PATENT LEGAL LEXICOLOGY

S. NO.
TERM
UNDERSTANDING
1
Applicant
A person who files for the grant of patent and can be inventor as well.
2
Assignee
Inventor/ Owner or Legal Representative of the Assignee.
3
Capable of Industrial Invention
Invention is capable of being made or being used in an industry.
4
Citations
List of references or works of prior art that are already in public domain in order to contribute to the narrowing down of the original application made be either examiner of the applicant.
5
Claim
Defining of the scope of the invention which is to be protected.
6
Compulsory Licensing
These licenses are authorisations by the State to utilise the patent without the consent of the original patent holder. As per Section 84 of the Patent Act, a person can make an application for compulsory license after three years from date of grant of patent, provided that grounds in the section are satisfied.
7
Controller
The administrator of the Patent Office in India is the Controller General of Patents, Designs and Trademarks. He/She is the overall supervisor of the patent offices in Kolkata, New Delhi, Chennai and Mumbai.
8
Convention application
Application for a patent made under provisions of Convention application.
9
Convention countries
Any country, which is a signatory or party or a group of countries, union of countries or intergovernmental organisations which are signatories or parties to an international, regional or bi-lateral treaty, convention or arrangement to which India is also a signatory or party and which affords to the applicants for patents in India or to citizens of India similar privileges as are granted to their own citizens or citizens to their member countries in respect of the grant of patents and protection of patent rights shall be a convention country or convention countries for the purposes of this Act.
10
Designated Countries
List of countries where the applicant intends to defend his invention by means of patent.
11
Disclosure
The public revelation of the patentable matter.
12
Evergreening of patents
Increasing the life of the patent beyond the prescribed 20 years. This is often done by obtaining multiple patents for different aspects of the same product such as patenting improved modified versions of the same product.
13
Exclusive License
Given u/s 2(f) of the Patent Act, means that the parties agree that no other party can use the specified Intellectual Property Rights apart from the licensee.
14
Field – of – use limitation
In order to limit the scope of license by specifying actions which the license has excluded.
15
Filing date
Date on which an application is filed.
16
First to file
A system where the first one to file for the grant of patent for an invention is automatically entitled to the patent.
17
First to invent
A system where the patent is conferred upon the person who first made it, irrespective of who file first for the grant of patent for that invention.
18
Foreign Filing License
If an Indian resident directly wants to file an application for patent in a foreign country without first filing one in India, he/she needs to obtain a Foreign Filing License from the Patent Office as per S. 39 of the Patent Act.
19
FRAND terms
Generally used in license agreements to denote Fair, Reasonable and Non-discriminatory terms which should be adopted by the patentee while giving out the license.
20
Freedom – to – operate
A search conducted with an intent to establish whether a product or process is covered under the rights conferred by virtue of grant of patent. It determines the probability whether such product or process constitutes infringement.
21
Improvement Patent
A new patent that covers an improved or advanced effect as compared with the earlier patent.
22
InPASS
It stands for Indian Patent Advanced Search System. It is a full-text search tool released by the Indian Patent Office where one can search for patents, patent applications and so on.
23
International application
Application for patent made in accordance with the Patent Cooperation Treaty.
24
International Patent Classification
The IPC was founded under the Strasbourg Agreement of 1971. It consists of a hierarchical system of classification based on alphabets and numbers which categorize patents and utility models into specific categories of technology/industry/science.
25
Invention
A new product or process involving an inventive step and capable of industrial application.
26
Inventive Step
A feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
27
Lapse of patent
On failure to provide for renewal fee, the rights conferred under the grant of patents are supposed to have been lapsed.
28
Loss or destruction of Patents
If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the Controller, the Controller may at any time, on application made in the prescribed manner and on payment of the prescribed fee, cause a duplicate thereof to be sealed and delivered to the applicant.
29
Markman hearing
A pre – trial hearing to determine the meaning of the relevant – words used in the claims of a patent.
30
New invention
Any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art.
31
Non – patent literature
Any technical document that is neither a patent nor a patent application or cited by the examiner in the process of patent prosecution. Also includes scientific papers.
32
Office action
The document that which is drafted by the examiner during examination procedure and provided to the applicant.
33
Patent ambush
Occurs when a member of a Standard Setting Organisation deliberately does not provide information during the process of setting a standard about a relevant patent or application. Subsequently that company then asserts patent infringement by using the standard as adopted. This is done because after the standard is implemented, companies wishing to comply with the standard must now pay the patent-holder substantial amounts.
34
Patent Assertion Entity (PAE)/ Non Practising Entity (NPE)/ Patent troll
an entity that enforces the rights accrued by virtue of grant of patent against infringers with an intention to collect license fee but does not engage in production or supply of services based on that patent.
35
Patent pooling
An arrangement between two or more entities by virtue of which they decide to cross license patents among them.
36
Patent Portfolio
A collection of patents owned by a single entity.
37
Patent Thicket/ Patent floods/ Patent clusters
Multiple overlapping intellectual property rights that require licensing from various sources. Generally prevent competition due to the complexity in acquiring all the rights for commercialising the technology.
38
Patentability opinion
An opinion whether the present invention is patentable or not.
39
Patentee
Person on whom rights are conferred by the virtue of grant of patent and also includes exclusive licensee.
40
Patents of Addition
A subsequent application made for improvement and modification of patent with respect of which an application has been previously filed.
41
PHOSITA
Person Having Ordinary Skill In The Art.
42
Prior Art
Any information in the public domain that is related to the invention sought to be patented.
43
Priority date
Date prior to which requirement for novelty is examined.
44
Provisional Application
When an application is accompanied with a provisional specification which further requires a complete specification to be submitted within twelve months or risk abandonment.
45
Publication date
The date on which the patent application is published which is generally around 18 months after the priority date.
46
Publication of Patent
After the filing of an application is complete, the Patent Office publishes it in a Journal. An application can be published in two ways- automatic publication and early publication. An application gets automatically published 18 months from the filing date so no request is required from the applicant. On the other hand, for early publication, the applicant can submit a request and the application gets published within a month of submission of the request. S. 11A and Rule 24 of the Patent Act govern automatic publication while S. 11A(7) governs early publication.
47
Remedies
Injunction, damages or portion of profits, confiscation and destruction of goods produced.
48
Request for examination
A request for examination of patent application has to be made in a prescribed manner and no examination can begin without such request.
49
Restoration of patents
Where a patent has ceased to have effect by reason of failure to pay any renewal fee, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.
50
Revocation of Patents
Rescinding of rights conferred by the grant of the patent upon the patentee by the Controller, Central Government or High Court or the Appellate Board.
51
Royalty
Under a patent license, the licensee may have to pay certain amount to the owner of the patent to use any of the rights associated with the patent.
52
Search report
A list of citations of all documents that have been published and thus fall under prior art and relevant to the patent application at hand.
53
Small entity
Where the investment made in plant, machinery and equipment by the enterprise engaged in manufacture or production of goods or engaged in rendering of services does not exceed the limit specified for medium enterprise under S 7(1)(a) of Micro, Small and Medium Enterprise Development Act, 2006.
54
Standard Essential Patents
Refer to patents important for implementing a specific industry standard. These patents are adopted by a Standard Setting Organization.
55
Startup
An entity aging less than five years from its incorporation or registration date with turnover of less than twenty five crore rupees working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property.
56
Surrender of Patents
A patentee may surrender the rights conferred by the virtue of the grant of patent.
57
Term of patents
20 years generally from the filling date (domestic/ international).
58
Termination of Compulsary license
On an application made by the patentee or any other person deriving title or interest in the patent, a compulsory licence granted may be terminated by the controller.
59
Unity of Invention
One invention or one inventive concept can be brought under review under one application.
60
Validity of specification
If in any proceedings before the Appellate Board or a High Court for the revocation of a patent, the validity of any claim of a specification is contested and that claim is found by the Appellate Board or the High Court to be valid, then the Appellate Board or the High Court may certify that the validity of that claim was contested in those proceedings and was upheld.