Patent, Trademark & Copyright Terminology

Authorship - The source or creator of an original work. The work can be literary, software or any other work. Original in this content means only that it was created by the author and not copied from another work. It does not imply uniqueness as with a patent. Authorship is a prerequisite for copyright protection.

Background Technology - Technology already in existence that is required for creation, use or most efficient use of your innovation. Also known as Underlying Technology.

Claims - Written statements as part of a patent application that state in specific terms what the invention is and what it does. The claims statement defines the scope of the patent and what will be protected by it.

Commissioned Work - A work created by someone other than an employee of an entity at the entity's request or any work requested by an employee outside of his or her Scope of Employment. Falls under copyright protection.

Contributor - Someone who plays a role in the creation of an invention. Can be any role from conceptualization to collaboration. Does not include someone who is simply involved in the reduction of an invention - all contributors must be listed in the patent application.

Copyright - Legal protection under U.S. laws for authors of “original works of authorship” including written literary works, music, artistic creations and other intellectual works such as computer programs.

Creator - Anyone who conceives or participates in the conception of Intellectual Property.

Declaration - Term very similar to Oath. It identifies the patent application with its applicant and must include 1) name 2) city and state of residence (if U.S.) or 2a) country of residence (if foreign), 3) country of citizenship for each applicant on the patent 4) official mailing address of each applicant on the patent. This document must include a statement of whether the subject of the patent was a sole or joint invention. It must be signed by all inventors but does not require verification by a witness.

Design Patent - A patent granted for a new, original or ornamental design for a manufactured item.

Disclosure - Any portion of the patent application or patent process in which the inventor reveals details about the innovation. Disclosure can lead to a third party being able to replicate the inventor's concept. This may also refer to the technology transfer process step where the university inventor notifies its technology licensing office of the invention.

Divulgation - Non-Confidential written or verbal disclosure of specific and critical aspects of an invention or display or distribution of samples of the invention such that its make-up is discernable. Will result in the forfeiture of foreign patents.

Drawings - Drawings must be included in the patent application if they are necessary to understand the subject of the patent and must display every aspect of the invention being protected under the patent.

Fair Use - Allows copyrighted materials to be used for certain purposes without violating the rights of the copyright holder. Protected activities include teaching, research, reporting in the news, critiques and commentary.

Grantable Petition - A request filed with the patent office to convert a provisional patent application to a non-provisional patent.

Improvement - Intellectual Property developed while utilizing existing Intellectual Property or Intellectual Property developed that relies on existing patented Intellectual Property.

Inventor - As defined by U.S. patent law, an individual that contributes in whole or in part to the conception of an invention or who has creative input. Participation in the reduction of an invention does not establish rights in an invention.

Joint Inventors - Patent law terminology applied when two or more people co-created an innovation.

Non-Provisional Patent - Patent converting a Provisional Patent to a standard patent within the twelve (12) months a provisional patent is valid by filing a Grantable Petition requesting the conversion. The patent issued from the petition request will be valid for twenty (20) years from the date the provisional patent was filed which can effectively shorten the patent life span by up to twelve (12) months. It is generally preferable to file a new patent application referencing the provisional patent to maintain unlimited protection.

Oath - Term very similar to a declaration but also used to verify information. It identifies the patent application with its applicant and must include 1) name 2) city and state of residence (if U.S.) or 2a) country of residence (if foreign), 3) country of citizenship for each applicant on the patent 4) official mailing address of each applicant on the patent. This document must include a statement of whether the subject of the patent was a sole or joint invention. It must be signed by all inventors and verified by a witness.

Patent - Granting of legally protected rights to an inventor of a specific innovation. Prohibits others from making, selling or using the invention without acquiring rights from its inventor or patent owner. Usually covers a period of twenty (20) years from the date of granting. Can consist of three types - Utility Patent, Design Patent or Plant Patent.

Patentable - To be able to obtain a patent for an innovation, it must be novel, non-obvious and usable for a specific purpose.

Patent and Trademark Office - The office operating under the authority of the U.S. Department of Commerce, which administers patents and trademarks. Also referred to as “PTO”.

Patent Attorney - An attorney specializing in patent and Intellectual Property law.

Patent Cooperation Treaty - An international agreement that helps simplify the patent filing procedure in most industrialized countries. Foreign patent applications should be filed in each country where the inventor wishes to pursue patent protection. Also known as the “PCT”.

Patent Search - Investigation of existing patents to determine if a discovery meets the patentable criteria of new, novel and non-obvious.

Plant Patent - A patent granted for the invention and asexual reproduction of a distinct or new variety of plant.

Prior Art - Public knowledge that precedes the date of invention that is either related to or in the specific field of the invention. This may include published articles, abstracts, previously filed patents, or materials presented in an academic or professional setting (such as a conference). Patent applicants must establish that their invention is uniquely different to a prior art or a non-obvious use of the prior art.

Provisional Patent Application - A lower-cost first patent filing which does not require formal patent claims, oaths, declarations or information disclosure statements. This application allows the term “Patent Pending” to be used. It lasts only twelve (12) months from the filing date and may not be extended.

Publication - Disclosure in a format easily accessible or distributed to the general public.

Public Disclosure - Making an invention, or technology, public knowledge. Can be accomplished in many ways including publication, presentation, etc. Patent rights must be filed within twelve (12) months of public disclosure in order to preserve the inventor's rights.

Public Domain - Indicates lack of copyright or patent. Can be accessed and used by anyone.

Reduction - The process of constructing the invention or performing the process to demonstrate its intended or claimed use in the patent application.

Service Mark - A word, name, or symbol that represents a service company or a service provided by a company that differentiates it from the competition and establishes it as unique. The service mark may be legally registered for the exclusive use of that company.

Trade Dress - A form of trademark protection. It is the appearance or appearance configuration of a product including its size, color, shape, graphics, packaging or sales methodology that can be protected under trademark law.

Trademark - A name, symbol, or other device identifying a product, officially registered and legally restricted to the use of the owner or manufacturer. A brand name.

Trademark Registration - Issued by the U.S. Patent and Trademark Office (“PTO”) and establishes rights for use of the mark. Trademarks are protected upon initial use even without registration with the PTO.

Trade Secret - Confidential information that is valued in a particular industry and is not commonly known. It is difficult to obtain and valuable to competitors.

Underlying Technology - Technology already in existence that is required for the creation, utilization or most efficient use of your innovation. Also known as Background Technology.

Utility Patent - A patent granted for a new and useful process, machine or manufactured item. Utility patents may be Provisional or Non-Provisional.

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