Patent Bar Exam Glossary

The statutory basis requiring that a patent claim be directed to a process, machine, manufacture, or composition of matter. Abstract ideas, laws of nature, and natural phenomena are judicial exceptions and are not patent-eligible without significantly more. Alice/Mayo framework analysis is applied during examination.

A statutory requirement that a claimed invention be new. Under AIA, a claim lacks novelty if it is anticipated by a single prior-art reference that discloses every element of the claim. Key dates include the effective filing date and the one-year grace period for inventor-made disclosures.

A statutory requirement that a claimed invention not be obvious to a person having ordinary skill in the art (PHOSITA) at the time the invention was made. The Graham v. John Deere factors — scope of prior art, differences from prior art, level of ordinary skill, and secondary considerations — guide the analysis.

The statute governing specification requirements: written description, enablement, and definiteness. A specification must describe the invention in full, clear, concise, and exact terms so a PHOSITA can make and use it without undue experimentation (Wands factors).

An application is abandoned when the applicant fails to respond to an Office Action within the statutory period (generally three months with extensions up to six months), expressly abandons the application, or fails to pay the issue fee. An abandoned application can sometimes be revived for unavoidable or unintentional delay.

A brief, one-paragraph summary of the disclosure appearing at the beginning of a patent. The abstract must be no more than 150 words and must be concise enough to allow readers and search systems to quickly determine the nature of the subject matter. It is not used to interpret claim scope.

The Leahy-Smith America Invents Act of 2011 fundamentally changed U.S. patent law from a first-to-invent system to a first-inventor-to-file system. Key changes include the new prior art definition under § 102, the one-year grace period for inventor disclosures, and new post-grant proceedings (IPR, PGR, CBM).

A formal document submitted to the USPTO to change the claims, specification, or drawings of a pending patent application in response to an Office Action or on the applicant's own initiative (before final rejection). Amendments may not introduce new matter into the disclosure.

A ground for rejecting a patent claim under § 102 when a single prior-art reference discloses every element of the claim, arranged as in the claim. All elements must be explicitly or inherently disclosed; multiple references cannot be combined to establish anticipation (that requires obviousness analysis).

A form used to provide bibliographic data in a patent application, including inventor names and addresses, correspondence address, domestic benefit and foreign priority claims, and entity status. Filing an ADS is the preferred method of claiming priority under AIA practice.

A person or legal entity to whom all or part of the rights in a patent application or issued patent have been transferred by the inventor(s). Under AIA, an assignee who is an original applicant may prosecute the application in its own name.

Under § 112(a), inventors must disclose the best mode of carrying out their invention as of the filing date. Failure to disclose the best mode known to the inventor at the time of filing can be a basis for invalidity in litigation, though it is no longer a ground for rejection during prosecution under AIA.

The standard used by USPTO examiners when construing patent claims during examination. Claims are given the broadest reasonable meaning consistent with the specification as it would be understood by a PHOSITA. BRI is broader than the claim construction applied in post-grant proceedings (Phillips standard).

The numbered paragraphs at the end of a patent specification that legally define the metes and bounds of the patent owner's exclusive rights. Independent claims stand alone; dependent claims refer back to and further limit another claim. The claims are the operative portion of the patent for infringement and validity analysis.

A presumption that different claims in the same patent have different scope. It is most often applied when a dependent claim adds a limitation not present in an independent claim, suggesting the independent claim does not require that limitation. It is a presumption, not an absolute rule.

A later-filed application that claims priority to an earlier-filed parent application's filing date. A continuation has the same disclosure as the parent and must be filed while the parent is still pending. Continuations are used to pursue claims of different scope than those in the parent.

An application that repeats a substantial portion of a prior parent application and adds new matter not disclosed in the parent. Claims supported only by the new matter receive the CIP's filing date, while claims fully supported by the parent can claim the parent's priority date.

A transitional post-grant proceeding created by the AIA allowing challenges to patents that claim a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Only certain petitioners with standing may file.

A formal statement signed by the inventor(s) declaring that they believe themselves to be the original inventor(s) of the subject matter claimed in the application. Under AIA, an inventor declaration or substitute statement is required before a patent can issue. False statements can result in inequitable conduct findings.

Requirement under § 112(b) that claims be written in clear, definite terms that reasonably inform a PHOSITA of the scope of the invention. A claim is indefinite if it is amenable to two or more plausible claim constructions (Nautilus standard: 'reasonable certainty'). Indefiniteness rejections are made under § 112(b).

A claim that refers back to and further limits one or more preceding claims. A dependent claim incorporates by reference all limitations of the claim(s) to which it refers. A dependent claim can only be as broad as the claim it depends from and is presumed to have different scope from it.

A patent protecting the ornamental (non-functional) appearance of an article of manufacture. Design patents have a single claim, a term of 15 years from grant (for applications filed on or after May 13, 2015), and no maintenance fees. The 'ordinary observer' test governs infringement analysis.

An application filed as a result of a restriction requirement, carving out one or more distinct inventions from a parent application. A divisional claims priority to the parent's filing date and may not include new matter. It covers subject matter disclosed but not claimed in the parent.

A rejection preventing an inventor from obtaining two patents on the same invention. Statutory double patenting (same invention) is not curable. Obviousness-type double patenting (OTDP), which requires claims in two applications to not be patentably distinct, can be overcome by filing a terminal disclaimer.

Under AIA, the effective filing date of a claimed invention is either the actual filing date of the application or the filing date of the earliest earlier application from which priority is properly claimed. It determines which prior art applies and is critical for § 102 analysis.

Requirement under § 112(a) that the specification enable a person having ordinary skill in the art (PHOSITA) to make and use the full scope of the claimed invention without undue experimentation. The Wands factors — predictability of the art, quantity of experimentation, presence of working examples — guide the analysis.

An Office Action closing prosecution on claims found allowable except for formal matters, such as drawing or specification objections. The applicant may only respond to the formal issues; the response cannot further amend the claims substantively.

A USPTO proceeding allowing any person (including the patent owner) to request reexamination of an issued patent based on prior art patents or printed publications that raise a substantial new question of patentability (SNQ). The proceeding is largely conducted without participation from the requestor after filing.

The document filed by the USPTO examiner in response to an appeal brief submitted to the Patent Trial and Appeal Board (PTAB). It addresses the grounds of rejection and may include a new ground of rejection. After an Examiner's Answer, the appellant may file a reply brief.

The complete official record of proceedings in the USPTO for a patent application or reexamination, including all documents filed and all Office Actions issued. The prosecution history is used in claim construction under the prosecution history estoppel doctrine to limit the scope of claims.

The date a patent application is received by the USPTO that satisfies the minimum filing requirements (a specification and at least one claim for non-provisional applications). The filing date establishes the priority date for prior art purposes and for claiming benefit under § 119 or § 120.

A second or subsequent rejection of claims in a non-provisional application. After a final rejection the applicant's options are limited to: filing an RCE, filing a notice of appeal, making a formal amendment, or abandoning. Further substantive amendments generally require a showing under Rule 116.

A license required to file a patent application in a foreign country on an invention made in the United States, obtained either by a grant from the USPTO or by the passage of six months after the U.S. filing date without receiving a secrecy order. Unlicensed foreign filings can result in abandonment and potential criminal penalties.

Under AIA § 102(b), a one-year window before the effective filing date during which disclosures made by the inventor, joint inventor, or those who obtained the subject matter from them are not treated as prior art against the claims. Non-inventor disclosures made more than one year before filing do constitute prior art.

A claim that stands alone and does not reference or incorporate limitations from any other claim. A patent application must have at least one independent claim. Independent claims define the broadest protectable scope of the invention and serve as the foundation for dependent claims.

A document filed by applicants listing all information known to be material to patentability, including prior art patents and publications, foreign applications, and other documents. Filing an IDS is part of the duty of candor owed to the USPTO. Failure to disclose material information can constitute inequitable conduct.

A post-grant USPTO trial proceeding before the PTAB allowing a third party to challenge the validity of an issued patent based only on prior art patents and printed publications under § 102 and § 103. A petition must be filed within one year of service of a complaint for infringement. The burden of proof is preponderance of evidence.

A USPTO proceeding under pre-AIA law to determine which of two or more applicants claiming the same patentable invention is entitled to a patent. Since AIA converted the U.S. to first-inventor-to-file, new interferences cannot be declared for applications with an effective filing date on or after March 16, 2013.

A teaching in a prior-art reference that necessarily and inevitably results from what is explicitly disclosed, even if not expressly described. Inherency may be used to supply missing claim elements in an anticipation rejection only when the missing limitation is always present, not when it is possible or probable.

A patent application filed under the Patent Cooperation Treaty (PCT) that provides an internationally recognized filing date in all member states with a single application. An international application proceeds through an international phase (search and examination) and then a national/regional phase in designated countries.

The complete set of persons who are joint inventors of a patent application. Each person who contributed to the conception of at least one claim must be named as an inventor. Incorrect inventorship can render a patent invalid, but may be corrected before or after issuance.

The fee required to be paid within three months of a Notice of Allowance before a patent will issue. If not paid, the application goes abandoned. Extensions of time are not available to pay the issue fee; only a petition to revive is available after the deadline passes.

Two or more persons who collaborated to make a patentable invention. Joint inventors need not work at the same time or make the same type or amount of contribution, but each must contribute to the conception of at least one claim. Each joint inventor owns an undivided interest in the entire patent.

A claim format in which the preamble explicitly states the known prior art elements and the body (following 'wherein the improvement comprises') states only the novel elements. The preamble of a Jepson claim is treated as a limitation and an admission of prior art.

An applicant who does not qualify as a small entity or micro entity, and who therefore pays the standard (undiscounted) USPTO fee schedule. Most large corporations and institutions file as large (macro) entities.

A claim format used to express alternative members within a single claim element using the language 'selected from the group consisting of A, B, and C.' Common in chemical and pharmaceutical patents. The prior art must anticipate or render obvious at least one member of the group to reject the claim.

A claim element written using 'means for' or 'step for' language invoking § 112(f). Under § 112(f), such a limitation is construed to cover only the structures, materials, or acts described in the specification corresponding to that function, and their equivalents. Failure to disclose corresponding structure results in indefiniteness.

An applicant status that qualifies for a 80% reduction in certain USPTO fees. An applicant qualifies as a micro entity if they qualify as a small entity, have not filed more than 4 prior applications (with exceptions), gross income does not exceed 3× the prior-year median household income, and the applicant has not assigned or licensed to a non-micro entity.

The primary reference used by USPTO patent examiners during examination and the primary study resource for the patent bar exam. The MPEP covers all aspects of patent prosecution, from filing requirements to appeals, and is published and updated by the USPTO. Tested thoroughly on the patent bar (Prometric exam).

Subject matter added to a patent application after its filing date that was not described or supported in the original disclosure. The USPTO prohibits the introduction of new matter into a pending application. Any amendment that introduces new matter will be objected to and the new matter stricken from the application.

The first substantive Office Action rejecting claims in a patent application. After a non-final rejection the applicant has a three-month shortened statutory period (extendable up to six months) to respond. The response may amend claims, argue against rejections, or both.

One of the core patentability requirements under § 103. An invention is non-obvious if the differences between the claimed invention and the prior art would not have been obvious to a PHOSITA at the time of invention. Secondary considerations (objective indicia) such as commercial success, long-felt need, and unexpected results are relevant.

An Office communication indicating that the claims in an application have been found allowable and that a patent will issue upon payment of the issue fee. The applicant has three months from the mailing date to pay the issue fee (no extensions available). Any desired amendments after allowance must be by way of reissue.

One of the core patentability requirements under § 102. A claimed invention lacks novelty (is anticipated) when a single prior-art reference discloses every element of the claim, either explicitly or inherently. Under AIA, prior art is measured from the effective filing date; under pre-AIA it is measured from the date of invention.

A statement by which inventors identify themselves as the original inventor(s) and acknowledge their duty of disclosure. Under AIA § 115, at least one inventor must sign an oath or declaration, or a substitute statement may be filed in certain circumstances. Required before a patent can issue.

A judicially created doctrine preventing an inventor from obtaining a second patent on claims that are not patentably distinct from claims in an earlier patent by the same inventive entity. Unlike statutory double patenting, OTDP can be overcome by filing a terminal disclaimer linking the expiration dates of both patents.

Any official written communication from a USPTO examiner to the applicant regarding a patent application. Office Actions may contain rejections, objections, or require applicant responses within specified time periods. Non-final and final are the two main categories of substantive Office Actions during prosecution.

Under AIA § 102(a)(1) and pre-AIA § 102(b), prior commercial sale or offer for sale of an invention more than one year before the effective filing date constitutes prior art that can bar patentability. The on-sale bar applies even if the sale was secret (Pfaff v. Wells Electronics).

The earlier-filed application from which a continuation, divisional, or continuation-in-part application claims domestic priority benefit under § 120. The parent must be copending with the child application when the child is filed, and the child must contain a specific reference to the parent.

An international treaty that allows applicants to claim priority from a first foreign filing in a member country. An application claiming Paris Convention priority must be filed within 12 months of the earliest foreign filing date for utility and plant patents, or 6 months for design patents.

A person who has passed the USPTO patent bar exam (registration exam) and is registered to practice before the USPTO in patent matters. Unlike a patent attorney, a patent agent is not required to be licensed to practice law and may not provide legal advice outside of USPTO proceedings.

A patent agent who is also a licensed attorney. Patent attorneys can represent clients in patent prosecution, IP litigation, patent licensing, and general legal matters related to patents, in addition to all USPTO proceedings.

The official examination administered by the USPTO (through Prometric testing centers) to assess competency to practice patent law before the USPTO. The exam consists of 100 multiple-choice questions over 6 hours. Passing allows registration as a patent agent or, if also a licensed attorney, as a patent attorney.

An international treaty administered by WIPO allowing inventors to file a single 'international application' to seek patent protection in over 155 member countries simultaneously. The PCT does not result in an international patent; applicants must eventually enter the national phase in each desired country within 30/31 months from priority.

Notice that a patent application has been filed but not yet issued. Marking products with 'patent pending' provides notice to potential infringers but confers no legal rights; rights begin upon actual patent grant. Falsely marking goods as 'patent pending' can subject the marketer to liability under § 292.

The hypothetical person used as the standard for determining obviousness, enablement, claim construction, and other patentability issues. PHOSITA is presumed to know all relevant prior art in the field and possesses the common general knowledge and skills typical of workers in that technological area.

A patent granted to an inventor who has invented or discovered and asexually reproduced a distinct and new variety of plant. Plant patents have a 20-year term from the filing date and consist of a single claim. They are governed by 35 U.S.C. §§ 161–164 and MPEP Chapter 1600.

An AIA-created USPTO trial proceeding before the PTAB allowing any person who is not the patent owner to challenge any ground of invalidity (including § 101, § 112 issues) within 9 months after the patent grant or reissuance. The burden of proof is preponderance of evidence.

The introductory phrase of a patent claim, before the transitional phrase, that recites the name of the claimed subject matter and often its intended use. A preamble is a claim limitation only if it recites essential structure or steps, or if it is necessary to give meaning to the claim body.

All publicly available information, patents, patent applications, publications, public uses, sales, and other disclosures that existed before a patent application's effective filing date (or critical date). Under AIA § 102, prior art is measured from the effective filing date; under pre-AIA § 102, it is measured from the date of invention in some circumstances.

The date used to measure what counts as prior art against a patent application. Under AIA, priority date is the effective filing date. An applicant can claim an earlier priority date through domestic benefit claims (§ 119(e), § 120) or foreign priority claims (§ 119(a)-(d), Paris Convention).

A doctrine limiting the scope of patent claims to prevent an applicant from recapturing through the doctrine of equivalents claim scope that was surrendered during prosecution, whether by narrowing amendment or argument. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. established the presumption of complete surrender.

A lower-cost, simplified U.S. patent application that establishes a priority date and starts the 12-month clock for filing a corresponding non-provisional application. A provisional application is never examined and automatically abandons 12 months after filing. It must fully support the claims of the later non-provisional to be effective as a priority document.

Under AIA § 102(a)(1), a patent claim is barred if the invention was in public use before the effective filing date. Under pre-AIA § 102(b), the bar applies to public use more than one year before the filing date. The bar applies even if the use was a secret commercial exploitation by the inventor.

A procedural tool allowing applicants to reopen prosecution of a patent application after a final rejection or notice of allowance by submitting a fee and a submission (e.g., an amendment or an IDS). An RCE does not restart the prosecution history; instead, it allows the examiner to consider new arguments or evidence.

A patent issued to correct an error in an original patent that causes the patent to be wholly or partly inoperative or invalid, such as a defective specification, claiming too broadly, or claiming too narrowly. A reissue application must be filed by the patent owner; claims cannot be broadened more than two years after the original grant.

An examiner's written refusal to grant claims in a patent application, typically citing specific statutory grounds (§§ 101, 102, 103, or 112). Rejections must be responded to within the statutory period. Multiple rejections can be made in the same Office Action. An applicant may traverse a rejection in a written response or by appeal.

See RCE above.

An examiner's requirement that an applicant elect one invention for examination when a single application claims two or more independent and distinct inventions. The non-elected claims may be pursued in a divisional application. The applicant may traverse a restriction requirement with a showing that the inventions are not distinct.

Real-world evidence that an invention was not obvious, including commercial success, long-felt but unmet need, failure of others, industry praise, copying by competitors, and unexpected results. These factors must have a nexus to the claimed invention. They can overcome a prima facie case of obviousness.

An inventor, small business concern (fewer than 500 employees), or nonprofit organization qualifying for a 60% reduction in certain USPTO fees. Entity status must be accurately claimed; paying incorrect fees can result in fraud on the USPTO if the status is intentionally overclaimed.

The written description portion of a patent application that must fully describe the invention so a PHOSITA can make and use it (enablement), describe the best mode of practicing the invention, and support all claimed subject matter (written description). The specification is the foundation on which valid claims are built.

A provision that prevents the granting of a patent due to certain activities (sale, public use, disclosure) occurring before a critical date. Under AIA, third-party disclosures more than one year before the effective filing date constitute a statutory bar even if the inventor did not know of them.

The requirement that patent claims be directed to patentable subject matter: a process, machine, manufacture, or composition of matter. Judicial exceptions — abstract ideas, laws of nature, natural phenomena — are excluded unless claims include significantly more than the exception itself. The Alice/Mayo two-step framework is applied by examiners.

A document that may be filed in lieu of an inventor's oath or declaration under AIA § 115 when an inventor refuses to execute the oath, cannot be found after diligent effort, is deceased, or is under a legal incapacity. An assignee or party obligated to assign may file a substitute statement.

An AIA proceeding allowing a patent owner to request that the USPTO consider, reconsider, or correct information believed to be relevant to the patent. If a substantial new question of patentability is raised, the USPTO will order ex parte reexamination. It can eliminate certain inequitable conduct defenses prospectively.

A document filed to overcome an obviousness-type double patenting rejection by disclaiming the portion of patent term extending beyond the earlier patent's term and requiring that both patents be owned by the same party. A terminal disclaimer filed to overcome OTDP creates a link between the expiration dates of the patents.

'Comprising' is open-ended (covers the listed elements plus additional ones). 'Consisting of' is closed (covers only the listed elements). 'Consisting essentially of' covers the listed elements and those that do not materially affect the basic and novel characteristics. The choice of transitional phrase significantly affects claim scope.

The international application analog to the U.S. restriction requirement. Under PCT rules, a single international application may claim multiple inventions only if they share a single general inventive concept. Lack of unity can result in an invitation to restrict or additional search fees.

The most common type of patent, covering inventions or discoveries of any new and useful process, machine, manufacture, or composition of matter. Utility patents have a term of 20 years from the earliest effective filing date for applications filed on or after June 8, 1995. Three maintenance fees are due at 3.5, 7.5, and 11.5 years after grant.

Under § 101, a patentable invention must be useful. The USPTO requires that the utility be specific, substantial, and credible. Inventions must have a real-world use; credibility is presumed for most inventions but may be questioned for chemical compounds or pharmaceutical uses without supporting evidence.

Eight factors used to determine whether undue experimentation would be required to enable a claimed invention: (1) quantity of experimentation; (2) presence of working examples; (3) amount of guidance in the specification; (4) nature of the invention; (5) state of the prior art; (6) relative skill of practitioners; (7) predictability of the art; (8) breadth of the claims.

Requirement under § 112(a) that the specification demonstrate, as of the filing date, that the applicant was in possession of the claimed invention. The written description requirement is separate from enablement and is most commonly an issue when claims are broadened by amendment after filing or in continuation applications.