Patent Bar key terms

The numbered portion of a patent application that defines the metes and bounds of the invention and states precisely what the applicant regards as the invention.

The written description portion of an application that describes the invention, how to make and use it, and typically concludes with one or more claims.

The requirement that a claim term introduced with an indefinite article be later referred to with a definite article or equivalent so that claim scope remains clear.

A claim referring to the invention as shown and described in the specification, generally rejected as indefinite because it fails to distinctly point out the subject matter.

Patent application figures that illustrate the invention; they must show every feature recited in the claims and comply with formal drafting standards.

The statutory requirement that the specification disclose the best way known to the inventor of carrying out the invention at the time of filing.

The requirement that the specification describe the invention in sufficient detail that a person skilled in the art can make and use it without undue experimentation.

The requirement that the specification clearly convey that the inventor possessed the claimed invention as of the filing date, often assessed by support in the disclosure.

Subject matter added to an application after its filing date that was not present in the original disclosure; such additions are prohibited and may require a new filing.

A statement in an application asserting the benefit of an earlier filing date from a prior application, such as a provisional or foreign application.

A lower-cost initial filing that establishes a filing date but is not examined and must be followed by a nonprovisional application within twelve months to preserve the benefit.

A regular patent application that includes a specification, claims, and drawings where required, and that is examined on the merits by the Patent Office.

The patentability condition requiring that the claimed invention not be identically disclosed in a single prior art reference or otherwise anticipated.

A rejection finding that a single prior art reference discloses each and every limitation of the claim, defeating novelty.

The patentability condition under which the claimed invention would have been obvious to a person of ordinary skill in the art at the time of filing in view of the prior art.

Information publicly available before the critical date that may be used to show an invention lacks novelty or is obvious.

A hypothetical artisan with the knowledge and abilities typical in the relevant field, used as the reference point for obviousness and enablement analyses.

The requirement that a claimed invention have a specific, substantial, and credible practical application.

The categories of invention eligible for patenting, such as processes, machines, manufactures, and compositions of matter, subject to judicial exceptions.

A judicially recognized exception to patent eligibility covering fundamental concepts, which cannot be patented merely by reciting generic computer implementation.

A two-part eligibility framework asking whether a claim is directed to a judicial exception and, if so, whether additional elements integrate it into a practical application.

A written communication from a patent examiner setting forth rejections, objections, or requirements and giving the applicant a period to respond.

An examiner's action that closes prosecution on the merits, after which the applicant may respond only by amendment, appeal, or other limited options.

The applicant's written reply to an Office Action, typically including amendments, arguments, or both, filed within the set period.

A change to the specification, claims, or drawings filed during prosecution, which must not introduce new matter or add claims beyond the original disclosure.

An examiner's demand that an application claiming independent and distinct inventions be limited to one invention for examination.

The applicant's choice of one invention to pursue in response to a restriction requirement, with nonelected inventions possibly pursued in divisional applications.

A later application claiming the benefit of an earlier application that discloses and claims only subject matter divided out of the parent.

A later application claiming benefit of an earlier filing date that repeats the parent's disclosure and claims the same or different subject matter without adding new matter.

A proceeding before the Patent Trial and Appeal Board in which the applicant challenges an examiner's adverse rejection after prosecution is closed.

The applicant's written submission to the Board setting forth the grounds for reversing the examiner's rejections and responding to the examiner's answer.

A written notice that the application has been found allowable, stating the issue fee and any required actions to complete issuance.

The fee required to be paid after a notice of allowance so that the patent will grant, usually due within a set non-extendable period.

The obligation of applicants and practitioners to submit to the Office information known to be material to patentability of the claimed invention.

A submission listing prior art or other information believed material to examination, used to satisfy the duty of disclosure.

A breach of the duty of disclosure involving material information and intent to deceive, which can render an entire patent unenforceable.

A person registered to practice before the Patent Office, such as a patent attorney or patent agent, who may prepare and prosecute applications.

Providing patent-related legal services before the Office without registration or proper authorization, which is prohibited professional conduct.