons under 35 U.S.C. § 103, (6) Patent pending status indicating filed but not yet granted applications, and (7) Infringement occurring when others make, use, or sell patented inventions without authorization under 35 U.S.C. § 271. Understanding these terms enables inventors to communicate effectively with patent attorneys, comprehend office actions, and make informed strategic decisions about patent protection.

Why Patent Terminology Matters for Business Owners

Patent law employs highly technical language developed over centuries of case law and statutory evolution. Words that seem straightforward in everyday English carry precise legal meanings in patent contexts that can dramatically affect patent scope, validity, and enforcement.

For example, the word "comprising" in patent claims has a specific legal meaning as an open-ended transition allowing additional elements beyond those recited. Using "comprising" versus "consisting of" fundamentally changes claim scope and what constitutes infringement. Similarly, distinguishing between "novelty" and "non-obviousness" is essential because patents can fail for either reason despite satisfying the other requirement.

At Yomtobian Law, we ensure clients understand patent terminology throughout prosecution, enabling informed participation in strategic decisions. Our comprehensive patent services demystify complex legal concepts, translating patent language into business-relevant information.

Core Patent Document Terms

Patent Application

A formal document filed with the USPTO requesting patent protection for an invention. Applications must include specifications, claims, drawings (when necessary), and required fees. Under 35 U.S.C. § 111, applications can be provisional (providing 12-month priority without formal requirements) or non-provisional (entering full examination leading to potential grant).

Applications establish filing dates critical under America Invents Act first-inventor-to-file rules. According to USPTO data, over 650,000 patent applications are filed annually, with approximately 350,000 patents granted.

Practical Significance: Your filing date determines priority against competing inventors and establishes the prior art cutoff for novelty analysis. Earlier filing dates provide stronger rights.

Specification

The written description portion of patent applications explaining inventions in sufficient detail to satisfy 35 U.S.C. § 112(a) requirements. Specifications must enable persons skilled in relevant arts to make and use inventions without undue experimentation and must demonstrate inventors possessed claimed inventions at filing time.

According to MPEP § 2161, specifications should describe best modes contemplated by inventors for carrying out inventions, though best mode violations no longer invalidate patents under America Invents Act amendments.

Specifications typically include:

Background: Technical field and problems addressed Summary: Brief overview of invention and advantages Detailed Description: Comprehensive explanation with references to drawings Examples: Specific embodiments demonstrating implementation

Practical Significance: Specifications provide the foundation supporting claims. Inadequate specifications result in enablement or written description rejections that can't be overcome by adding new matter during prosecution. Thorough initial specifications are essential.

Claims

Numbered sentences at patent application ends that define legal boundaries of patent protection. Claims determine what constitutes infringement and are the most important part of any patent. As held in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), claims define patent scope, not specifications.

Independent Claims: Stand-alone claims defining complete inventions without reference to other claims. Applications typically include multiple independent claims covering different aspects or embodiments.

Dependent Claims: Reference and further limit independent claims by adding additional features or limitations. Dependent claims are automatically infringed if independent claims are infringed but provide fallback positions if independent claims are invalidated.

Claim Elements: Individual limitations or features within claims. Infringement requires satisfying every claim element under the all-elements rule from Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997).

Claim Preambles: Introductory phrases stating general invention nature (e.g., "A method for," "An apparatus comprising"). Preambles can be limiting or non-limiting depending on whether they provide structural or functional significance.

Transitional Phrases: Words connecting preambles to claim bodies:

• Comprising: Open-ended, allowing additional unlisted elements

• Consisting of: Closed, excluding all unlisted elements

• Consisting essentially of: Semi-closed, allowing elements not materially affecting invention characteristics

Practical Significance: Claim language determines patent value. Broad claims covering numerous embodiments provide stronger protection but face higher invalidity risks. Narrow claims are easier to obtain but provide limited protection. Strategic claim drafting balances breadth with validity. For detailed analysis of patent claim strategy, consult experienced counsel.

Drawings

Visual representations of inventions required under 37 C.F.R. § 1.81 when necessary for understanding claimed subject matter. The USPTO maintains strict drawing standards including black ink on white paper, specific line weights, hatching patterns for cross-sections, and consistent reference numerals.

Drawings must show every feature recited in claims. According to MPEP § 608.02, drawings should include multiple views (front, side, top, perspective, exploded, cross-sectional) illustrating all aspects of inventions.

Practical Significance: High-quality drawings facilitate examiner understanding and strengthen applications. Poor drawings result in objections requiring correction, delaying prosecution.

Abstract

Brief summaries (150 words maximum under 37 C.F.R. § 1.72(b)) describing technical disclosures. Abstracts serve classification and searching purposes but don't limit claim scope.

Practical Significance: While legally insignificant for claim interpretation, clear abstracts help examiners quickly understand inventions and facilitate prior art searching.

Prior Art and Patentability Terms

Prior Art

All information publicly available before patent application filing dates (or priority dates) that can be used to assess patentability under 35 U.S.C. § 102. Prior art includes:

Patents and Published Applications: U.S. and foreign patents, published patent applications worldwide

Printed Publications: Scientific journals, conference proceedings, technical reports, theses, product catalogs, websites, and any publicly accessible written materials

Public Use: Any public use of inventions in the United States before filing, even without documentation

On-Sale Activity: Offers to sell inventions or products embodying inventions more than one year before filing (under pre-AIA law) or any commercial offers before filing (under AIA)

Public Knowledge: Information in public domain through demonstrations, presentations, or oral disclosures

The America Invents Act eliminated geographic restrictions for most prior art categories, making worldwide publications and uses relevant under 35 U.S.C. § 102(a)(1). As explained in MPEP § 2152, prior art includes anything made available to the public anywhere in the world.

Practical Significance: Any public disclosure before filing can destroy patentability. Inventors must file applications before public disclosures, publications, or sales. The U.S. provides a 12-month grace period for inventor's own disclosures under 35 U.S.C. § 102(b)(1), but most foreign countries don't, making immediate filing advisable for international protection.

Novelty

The requirement under 35 U.S.C. § 102 that claimed inventions be new compared to prior art. Inventions lack novelty if any single prior art reference discloses every claim element. As held in Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985), anticipation (lack of novelty) requires disclosure of every claim limitation arranged as in the claim.

Novelty examines whether inventions existed identically in prior art, asking "Is this new?" rather than "Is this creative or innovative?"

Practical Significance: Even minor differences from prior art satisfy novelty requirements. However, lack of novelty completely bars patentability with no workarounds except amending claims to recite distinguishing features.

Anticipation

The legal conclusion that claimed inventions are not novel because single prior art references disclose all claim elements. Under MPEP § 2131, anticipation requires identity of invention, not substantial similarity.

Anticipation is a question of fact analyzed element-by-element. According to In re Bond, 910 F.2d 831 (Fed. Cir. 1990), prior art anticipates only when it describes inventions arranged or combined in same way as claimed.

Practical Significance: Anticipation rejections are overcome by demonstrating cited references don't disclose one or more claim elements or by amending claims to recite missing features. Thorough prior art searching before filing reduces anticipation risks.

Obviousness

The requirement under 35 U.S.C. § 103 that claimed inventions be sufficiently different from prior art that they wouldn't have been obvious to persons having ordinary skill in relevant technical fields at filing time. The Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966), established a four-factor test:

1. Scope and content of prior art

2. Differences between prior art and claimed inventions

3. Level of ordinary skill in the art

4. Secondary considerations (commercial success, long-felt need, failure of others)

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), clarified that obviousness analysis requires flexible inquiry considering whether skilled persons would have been motivated to combine prior art references to achieve claimed inventions. The Federal Circuit in In re Winslow, 365 F.2d 1017 (C.C.P.A. 1966), requires examining whether prior art would have suggested making combinations to persons of ordinary skill.

Practical Significance: Obviousness is the most common rejection ground. Approximately 97% of patent applications receive at least one obviousness rejection according to USPTO statistics. Overcoming obviousness requires attacking examiner reasoning, presenting unexpected results, or amending claims to include non-obvious features. Strong applications anticipate potential obviousness rejections and include specification language demonstrating unexpected advantages over prior art combinations.

Person Having Ordinary Skill in the Art (PHOSITA)

A legal construct representing hypothetical persons with ordinary skill in relevant technical fields at filing time. PHOSITA's perspective determines obviousness analysis, claim interpretation, and enablement sufficiency.

Factors defining PHOSITA skill level from Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693 (Fed. Cir. 1983), include:

• Educational level of active workers in the field

• Types of problems encountered

• Prior art solutions

• Rapidity of innovation

• Sophistication of technology

Practical Significance: PHOSITA skill level affects obviousness analysis. Higher skill levels make more combinations obvious; lower skill levels require more explicit teaching. Examiners and courts evaluate patentability through PHOSITA eyes, not inventor perspectives.

Enablement

The requirement under 35 U.S.C. § 112(a) that specifications teach persons skilled in arts how to make and use claimed inventions without undue experimentation. As established in In re Wands, 858 F.2d 731 (Fed. Cir. 1988), enablement sufficiency depends on eight factors including claim breadth, invention nature, prior art state, and required experimentation amount.

According to MPEP § 2164, specifications must enable full scope of claimed inventions, not just specific embodiments. Broad claims covering numerous species may face enablement challenges if specifications only enable limited examples.

Practical Significance: Enablement rejections often arise in chemical, pharmaceutical, and biotechnology applications where minor structural changes produce unpredictable property variations. Detailed descriptions with working examples strengthen enablement positions.

Written Description

The requirement under 35 U.S.C. § 112(a) that specifications demonstrate inventors possessed claimed inventions at filing time. Written description is distinct from enablement; specifications can enable inventions without adequately describing them.

The Federal Circuit in Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc), held written description requires showing inventors had possession of claimed inventions through adequate description in original specifications, not that specifications enable third parties to make and use inventions.

Practical Significance: Written description particularly affects claim amendments during prosecution. Amendments adding limitations not supported by original specifications violate written description requirements and can't be entered. Comprehensive initial specifications disclosing variations and alternatives provide flexibility for later amendments.

Patent Prosecution Terms

Prosecution

The administrative process of obtaining patents through USPTO examination, encompassing all communications between applicants (through attorneys) and examiners from filing through grant or abandonment. Prosecution includes filing applications, responding to office actions, conducting examiner interviews, and filing continuation applications.

According to current USPTO pendency data, average patent prosecution takes 24.3 months from filing to grant, varying by technology and prosecution complexity.

Practical Significance: Effective prosecution requires understanding USPTO procedures, examiner expectations, and strategic response timing. Experienced patent counsel significantly improves prosecution outcomes.

Office Action

Official USPTO communications identifying application deficiencies, rejections, or objections. Under 37 C.F.R. § 1.104, examiners issue office actions after reviewing applications.

Non-Final Office Actions: Initial communications allowing unrestricted claim amendments and arguments. Applicants have three months to respond (extendable to six months with fees) under 37 C.F.R. § 1.134.

Final Office Actions: Issued after non-final responses, restricting response options. Applicants can file continuation applications, request continued examination (RCE), appeal to Patent Trial and Appeal Board, or petition decisions.

Office actions typically include:

• Claim rejections under 35 U.S.C. §§ 101, 102, 103, or 112

• Prior art citations

• Examiner reasoning supporting rejections

• Drawing objections

• Specification formality issues

Practical Significance: Office actions require careful analysis and strategic responses. Poorly crafted responses can inadvertently narrow claim scope or create prosecution history estoppel limiting later claim interpretation. For guidance on responding to office actions effectively, consult experienced patent counsel.

Restriction Requirement

An examiner determination under 35 U.S.C. § 121 that applications claim multiple distinct inventions requiring examination in separate applications. Examiners issue restriction requirements when applications claim inventions from different patent classification categories or when inventions are independent and distinct.

According to MPEP § 806, inventions are distinct when they're independent (each can be made/used without the other) or have separate utility or separate fields of operation.

Applicants must elect one invention for prosecution, with non-elected inventions pursued through divisional applications maintaining original filing dates for priority purposes.

Practical Significance: Restriction requirements increase costs by forcing multiple application filings but can provide strategic advantages by allowing tailored claim sets for different invention aspects. Understanding restriction practice helps attorneys draft applications minimizing restriction likelihood or strategically structuring subject matter when restrictions are likely.

Continuation Application

A new application under 35 U.S.C. § 120 filed while parent applications are pending, containing same specifications as parent applications but potentially different claims. Continuations maintain parent filing dates for priority purposes.

Continuation applications enable:

• Further prosecution after final rejections

• Pursuing additional claim sets covering alternative embodiments

• Refining claims based on examiner feedback

• Maintaining patent pending status while negotiating licensing deals

Continuation-in-Part (CIP): Continuation applications adding new matter to specifications. New matter receives CIP filing dates for priority purposes while original subject matter retains parent priority dates.

Divisional Application: Continuation filed to pursue inventions not elected in response to restriction requirements.

Practical Significance: Continuation practice provides flexibility for iterative claim refinement and pursuing multiple patent families from single inventions. However, continuation practice must comply with rules against double patenting prohibiting obtaining multiple patents on same inventions.

Request for Continued Examination (RCE)

A procedure under 37 C.F.R. § 1.114 allowing applicants to continue prosecution after final office actions without filing continuation applications. RCEs require filing fees ($1,360 large entity, $680 small entity, $340 micro entity) and submissions advancing prosecution (claim amendments, arguments, evidence).

According to USPTO statistics, approximately 30% of applications file RCEs before grant, indicating significant usage for overcoming final rejections.

Practical Significance: RCEs provide cost-effective alternatives to continuation applications for responding to final rejections. However, RCEs don't extend patent terms while continuations might qualify for patent term adjustments if USPTO delays exceed statutory limits.

Examiner Interview

Telephone, video conference, or in-person meetings between examiners and applicants' attorneys to discuss pending applications. According to MPEP § 713, interviews provide opportunities for clarifying claim interpretations, discussing prior art, and identifying allowable subject matter.

USPTO statistics show applications with examiner interviews have approximately 15% higher allowance rates than applications without interviews, indicating significant strategic value.

Practical Significance: Effective interviews can resolve misunderstandings about claimed inventions, identify examiner concerns before formal rejections, and expedite prosecution by reaching agreements on claim amendments. Experienced counsel knows when to request interviews and how to productively engage examiners.

Allowance

An examiner determination that applications satisfy all patentability requirements under 35 U.S.C. §§ 101, 102, 103, and 112. Examiners issue Notices of Allowance under MPEP § 1302, requiring applicants to pay issue fees within three months.

Issue fees (as of 2025):

• Large entity: $1,200

• Small entity: $600

• Micro entity: $300

After issue fee payment, USPTO grants patents typically 4 to 6 weeks later.

Practical Significance: Allowance represents successful prosecution completion, but applicants should carefully review allowed claims to ensure adequate protection scope before paying issue fees. Terminal disclaimers or claim amendments might be advisable before issuance.

Patent Pending

Status indicating patent applications have been filed but not yet granted. "Patent Pending" marking provides constructive notice of pending rights and may deter competitors, though no legal enforcement rights exist until patents grant.

Under 35 U.S.C. § 154(d), patentees can obtain reasonable royalty damages for infringement occurring after publication if infringers had actual notice of published applications and granted claims are substantially identical to published claims.

Practical Significance: Patent pending status provides marketing advantages and competitive deterrence. However, applications might ultimately be abandoned or granted with significantly narrower claims than initially filed, limiting pending application value.

Claim Construction Terms

Claim Construction

The legal process of determining claim meaning, also called claim interpretation. Claim construction is a question of law determined by judges, not juries, as established in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

The Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), established a hierarchy of evidence for claim interpretation:

1. Intrinsic Evidence (most important):

   • Claim language itself

   • Patent specifications

   • Prosecution history

2. Extrinsic Evidence (less important):

   • Expert testimony

   • Dictionaries

   • Technical treatises

Claim terms receive their ordinary and customary meanings to persons of ordinary skill at filing time unless patentees acted as their own lexicographers by providing explicit definitions in specifications.

Practical Significance: Claim construction determines patent scope and infringement. Broad interpretations expand protection but risk invalidity; narrow interpretations strengthen validity but limit enforcement. Strategic prosecution creates strong claim construction positions by avoiding specification language limiting broad claim interpretations.

Prosecution History Estoppel

The doctrine preventing patentees from recapturing claim scope surrendered during prosecution through equivalents doctrine infringement arguments. As held in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), claim amendments narrowing scope to overcome prior art create presumptions of surrender for surrendered scope.

According to MPEP § 2111, statements made during prosecution distinguishing prior art or explaining claim meanings can limit claim interpretation during later enforcement.

Practical Significance: Prosecution responses must be carefully crafted to avoid unnecessary limiting statements that could estop broader interpretations during enforcement. Skilled patent counsel drafts responses preserving maximum claim breadth while overcoming rejections.

Means-Plus-Function Claims

Claim elements using "means for" language to recite functional limitations rather than structural limitations, authorized by 35 U.S.C. § 112(f). Means-plus-function claims are interpreted to cover structures disclosed in specifications performing recited functions plus equivalents thereof.

The Federal Circuit in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), held that claim elements lacking "means" language can still invoke § 112(f) if elements recite functions without sufficient structure.

Practical Significance: Means-plus-function claiming can provide claim breadth but requires specifications to disclose adequate structural embodiments. If specifications fail to disclose structure, claims are invalid as indefinite under 35 U.S.C. § 112(b).

Patent Validity and Enforcement Terms

Patent Infringement

Making, using, selling, offering to sell, or importing patented inventions in the United States without authorization during patent terms, prohibited by 35 U.S.C. § 271.

Direct Infringement: Performing any prohibited act with respect to patented inventions under § 271(a)

Indirect Infringement:

• Inducement (§ 271(b)): Actively encouraging or aiding others' infringement with knowledge of patents

• Contributory Infringement (§ 271(c)): Selling components specially adapted for patented inventions with knowledge of patents and infringement

Literal Infringement: Accused products or methods contain every claim element as literally recited

Infringement Under Doctrine of Equivalents: Accused products or methods contain elements equivalent to claimed elements, performing substantially the same function in substantially the same way to achieve substantially the same result, as established in Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997)

Practical Significance: Patent value depends on enforceability against infringers. Strong patents with broad claims covering commercially valuable products provide leverage for licensing negotiations or litigation. For comprehensive guidance on patent enforcement strategies, consult experienced litigation counsel.

Willful Infringement

Deliberate infringement with knowledge of patents, potentially resulting in enhanced damages up to treble actual damages under 35 U.S.C. § 284. The Supreme Court in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016), established that willfulness requires egregious conduct beyond merely knowing about patents and continuing infringement.

Practical Significance: Companies facing infringement allegations should obtain competent opinions of counsel analyzing validity and infringement to demonstrate good faith and avoid willfulness findings. Willfulness findings substantially increase damages and litigation costs.

Patent Validity

Whether patents satisfy all statutory requirements under 35 U.S.C. §§ 101, 102, 103, and 112. Patents are presumed valid under 35 U.S.C. § 282(a), requiring accused infringers to prove invalidity by clear and convincing evidence in district court litigation.

However, Patent Trial and Appeal Board post-grant proceedings apply preponderance of evidence standards, making invalidity easier to prove. According to USPTO statistics, approximately 65% of claims challenged in inter partes review are ultimately canceled.

Practical Significance: Patent validity is always at issue in enforcement actions. Strong patents supported by thorough prior art analysis, detailed specifications, and careful prosecution withstand validity challenges better than weak patents. Validity opinions before enforcement actions help assess litigation risks.

Patent Term

The duration of patent protection, typically 20 years from filing date for utility and plant patents under 35 U.S.C. § 154(a)(2) and 15 years from grant for design patents (for applications filed after May 13, 2015) under 35 U.S.C. § 173.

Patent Term Adjustment (PTA): Extensions compensating for USPTO delays exceeding three years from filing to grant under 35 U.S.C. § 154(b)

Patent Term Extension (PTE): Extensions for pharmaceutical and medical device patents compensating for FDA regulatory review delays under 35 U.S.C. § 156

Terminal Disclaimers: Applicant disclaimers reducing patent terms to overcome double patenting rejections, making commonly owned patents expire together

Practical Significance: Patent term determines protection duration and patent value. Longer terms provide extended market exclusivity. Terminal disclaimers resolve double patenting but create enforcement vulnerabilities because invalidating one patent invalidates all terminally disclaimed patents.

Maintenance Fees

Periodic fees required to maintain utility patents in force under 35 U.S.C. § 41(b), due at 3.5, 7.5, and 11.5 years after grant:

3.5 years: $1,600 (large), $800 (small), $400 (micro) 7.5 years: $3,600 (large), $1,800 (small), $900 (micro) 11.5 years: $7,400 (large), $3,700 (small), $1,850 (micro)

Failure to pay maintenance fees results in patent expiration. According to USPTO data, approximately 15% of patents expire before full terms due to unpaid maintenance fees, indicating patentees' business decisions that patents no longer justify maintenance costs.

Practical Significance: Maintenance fee requirements create ongoing costs for patent portfolios. Companies should periodically evaluate patent values and abandon patents no longer supporting business objectives to reduce costs.

Strategic Patent Terms

Patent Portfolio

Collections of patents and applications owned by entities, providing comprehensive protection for products, technologies, or market positions. Strategic portfolios include:

• Core patents covering fundamental technologies

• Improvement patents covering refinements and variations

• Design patents protecting product appearances

• Defensive patents preventing competitor patents

• Blocking patents preventing competitor commercialization

Practical Significance: Strong patent portfolios provide competitive advantages, increase company valuations, facilitate licensing revenue, and deter competitor entry. For strategic guidance on building effective patent portfolios, experienced counsel can develop comprehensive IP strategies aligned with business goals.

Freedom to Operate (FTO)

Analysis determining whether commercializing products or processes would infringe third-party patents. FTO analyses search relevant patent landscapes, identify potential blocking patents, assess infringement risks, and recommend design-around strategies or licensing approaches.

According to industry surveys, comprehensive FTO analyses cost $15,000 to $40,000 depending on technology complexity and market breadth but prevent far greater litigation costs and injunction risks.

Practical Significance: FTO analyses before product launches identify patent risks early when design modifications are practical and affordable. Post-launch infringement discoveries result in expensive redesigns, lost inventory, potential injunctions, and damages liability.

Patent Landscape

The collection of patents and applications in particular technology areas or markets, analyzed to identify innovation trends, white space opportunities, competitor positions, and potential partnership targets. Patent landscape analyses examine:

• Filing trends over time

• Major patent holders

• Technology evolution

• Geographic protection patterns

• Licensing activity

Practical Significance: Patent landscape analyses inform R&D investment decisions, identify acquisition targets, reveal competitor strategies, and highlight underprotected technology areas presenting patenting opportunities.

Patent Licensing

Granting permissions to third parties to make, use, or sell patented inventions in exchange for royalty payments or other consideration. License agreements can be:

Exclusive: Only licensees can practice inventions (patentees also lose practice rights unless reserved) Non-Exclusive: Multiple licensees can practice inventions simultaneously Sole: Only licensees and patentees can practice inventions

Licensing generates revenue from patents, enables market expansion through third-party commercialization, resolves litigation, and facilitates cross-licensing enabling freedom to operate.

Practical Significance: Licensing converts patents from defensive tools into revenue generators. Well-structured licensing programs can exceed patent prosecution costs and significantly contribute to company revenues.

Prior Art Search

Systematic examination of existing patents, publications, products, and public disclosures to assess invention patentability before filing applications. Professional searches examine:

• USPTO patent database

• Foreign patent databases (EPO, WIPO, national offices)

• Non-patent literature (journals, conferences, technical reports)

• Product databases and commercial offerings

Search reports include relevant references, patentability opinions, and recommended claim strategies based on identified prior art.

Practical Significance: Prior art searches before filing prevent wasting $10,000+ on prosecuting unpatentable applications, enable strategic claim drafting around identified references, and provide realistic patentability expectations. Most successful applications undergo thorough searching before filing.

Post-Grant Patent Terms

Inter Partes Review (IPR)

Post-grant administrative proceedings before Patent Trial and Appeal Board challenging patent validity based on prior art patents and printed publications under 35 U.S.C. § 311. IPR provides faster, less expensive alternatives to district court invalidity litigation.

According to USPTO statistics, approximately 1,500 IPR petitions are filed annually with institution rates around 60%. Of instituted trials, approximately 65% of challenged claims are ultimately canceled.

Practical Significance: IPR presents significant threats to patent validity because preponderance of evidence standards apply (lower than district court clear and convincing standards) and only prior art challenges are permitted (focusing on patents' weakest validity defenses). Strong patents with thorough prosecution records fare better in IPR.

Post-Grant Review (PGR)

Administrative proceedings challenging patents on any validity ground within 9 months of grant under 35 U.S.C. § 321. PGR applies only to patents granted from applications subject to America Invents Act first-inventor-to-file provisions (filed after March 16, 2013).

Unlike IPR limited to prior art challenges, PGR permits challenges on all grounds including § 101 eligibility, § 112 enablement and written description, and prior art combinations.

Practical Significance: PGR's 9-month window requires quick decisions about challenging recently granted patents. Broad challenge grounds make PGR powerful tools for invalidating patents early in enforcement campaigns before significant litigation costs accrue.

Reexamination

USPTO administrative procedures for reconsidering patent validity based on prior art patents and printed publications. Two types exist:

Ex Parte Reexamination: Patent owners or third parties request reexamination; only patent owners participate in prosecution

Inter Partes Reexamination: Third parties participate throughout proceedings (replaced by IPR for applications filed after September 16, 2012)

Reexamination historically provided lower-cost alternatives to litigation for challenging validity, though IPR has largely superseded inter partes reexamination.

Practical Significance: Reexamination continues for challenging older patents ineligible for IPR. Successful reexamination narrows or invalidates patents, weakening enforcement positions.

Why Choose Yomtobian Law for Patent Services

At Yomtobian Law, we provide comprehensive patent services grounded in thorough understanding of patent terminology and law:

Clear Communication: We translate complex patent terminology into plain language, ensuring clients understand every aspect of prosecution and enforcement

Technical Expertise: Engineering background enables us to quickly grasp technical concepts and communicate effectively with inventors and examiners

Strategic Counseling: We develop patent strategies aligned with business goals, not just technical patentability

Experienced Prosecution: Our thorough understanding of USPTO examination standards and procedures achieves high allowance rates and strong patent positions

Transparent Pricing: Fixed-fee arrangements for most services with no surprise charges or hidden fees

Don't navigate complex patent terminology alone. Understanding patent language is essential for making informed strategic decisions about IP protection and enforcement.

Ready to protect your innovations with experienced patent counsel who speaks your language? Contact Yomtobian Law today for a confidential consultation. Call now or schedule online at https://www.yomtobianlaw.com/book-online to discuss your patent needs. Our comprehensive patent services translate complex legal concepts into actionable business strategies. Act now to secure your competitive advantages through strong patent protection.

Frequently Asked Questions

Q: What's the difference between patent pending and patented?

Patent pending indicates applications have been filed but not yet granted, providing no enforcement rights but offering constructive notice of potential future rights. Patented means patents have been granted, providing full enforcement rights against infringers. Patent pending status typically lasts 18 to 36 months during prosecution.

Q: How do I know if my invention is patentable?

Patentability requires satisfying novelty (new compared to prior art), non-obviousness (not obvious to skilled persons), utility (useful), and proper subject matter (not abstract ideas, natural phenomena, or laws of nature). Professional prior art searches and patentability opinions assess these requirements before filing, typically costing $1,500 to $3,000.

Q: What does "comprising" mean in patent claims?

"Comprising" is an open-ended transitional phrase allowing claim elements beyond those explicitly recited. Claims reciting "comprising A, B, and C" cover products containing A, B, C, plus additional elements D, E, F, etc. This contrasts with "consisting of" (closed, excluding unlisted elements) and "consisting essentially of" (semi-closed, allowing elements not materially affecting characteristics).

Q: Can I use patent pending on my products before filing?

No. "Patent Pending" marking is only lawful after filing patent applications. Using patent pending markings without filed applications constitutes false marking under 35 U.S.C. § 292, exposing you to penalties. File applications before using patent pending status.

Q: What is prosecution history estoppel?

Prosecution history estoppel prevents patentees from recapturing claim scope surrendered during prosecution when arguing infringement under doctrine of equivalents. If you narrowed claims to overcome prior art, you can't later argue accused products infringe under equivalents covering the surrendered scope. This makes prosecution responses critical for preserving enforcement flexibility.

Q: How long do patents last?

Utility and plant patents last 20 years from filing date. Design patents last 15 years from grant date (for applications filed after May 13, 2015). Utility patents require maintenance fees at 3.5, 7.5, and 11.5 years. Design patents require no maintenance fees. Patent term adjustments can extend terms for USPTO examination delays.

Q: What's the difference between claims and specifications?

Specifications describe inventions in detail, teaching how to make and use them. Claims define legal boundaries of patent protection, determining what constitutes infringement. Specifications must support claims but don't limit claim scope. Claims are numbered sentences at application ends; specifications are detailed descriptions forming application bodies.

Q: Can I add new information to my patent application after filing?

No. Adding new matter violates written description requirements under 35 U.S.C. § 112(a). You can only amend claims or descriptions using information in original specifications. New material requires filing continuation-in-part applications, where new matter receives later filing dates for priority purposes while original matter retains original filing dates.

Q: What does "prior art" include?

Prior art includes all publicly available information before filing dates: patents, published applications, scientific publications, conference presentations, product catalogs, websites, public demonstrations, commercial sales, and public uses. Under America Invents Act, most prior art categories have no geographic limitations, meaning worldwide publications and activities count as prior art.

DISCLAIMER: This article provides general information about patent terminology and does not constitute legal advice. Patent law is complex and fact-specific. The meaning and application of patent terms depend on specific circumstances, claim language, specifications, and prosecution history. Consult with a licensed patent attorney before making patent-related decisions. This article is provided for educational purposes and does not create an attorney-client relationship. For specific guidance about your patents or inventions, contact Yomtobian Law for a confidential consultation.