IP Dictionary

A


  • ABANDONMENT OF INVENTION

Acts by an inventor to withhold an invention from public knowledge by (1) deliberately hiding the invention or (2) failing to apply for a patent within a reasonable time after invention. A finding abandonment can result in the denial of a patent application under Patent Code 102(c), however the Patent Office has rarely invoked this ground to reject an application. More commonly, abandonment can become an issue in a priority contest between two rival inventors. Under Patent Code 102(g), abandonment will extinguish a first inventor’s PRIORITY OF INVENTION, leading the Patent Office to grant the patent to a later inventor. That subsection states that one who is the first to complete an invention by CONCEPTION and REDUCTION TO PRACTICE can nonetheless lose the right of priority and entitlement to a patent if that inventor thereafter abandons, suppresses, or conceals the invention. Partyculary in this latter context, abandonment is often regarded as synonymous with its statutory siblings: SUPPRESSION and CONCEALMENT.

The most common situation finding abandonment by the first of two inventors competing for a patent are those where, after reduction to practice by the first inventor, no patent application is filed for an unreasonable period, and during that interval of inactivity the second inventor enters the scene.

  • ABANDONMENT OF PATENT APPLICATION

A patent applicant can abandon his application for a patent either by filing a formal written declaration of abandonment with the Patent Office, or by failing to take appropriate action (failure to prosecute) within a specified time at some stage in the prosecution of the application. For example, under 37 C.F.R. 1.135 a patent application can become abandoned by a failure to respond within the time provided to an action by the Patent and Trademark Office (OFFICE ACTION). An abandoned application is removed from the Patent and Trademark Office docket of pending cases, and the application loses the benefit of the filing date of that application, but the applicant is free to file a new application.In certain circumstances REVIVAL of an application abandoned for failure to prosecute is permitted.

  • ABANDONMENT OF TRADEMARK.

The loss of all rights to exclude others from use of a trademark, resulting from either: (1) ceasing use with intent not to resume use; (2) LICENSING of a mark without quality control, causing the term or symbol to lose significance as a mark; (3) assigning a mark without also transferring associated goodwill ( ASSIGNMENT in gross); or (4) the mark falling into majority usage as a GENERIC NAME of a type of goods or services.

  • ASSIGNMENT(patent-trademark-copyright) A sale of right in intellectual property.

Assignment of patent

An assignment of patent is a transfer of sufficient right such that the transferee has title to the patent. Under the classic rule of Waterman v. Mackenzie, 138 U.S. 252 (1891), a patent LICENSE is any transfer of right that does not amount to an assignment of the patent. An assignment is a transfer of either: (1) all right of exclusivity in the patent; (2) an undivided fractional portion (e.g., a 50 percent interest); or (3) all right within a specified portion of the United States. Transfer of anything less than that is dubbed a “license.” Waterman v. Mackenzie, 138 U.S. 252, 255 (1891) (see case reference below). “To determine whether a provision in an agreement constitutes an assignment or a license, one must ascertain the intention of the parties and examine the substance of the what was granted.” Vaupel Textilmaschinen v. Meccanica Euro Italia, 944 F.2d 870, 874, 20 USPQ2d 1045, 1048 (Fed. Cir. 1991).

Assignment of Trademark

A trademarks or service mark can valibly assigned only in connection with the goodwill that is symbolized by that mark. An assignment of a mark without an accompanying transfer of associated goodwill is known as an “assignment in gross,” which is invalid to transfer any rights in the mark. If the purported assignor then ceases to use the mark, as is usually the case, the purported assignor abandons its rights. The purported assignee cannot rely upon the priority-of- use date of the purported assignor and must start with a new first-use date. On the other hand, after a valid assignment of the mark and its goodwill, the assignee succeeds to all the right and priority of the assignor. Premier Dental Prods. Co. v. Darby Dental Supply Co., 704 F.2d 850, 230 USPQ 233 (3d Cir. 1986) (“(F)”ollowing a proper assignment, the assignee steps into the shoes of the assignor.”).

Assignment of Copyright.

The rule governing of copyright under the 1909 Copyright Act was one of “indivisibility” of copyright: a copyright was an indivisible property right which was not capable of being split up into smaller units and sold or exclusively licensed. The rule of indivisibility 1978 Copyright Act by 201(d)(2), which permits the assignment or exclusive license of any part or subpart of the bundle of right comprising a copyright. H. Rep. No. 94-1476, 94th Cong., 2d Sess. 123 (1976). This and other provisions of the 1978 Act have largely done away with any practical distinction between an assignment and an exclusive license of the same right of copyright. Both are categorized as a “transfer” of copyright ownership. An exclusive license of a right of copyright is regarded as the copyright owner of the particular right that is licensed.

B

  • BIOTECHNOLOGY (patent)

The sciense of changing the genetic structure (genotype) of living organisms in the manufacture of drugs or other products or in producing new forms of living organisms. A synonym is GENETIC ENGINEERING. Contemporary biotechnology is predicated on two key technologies-recombinant DNA and monoclonal antibodies. Products and processes involving biotechnology are patentable. See, e.g., Hibritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986). A patent may be obtained on a living organism that has been genectically altered.

Patentability of Biotechnological Processes.

In 1995 Congress adopted the Biotechnological Process Patents Act (BPPA), codified at 35 U.S.C. 103(b). It provides that a biotechnological process “using or resulting in” a novel composition of matter will itself be considered nonobvious if (1) claims t the process and the composition of matter are contained in the same patent applications, or separate applications, or separate applications with the same filing date and (2) the process and the composition of matter were owned by the same person or subjected to an obligation of assignment to the same person. It also contains a detailed definition of the term “biotechnological process” in 103(b)(3). Shortly after the adoption of this statute the Federal Circuit handed down its decision in Inre Ochiai, 71 F.3d 1565 (Fed. Cir. 1995), which was essentially a general holding to the same effect, effectively rendering this statute superfluous. The PTO has never issued regulations to implement the BPPA and it has never been cited by the case law.

C

  • COPYRIGHT (copyright)

A federal right granted to fixed, original works of authorship, conferring the exclusive right to exploit the work in specified ways. All copyright owners have the exclusive right to reproduce the work, to prepare adaptations of the work, and to distribute copies or the works to the public. The copyright owners of certain types of works are also given an exclusive right to publicly perform, or publicly display the work. 17 U.S.C. 102, 106. For works created after junuary 1, 1978, copyright protection attaches automatically as soon as the work is fixed in any tangible medium of expression. protection, although registration of a claim of copyright will confer certain valuable benefits.

Copyright protection only extends to the specific, concrete form of expression in a work. Expression however, is not limited to the precide words, notes, or colors used-it can en compass such matter as plot details, specific organizational schemes, or the selection and arrangement of elements of the work. In noevent, however, does copyright protection dischotomy. 17 U.S.C. 102(b). In addition, a work is only eligible for copyright protection if it satisfies the requirement of ORIGINALITY and possesses a modicum of CREATIVITY.

  • CONCEPT (patent-copyright)

Neither patents nor copyright create exclusive rights in a mere idea, theory, or concept.

No Protection to a Mere Concept or Idea.

Patents only protect certain explicit and tangible inventions and copyright only protect certain concrete expressions. Patent do not protect “ideas,” only specific structures and methods. “Reducing a claimed invention to an ‘idea’ and then determining patentability of that ‘idea’ is error.” Jones v. Hardy, 727 F.2d 1524, 1528, 220 USPQ 1021, 1026 (Fed. Cir. 1984). The exclusion of scientific concepts from the scope of the patent laws goes back at least as far as the mind-nineteenth century when Samuel Morse, the inventor of the telegraph, attempted to secure a patent on basic principles of electromagnetism. In denying the patent, the Supreme Court noted that “the discovery of a principle in natural philosophy or physical science, is not patentable.” O’Reilly v. Morse, 56 U.S. 62, 116 (1853).

  • CONCEPTION (patent)

The formulation in the inventor’s mind of a definite perception of the complete invention. While conception is a purely mental act it cannot be proven in court merely by the inventor’s testimony: there must be some additional evidence in corroboration of the inventor’s testimony. Conception marks the beginning of the inventive process and reduction to practice marks the end of the inventive process.

Conception can be important in at least two contexts in patent law. First, there is a presumption in patent law that where two parties are contending for a patent for the same invention, the first to have conceived of the invention is entitled to the patent, provided that he or she has been diligent in reducing the invention to practice. Second, where multiple parties claim the status of joint inventors, “each person claiming to be joint inventor must have contributed to the conception of the invention.” Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371, 59 USPQ2d 1130 (Fed. Cir. 2001).

  • CONSTITUTION(patent-copyright-trademark)

The U.S. Constitucion makes a specific grant of power to the U.S. Congress to pass statutes pertaining to patents and copyrights in Article I, section 8, clause 8. The wording of the clause is parallel, such that it authorizes Congress to promote “science” by giving to “authors” the exclusive right to their “writing,” and to promote the “useful arts” by giving to “inventors” the exclusive right to their “discoveries.” “Science” was used for its eighteenth century meaning of knowledge in general, and “useful arts” was used in the sense that “technology” is used today.

I

  • INVENTION .( patent )

The human creation of a new technical idea and, where necessary, the physical means that can accomplish or embody the idea. In cases prior to the 1952 Patent Code, “invention” was often used as a synonym for a patentable invention. But today, an “invention” is not the same as a “patentable invention,” which is an invention that passes the tests of the Patent Code. Under current law, the dispositive inquiry is not whether there is an invention satisfies the key statutory legal tests such as novelty ( ANTICIPATION) and NONOBVIOUSNESS.

“The dispositive question is not whether the claimed device is an “invention”; rather, it is whether the invention satisfies the standards of patentability.” Custom Accessories v. Jeffery-Allan Indus. 807 F.2d 955, 959, 1 USPQ2d 1196, 1198 (Fed. Cir. 1986).

“Apparently (the PTO examiner and solicitor) were thinking that ‘invention’ means

‘patentable invention.’ This has not been the language of the since January 1, 1953.” Re Vogel & Vogel, 422 F.2d 438, 440 n.1, 164 USPQ 619, 621 n.1 (C.C.P.A. 1970).

While it is proper to identify the difference between the invention and the prior art in determining nonobviousness, it is improper “to consider the difference as the invention. The ‘difference’ may have seemed slight…but it may also have been the key to success and advancement in the art resulting from the invention.” Jones v. hardy, 727 F2d 1524, 1528, 220 USPQ 1021, 1024, (Fed. Cir. 1984).

  • INVENTIVE ENTITY ( patent)

The person or persons who are regarded as the inventor or inventors of an invention. A sole inventor of one invention and a group of joint inventors, including that same sole inventor, which invent another invention, are regarded as separate “inventive entities.” That is, if John Alpha is a sole inventor of Invention One and John Alpha and Sandra Beta are joint inventors of Inventation Two, then these two inventions are deemed to have been made by separate “inventities.” Thus distinct but overlapping groups of persons are treated as if they were separate inventors in determining what is a prior art reference of “others” or “another.” See 1 D. Chisum, Patents 2.03(1), 3.08(2) (2003 rev.).

  • INVENTIVE PROCESS (patent)

The process of making an invention, which begins with CONCEPTION and usually ends with REDUCTION TO PRACTICE, actual or constructive. In some definitions, the inventive process continues until a patent is actually granted. The time when the inventive process begins and ends is important in determining who was the first to invent in an INTERFERENCE proceeding. It is also important in determining if there is an EXPERIMENTAL USE, which will excuse putting the invention ON SALE or in PUBLIC USE more than a year prior to filing an application for patent.

  • INVENTIVE STEP (patent-international)

A European law condition of patentability under which an invention cannot receive a valid patent if the invention does not involve an inventive step beyond the prior art. The requirement of an inventive step is analogous to the U.S. requirement of nonobviousness.

  • IDEA (copyright-patent)

Neither copyrights nor patents protect ideas, theories, or concepts. A copyright protects only the precise form of expression in which an idea is rendered, while a patent protects only tangible inventions.

Idea-expression dichotomy (copyright)

The fundamental rule of law that copyright does not protect an idea; copyright protects only specific expression, of an idea. This rule is codified in 102(b) of the Copyright Act.

  • INTELLECTUAL PROPERTY

(patent-trademark-unfair competition-copyright-trade secret-moral rights) Certain creations of the human mind that are given the legal aspects of a property right. “Intellectual property” is an allencompassing term now widely used to designate as a group all of the following fields of law: patent, trademark, unfair competition, copyright, trade secret, moral right, and the right of publicity.

The word “intellectual” is used to indicate that these kinds of “propery” are distinct from real estate or personal property in that they are products of the human mind or intellect. These kinds of legal right are intellectual property in the sense that the law grants property-type protection to nontangible creations of the human intellect. In one sense, intellectual property is legal recognition of a property right in certain kinds of information. It is self-evident that the inventions and creations that form the subject of patent, trade secret, and copyright law consist of information that is created by the human intellect. Similarly, the commercial designations that form the subject of trademark and trade dress law require the human intellect to attach symbolic significance to these designations.

Intent to used application (trademark)

Since 1989 in the United States, an optional method of applying for federal registration of a mark on the Principal Register based upon a declared good faith intention to use a mark on defined goods or services. For the first time in the United States, one could file an applications not based on an intent to use (ITU).

P

  • PATENT (patent)

A grant by the federal government to an inventor of the right to exclude others from making, using, or selling the invention. After Jan. 1, 1996, the exclusive rights include offering to sell in the United States and importing into the United States. There are three very different kinds of patent in the United States: (1) a utility patent on the functional aspects of products and processes; (2) a DESIGN PATENT on the ornamental design of useful objects; and (3) a PLANT PATENT on a new variety of living plant. Thus, each type of patent confers the right to exclude others from a precisely defined scope of either technology, industrial design, or plant variety. Patents do not protect “ideas”-only structures and methods that apply technological concepts. Jones v. Hardy, 727 F.2d 1524, 1528, 220 USPQ 1021,1026 (Fed. Cir. 1984).

  • PARTS OF A PATENT.

Reflecting the bargain analogy, a patent has essentially two parts: the SPECIFICATION and the CLAIMS. In the specification, the inventor discloses the invention in detail through a description in words and drawing. In the claims, the inventor sets the bounds of the techonology within which the patent owner has the legal right to exclude others from making, using, and selling.

Patent infringement.

It is the CLAIMS of a utility patent that define the scope of the patentee’s right to exclude others from making, using, or selling products or processes that use the invention spelled out in the claims. The traditional trilogy of exclusive rights of a patent (make, use, or sell) was expanded by the 1994 URUGUAY ROUND AGREEMENTS ACT to include offering for sale and importation into the United States. The test of infringement of a utility patent is whether a claim READS ON the ACCUSED DEVICE. Infringement can be either by the rule of LITERAL INFRINGEMENT of the claims or by application of the doctrine of EQUIVALENTS. There are two types of claims: PRODUCT CLAIMS and PROCESS CLAIMS. The standard remedy for patent infringement is an injunction and damages, which are usually measured by either a reasonable royalty or LOST PROFITS.

Novelty and Nonobviousness.

To be deserving of a valid patent, the invented technology defined in the patent claims must meet the two key test of “newness”: (1) the test of “novelty,” meaning that it is not anticipated by being identical to technology disclosed in a single piece of PRIOR ART as defined in Patent Code 102(see ANTICIPATION); and (2) the test of NONOBVIOUSNESS, meaning that the technolology, although new, must be different enough that it is not OBVIOUS in view of the prior art. COMPUTER PROGRAMS BIOTHECHNOLOGY present special problems of protection. Under U.S. law, inventors are given a one-year GRACE PERIOD after commercializing the invention within which the inventor can decide whether or notto file a patent application.

Selling and Licensing Patents.

Patents can be assigned outright or licensed, whether by exclusive or nonexclusive licence (see ASSIGNMENT, LICENSE). Patent licenses must comply whit the antitrust laws, usually by using the patent RULE OF REASON. Certain types of patent licence transactions, such as PACKAGE LICENSING or FIELD OF USE RESTRICTIONS, are subject to abuse and might raise patent MISUSE concerns.

T

  • TRADEMARK (trademark)

1 A word, slogan, design, picture, or any other symbol used to identify and distinguish goods. (2) Any identifying symbol, including a word, design, or shape of a product or container, which qualifies for legal status as a trademark, service mark, collective mark, certification mark, trade name, or trade dress.

The term “trademark” is often used in two different senses, one broad and one narrow. In its broader meaning, “trademark” or “trademark law” is an expansive term used to indicate the whole field of protection of all forms of indications of origin, including marks used on goods, SERVICE MARKS, COLLECTIVE MARKS, CERIFICATION MARKS, and TRADE NAMES, TRADE DRESS. Usually this is the meaning intended when one sees phrases like “the principles of trademarks protection” or “slogan can be protected as trademarks.” In its narrower meaning, “trademark” is used to designate only words and symbols used to identify and distinguish goods, as opposed to services (SERVICE MARKS), corporate entities (TRADE NAMES), or other subcategories of trade identity law. Thus, the designation “trademark” is like the designation “New York”: sometimes it denotes a broad concept (New York State), sometimes it denotes a narrower part of that broad concept (New York City). Context supplies the meaning. Sometimes the word “MARK” is used as a synonym for the broader meaning of “trademark.” A service mark identifies and distinguishes services rather than products and is protected and registered on the same lagal principles as is a trademark.