Cancellation of Claims: Removal of claims from a patent application,
usually by way of an amendment.
Cancelled Matter: A matter that is removed from the specification or
claims of a patent application.
Certificate of Correction: Issued upon patentee request due to a U.S.
Patent and Trademark Office or applicant minor error in the patent such as
printing, typographical, or clerical errors.
CFR: The Code of Federal Regulations.
Citations: Citations may be made by the examiner or author. They
comprise a list of references that are believed to be relevant prior art and
which may have contributed to the "narrowing" of the original
application. The examiner can also cite references from technical journals,
textbooks, handbooks and sources.
Claim(s): A claim is one of the numbered paragraphs that appear at the
end of a patent and defines the scope of protection given to the owner of the
patent (i.e., the right to prevent others from making, using, selling, offering
for sale, or importing the claimed invention). Each claim is treated separately
for purposes of determining validity and infringement. For example, claims may
be directed toward apparatus, methods, products, and compositions of matter and
new and useful improvements thereof.
Claim, Dependent: A claim that refers back to and further limits or
restricts the breadth of another claim. The other claim may be an independent
claim or another dependent claim.
Claim, Generic: A claim that describes a generic form of an invention.
A generic claim generally reads on all the claimed species of an invention.
Claim, Independent: A claim that does not reference another claim.
Claim, Jepson: A form of a claim with a preamble that describes what
is known in the art followed by a transitional phrase such as "the
improvement comprising" and then a description of the claimed improvement.
Claim, Multiple Dependent: A claim that refers back to and depends
from more than one other claim. The other claims may be referred to in the
alternative only.
Claim, Picture: A claim that sets forth an invention in great detail.
May also be called a Specific Claim.
Claim, Process: A claim that recites the steps of a process. The
process may be a method of making something, a process of operating something or
a process of using something.
Claim, Product: A claim that recites the elements or features of a
product (i.e., a machine, an article of manufacture or a composition of matter).
A claim recites the physical form of an invention.
Claim, Species: A claim that describes a species of an invention. A
generic claim generally reads on all the claimed species of an invention.
Claim: The definition of a monopoly right that an applicant is trying
to obtain. The claims define the actual monopoly when the patent is granted.
Claimed Invention: The invention that the inventor claims to have
invented and for which he seeks patent protection.
Classification: A subdivision of technology (and, hence, patents) by
subject matter.
Code of Federal Regulations (CFR): The regulations promulgated by the
USPTO.
Colorable Deviation: A small change in a product or process from what
is claimed that is made solely for the purpose of avoiding literal infringement
of the claim.
Combining Prior Art: Under Section 102 of the U.S. Patent Statute, a
claim must be identically disclosed in a single prior-art reference in order to
be rejected as being anticipated by prior art. Under Section 103 of the Patent
Statute (which deals with the standard of obviousness) one is permitted to
employ a single prior art reference or combine two or more references to render
a claim obvious if such a combination would be apparent to one skilled in the
art. Under either standard, a patent application claim may be rejected by a
patent examiner, or a patent claim may be ruled invalid by a court.
Completion of Invention: Conception and reduction to practice of an
invention. May also be called "making an invention." Conception is the
formation in the mind of the inventor of a definite and permanent idea of the
invention. The reduction to practice may be a constructive reduction to practice
(filing of a patent application containing sufficient disclosure to enable a
person skilled in the art to make and use the invention) or an actual reduction
to practice (making and testing the invention sufficiently to demonstrate to a
person skilled in the art that it will work for its intended purpose).
Composition of Matter: An invention in which the substance and not the
form or shape is the inventive subject matter.
Comprising: The word "comprising" in a claim renders the
claim open, which means that additional elements could be added to the accused
infringing device without avoiding infringement. For example, if a claim stated
that a chair had three legs and employed the word "comprising," a
chair having four legs would infringe. At the other end of the spectrum is a
closed claim, which uses the expression "consisting of." This means
that in a product alleged to infringe, if meaningful additional elements are
added to the features recited in a claim there is no infringement. These types
of claims frequently appear in the chemical and metallurgical arts. There is an
intermediate scope of claim that uses the expression "consisting
essentially of" and means that some additional components may be employed
in the allegedly infringing product without avoiding infringement.
Conception: The formation in the mind of the inventor of a definite
and permanent idea of the invention.
Consisting of: A transitional phrase used in claims that excludes any
element, step or ingredient not specified in the claim.
Constructive Reduction to Practice: A reduction to practice involves
physical verification of the operability of the invention or its suitability for
its intended purpose. When one files a U.S. patent application, one obtains a
constructive reduction to practice as of the filing date.
Contemporaneously Witnessed: The process of being observed or read by
someone being named as a witness. This person may not be one of the inventors.
Continuation Application: This is a patent application directed toward
the same invention as a prior application and filed while the prior application
is pending, naming the same inventive entity. The continuation application is
given the benefit of the earlier filing date of the application on which it is
based.
Continuation: Second or subsequent applications that are filed while
the original parent application is pending. Continuations must claim the same
invention as the original application to gain the benefit of the parent filing
date.
Continuations-in-Part: Generally referred to as a 'C.I.P.', this is
essentially the same as the continuation with the exception that some new
material may be included. The C.I.P. must be filed while the original parent
application is pending for any disclosed material in common with the parent. The
disclosure of the parent is usually amplified and the C.I.P may claim the same
or a different invention. A C.I.P application is accorded the benefit of the
filing date of the parent application to the extent of the two applications'
common subject matter.
Continuing Applications: There are three types of continuing
applications: division, continuation and continuation-in-part.
Contributory Infringement: This involves someone supplying a component
that is a material part of a product, apparatus, composition of matter, or
process with knowledge that it is uniquely adapted for use in infringing a
patent and is not a staple article of commerce suitable for substantial
non-infringing use. Such person can be held liable as a contributory infringer
if an infringement results.
Co-pending Application: A patent application that is pending, one that
is not abandoned or issued, at the time that another related patent application
is also pending.
Copying: This generally refers to an infringer copying from a patented
product, apparatus, composition, or process and may enhance evidence of
infringement.
Copyright: An intellectual property right that protects the manner in
which an idea is expressed and not the idea itself.
Corresponding Foreign Application: An international patent application
or a regional or national patent application or inventor's certificate filed in
a country other than the U.S. that establishes a priority date for a later-filed
U.S. application.
Count: A claim made in common by two or more alleged inventors
(opposing parties) in legal contest to determine who was the first inventor,
and, hence, who is deserving of a U.S. patent (called an interference). The
count defines the interfering subject matter between two or more patent
applications or between one or more applications and one or more issued patents.
Court of Appeals for the Federal Circuit (CAFC or Fed. Cir.): A U.S.
court to which an applicant for patent can appeal a decision of the USPTO Board
of Patent Appeals and Interferences.
Court of Customs and Patent Appeals (CCPA): The historical court that
reviewed USPTO decisions and decided customs cases, that was replaced by the
U.S. Court of Appeals for the Federal Circuit.
Critical Date: This refers to the date of the initial placing on sale,
publication, or public or commercial use of an invention. At the end of the
one-year period, a U.S. patent application cannot be filed because the statute
bars such filing.
Cross License: A license between two patent owners wherein each
licenses its patent(s) to the other.
Cross Reference: A reference (issued patent) in another class or
subclass, or a reference made in a later-filed patent application to a related,
earlier-filed application.
Crowded Art: This refers to an area of technology in which there have
been a large number of prior inventions. In a crowded art, it takes less of an
advancement to obtain a valid patent. Otherwise, one would have to conclude that
there can be no further patenting in that art.
