Patents: A beginner's guide to intellectual property
- 20 August 2013
- From the section Technology
Like many specialist subjects the world of patent litigation is chock-full of acronyms and jargon.
The following glossary should help make sense of what some of the key terms mean:
The person applying for the patent may decide to give up on the process before their filing is approved. If they fail to respond to a request from a patent office for more information within a set time limit, fail to pay related fees or write in to cancel their application, patent office officials can judge it to be abandoned. Abandonment of a patent application differs from abandonment of the invention itself, which would also limit successful patenting.
A brief summary of the invention providing technical information about it, both as an overview for readers as well as to help make it easy to find via searches. This forms the first part of a patent document.
To be granted a patent the author must first file a specification describing their invention, the draft patent claims sought, an abstract and any relevant illustrations. The patent office will then consider the material. In most cases the authority will publish the application 18 months after it was filed - even if it has not been granted yet - unless the applicant can justify why an exception should be made.
These are the heart of a patent application. Claims set out which parts of the inventor's idea should be protected by law, and describe in words the monopoly granted by the patent. The main claim should include the product's essential technical features, while "dependent" claims can describe additional ones based on the main claim.
Separate to patents, copyright refers to the rights granted to the creator of an idea embedded in a tangible medium, including literary, musical, dramatic, and artistic works. It usually gives the creator the exclusive rights to commercially exploit the creation, including reproduction, public performance, assignment and creation of derivative works, unless they sell these rights on to someone else. Copyrights last at least 50 years after the creator's death (70 years in the UK) and can be sold or otherwise passed on to others. The duplication and dissemination of copyrighted works without permission is colloquially known as piracy.
The amount of money the patent owner is owed as a result of an infringement. This normally covers lost sales, lost customers, owed royalty fees, and lost future earned in the future as a consequence of the invention's unauthorised use. The patent owner can, as an alternative, claim the profits made by the infringing competing product.
Defensive patent aggregator (DPA)
A name used by firms which buy up patents and then license them to others in order to offer the third parties a defence against litigation. The difference between these firms and "patent trolls" is that they typically vow never to instigate a legal dispute on their own behalf, but rather - for a fee - allow defendants to countersue.
This usually forms the bulk of the text of a patent application. It explains the context for the invention, gives examples of how it would be made and used and specifies the technical field it applies to. In addition it provides details about the attached illustrations and acknowledges anything published before the patent was filed that describes a similar invention.
Design patent/Registered design
A 25 year registered monopoly right which describes a new, original and ornamental design for a manufactured object, broadly half-way between a patent and a copyright. They are called registered designs in Europe and most parts of the world, but design patents in the US.
European Patent Office (EPO)
Founded in 1977, the office allows inventors to obtain patent protection in up to 40 countries on the basis of a single filing - applicants choose in which of the nations they want protection. Its three official languages are English, French and German, but the EPO also offers a machine translation service which aims to be able to provide a version of the documents in 28 EU languages, Russian and major Asian languages by the end of 2014.
Techniques used to extend the lifespan of a patent beyond its original deadline. One example would be a pharmaceutical company making small changes to a drug's formulation - for example an extended release version of a tablet - and patenting it to secure up to an extra 20 years protection on the main commercial product prescribed by doctors, even though the original patent covering the chemical for the drug had expired.
The day a patent's protections run out and it enters the public domain. In most countries this is 20 years after the earliest filing date. However, for some drugs this can be extended for up to a further five-and-a-half years so long as this does not take them more than 15 years beyond the date they received regulatory approval.
The basis on which a patent application is judged: broadly if an applicant was the first person to file for protection they take precedence over another party who might have invented the idea earlier but failed to be the first to send in the relevant paperwork.
The American concept that a patent is judged by who in time was first to invent it rather than who sent in the paperwork first.
The US has now abolished this rule and adopted the first-to-file approach followed by the rest of the world. Despite having now changed the rule to the "first-to-file" principle, the US still offers inventors an added protection: if they reveal an idea at a conference or publish it elsewhere they have a one-year grace period to file, during which they take precedence over others.
An acronym referring to "fair, reasonable and non-discriminatory".
Owners of standard-essential patents - a class of innovations recognised as being critical to an industry standard, such as MP3 sound compression - can register them to be classed as Frand. This commits the owner to offering a licence to all so long as the applicants agree to a non-excessive fee. In return the owner expects anyone who uses their innovation to pay, and the status can mean cheaper patent renewal fees.
In the tech sector the idea is to ensure different companies' products can communicate and share data formats with each other. However, the principle has run into problems when companies disagree what constitutes a "fair" price, and the owner then attempts to ban their rival's products.
A term usually used to refer to a drug intended to be interchangeable with another pharmaceutical product.
Within trade mark law the word refers to a term which is recognised by the public as being the common name for a good or service and thus cannot be registered - for example "shampoo", marmalade" and "cola".
An action involving the unauthorised manufacture, use, sale or offer for sale or import of a patent-protected item without the agreement of its owner.
A new, useful idea that includes a step - a new process, improvement or concept - which would not be obvious to a skilled person in that field.
International Trade Commission (ITC)
A US agency which investigates claims of the import of products into the US that are alleged to be patent infringements. It can order a product be banned from being imported into the US, but the US President can overrule the decision, mostly recently seen when President Obama overturned a ban on Apple products.
International Telecommunications Union (ITU)
A UN body responsible for developing information and communication technology standards. The organisation is attempting to convince tech firms to tackle controversies linked to Frand-registered innovations. It has said firms need to address instances when the patents are being used as a means of "stifling" innovation by rivals.
Japan Patent Office (JPO)
Japan's Tokyo-based patent authority,
Korean Intellectual Property Office (Kipo)
South Korea's patent office, based in Daejeon Metropolitan City.
The permission given by the patent owner to others to manufacture, use or sell a patent-protected invention. This can be exclusive - so that the patent owner cannot exploit the patent - or non-exclusive
This does not involve the transfer of ownership. In some countries the courts can force an owner into licensing their invention.
For a patent to be granted, the invention must be novel in the sense that it is new. That means it had not been made public ahead of the date the patent was filed.
Non-practicing entity (NPE)
A term for a patent owner whose primary interest is in seeking to develop and/or buy patents in order to make money by licensing them or by suing others for infringing the inventions. This encompasses so-called "trolls" and "defensive patent aggregators" as well as universities and other organisations that do not make products of their own and do not provide related services.
For a patent to be granted the inventive step involved must not be "obvious" to a skilled person in the area. This involves a degree of subjectivity and is often one of the most hotly-debated issues in legal challenges.
Defences a patent owner can use include the argument that their product achieved commercial success while others failed because of the invention - demonstrating that the idea was not obvious before it was proposed.
The monopoly property right granted by a government to the owner of an invention. This allows the creator and subsequent owners to prevent others from making, using, offering for sale or importing their invention into the country for a limited time. In return they must agree for the patent filing to be publicly disclosed.
A filing which the relevant patent office has yet to announce whether it will grant. Manufacturers may say a product is "patent pending" to warn others not to copy the invention involved. They can be fined for making a false claim.
A previous use or publication of an invention which might invalidate its claim to be novel. A famous recent example of this was Samsung's successful challenge of Apple's iPad design patent in the US on the basis that similar-looking tablets had appeared in the film 2001, UK TV series The Tomorrow People and a concept video made by newspaper publisher Knight Ridder.
The country in which a patent application is first filed.
The first date of a patent application filing anywhere in the world. This can be used to show a later filing by another party in another country was not "novel".
Patent offices typically publish an application 18 months after the date it was filed unless there is a reason it should be kept secret or the inventor has explicitly abandoned the process. Design patents are an exception to this rule and can be withheld for a longer period in some countries.
An alternative term used in the US for Frand (see above).
Patent owners need to pay an annual fee to maintain their rights. In the US these are referred to as "maintenance fees". A failure to pay renewal fees in time will lead to the patent lapsing.
In most countries the charge can be reduced - often by half - if the owner promises they will license the invention to anyone who asks.
State Intellectual Property Office of the People's Republic of China (Sipo)
China's Beijing-headquartered patent authority.
Different authorities have different rules regarding what can be patented when it comes to computer programs and it is a topic of great debate. New Zealand passed a law earlier this year explicitly stating that "a computer program is not an invention" while judges at the US's top patent court are currently divided over whether software is eligible for protection.
The US has previously had the most generous approach to patenting software, not least because it also allows business methods to be patented unlike most of the rest of the world, and most software falls under this heading. However, recent court decisions by the Federal Circuit demonstrate lack of clarity on the future of software patents in the country.
The European Patent Office does allow computer programs to be patented but only so long as they solve a technical problem - eg improving wi-fi strength. But solving a business problem - such as making it quicker for a user to search their email - does not qualify.
China does not allow computer programs to be patented, but if an invention combines software and hardware to create a new technical solution then it can be patented. South Korea has a similar rule.
Japan has allowed software to be patented since a change to the law in 2002.
Standard-essential patents (SEPs)
Inventions recognised as being critical to being able to implement an industry standard technology. Examples of such technologies include the Universal Mobile Telecommunications System (UMTS), a cellular standard at the heart of 3G data; and H.264, a video compression format used by YouTube, Blu-ray disks and Adobe Flash Player among others.
By creating and recognising such standards, device manufacturers are able to make sure their products can share content and communicate with each other. Industry bodies such as the Institute of Electrical Engineers (IEEE) and the Internet Engineering Task Force (IETF) then take steps to ensure the owner licenses or otherwise makes the patents available to others.
Separate from patents, but sometimes administered by the same body, trade marks are the distinctive name or symbol used to identity a product made by a manufacturer or a good distributed by a dealer. Trade mark law is generally concerned with avoiding consumer confusion regarding the origin or manufacturer of a product.
Trade-related aspects of intellectual property rights (Trips)
An international agreement signed in 1994 which sets out the minimum steps that member states must take to protect intellectual property rights. Signatories are allowed to take additional measures so long as they do not conflict with the basic list. The agreement is administered by the World Trade Organisation (WTO), and almost all countries in the world have signed the agreement.
A derogatory term used for firms which build up patent libraries in order to sue or otherwise aggressively pursue others for payment for the right to use their inventions, while making few if any products of their own.
United States Patent and Trademark Office (USPTO)
The USPTO is headquartered in Alexandria, Virginia. It employs more than 10,000 engineers, scientists and lawyers among other specialists.
Utility model protection
Also known as "petty patents" or "innovation patents", these are offered in Australia, China. Japan and South Korea among other countries, but not the UK or US. Member states of the EU have a harmonised system of so-called unregistered design rights instead.
They require less paperwork to obtain, are generally cheaper to maintain and are easier to qualify for, although an invention must still be novel, the "non-obvious" requirement is lower or sometimes absent altogether. However, they only last for a shorter period, typically seven to 10 years.
Utility model protection is quite distinct from what the US calls "utility patents". The latter includes new or improved "useful" methods, processes, devices and manufactured items, and refers to about 90% of all patents granted in the country.
The idea that someone is aware that an invention is patented but goes on to use it without permission. In the US a court can increase damages by up to three times if the accused is found to have wilfully infringed an intellectual property.
World Intellectual Property Organization (Wipo)
The UN agency dedicated to patents, copyrights, trade marks and other intellectual property issues.
For further information the following organisations have produced more comprehensive glossaries which were used when compiling this version: European Patent Office, OECD, Patent Opposition Database, US Patent and Trademark Office, Five IP Offices and Wipo.
This article was written with help from Jonathan Radcliffe, an intellectual property lawyer at Mayer Brown, and Prof Andrea Matwyshyn from Wharton School's Legal Studies and Business Ethics department at the University of Pennsylvania.