Patent Law Glossary

The PTA category covering USPTO delays in meeting specific examination deadlines (14 months to first Office action, 4 months to respond to a reply, 4 months to act after appeal, 4 months to issue). Accrues day-for-day past each missed deadline.

Source: 35 U.S.C. § 154(b)(1)(A)

See also: PTA vs PTE

#a-delay

The portion of PTA that is reduced because the applicant failed to engage in reasonable efforts to conclude prosecution. Enumerated in 37 CFR 1.704, including the 3-month reply rule, supplemental replies, and post-allowance papers.

Source: 37 CFR 1.704

See also: Applicant delay and PTA reductions

#applicant-delay

The PTA category covering USPTO failure to issue a patent within three years of the actual filing date. Time consumed by continued examination (RCE), secrecy orders, and appeals is excluded from the three-year clock.

Source: 35 U.S.C. § 154(b)(1)(B)

See also: RCEs and B-Delay

#b-delay

The PTA category covering delays from interference proceedings, secrecy orders, and successful appellate review under 35 U.S.C. § 154(b)(1)(C). The SawStop decision imposed strict requirements on when C-Delay is available after appeal.

Source: 35 U.S.C. § 154(b)(1)(C)

See also: RCEs and patent term

#c-delay

The ordered sequence of recorded ownership-related events for a patent or application. A clear chain of title is essential for diligence, financing, and enforcement.

Reference: en.wikipedia.org/wiki/Chain_of_title

See also: Patent chain of title explained

#chain-of-title

A patent application filed while a parent application is still pending, claiming the same invention(s) and sharing the parent’s priority date. Term is tied back to the earliest effective filing date of the parent under 35 U.S.C. § 120.

Source: 35 U.S.C. § 120 · Reference: en.wikipedia.org/wiki/Continuing_patent_application

See also: Continuations and divisionals

#continuation

A continuation-type application that adds new matter not in the parent. Claims supported only by the new matter receive the CIP filing date as their effective priority date, which can affect term and prior art.

Source: MPEP § 201.08

See also: Continuations and divisionals

#cip

A continuation-type application filed in response to a restriction requirement, carrying forward claims to an invention that was restricted out of the parent. Shares the parent’s priority date and 20-year term measurement.

Source: 35 U.S.C. § 121 · Reference: en.wikipedia.org/wiki/Divisional_patent_application

See also: Continuations and divisionals

#divisional

The earliest non-provisional filing date in a patent’s continuity chain that qualifies for priority. Provisional applications do not count for term. The EEFD, not the application’s own filing date, anchors the 20-year term clock.

Reference: en.wikipedia.org/wiki/Priority_right

See also: Earliest effective filing date

#earliest-effective-filing-date

A filing in which the applicant discloses prior art and other information material to patentability. IDS timing interacts with applicant-delay rules; a safe-harbor statement (PTO/SB/133) can avoid a PTA reduction when the art was recently cited in a foreign counterpart.

Source: 37 CFR 1.704(d) · Reference: en.wikipedia.org/wiki/Information_disclosure_statement

See also: Applicant delay and PTA reductions

#ids

Rights accorded to third parties who used or invested in the patented invention while a patent was lapsed or reissued. Can allow continued practice without liability even after the patent is revived or reissued.

Source: 35 U.S.C. § 41(c)(2) / § 252

See also: Maintenance fees and patent expiration

#intervening-rights

A periodic fee required under 35 U.S.C. § 41(b) to keep a U.S. utility patent in force. Due at 3.5, 7.5, and 11.5 years after grant, each with a 6-month grace period. Non-payment causes the patent to expire.

Source: 35 U.S.C. § 41(b) · Reference: en.wikipedia.org/wiki/Maintenance_fee_(patent)

See also: Maintenance fees and patent expiration

#maintenance-fee

A judicial doctrine preventing a patentee from obtaining a second patent with claims not patentably distinct from an earlier patent. Typically overcome with a terminal disclaimer. After In re Cellect (2023), PTA-adjusted expiration dates drive the analysis.

Reference: en.wikipedia.org/wiki/Double_patenting

See also: Double patenting, PTA, and patent families

#odp

A written communication from a USPTO examiner raising objections, rejections, or requirements against a patent application. The applicant’s reply deadline drives key applicant-delay rules under 37 CFR 1.704.

Reference: en.wikipedia.org/wiki/Office_action

See also: Applicant delay and PTA reductions

#office-action

A transfer of ownership (all or substantial rights) in a patent or patent application, recorded with the USPTO Assignment Search database under 35 U.S.C. § 261. Distinct from a license, which grants permission without transferring ownership.

Source: 35 U.S.C. § 261 · Reference: en.wikipedia.org/wiki/Patent_assignment

See also: Assignment vs license

#patent-assignment

A grant of permission to use a patent without transferring ownership. Can be exclusive, non-exclusive, or limited by field/territory. Not all licenses are recorded with the USPTO.

Reference: en.wikipedia.org/wiki/Patent_licensing

See also: Assignment vs license

#patent-license

The length of time a patent is enforceable. For U.S. utility patents filed on or after June 8, 1995, the base term is 20 years from the earliest effective non-provisional filing date, subject to adjustments and caps.

Source: 35 U.S.C. § 154 · Reference: en.wikipedia.org/wiki/Term_of_patent_in_the_United_States

See also: When does a patent expire?

#patent-term

Additional days of patent term added to compensate the applicant for specific categories of USPTO-caused delay during prosecution. Calculated per 35 U.S.C. § 154(b) and 37 CFR 1.702–1.705. Added to the 20-year base term.

Source: 35 U.S.C. § 154(b) · Reference: en.wikipedia.org/wiki/Patent_term_adjustment

See also: PTA vs PTE · Verify and challenge PTA

#pta

Additional patent term granted under 35 U.S.C. § 156 to compensate for delays in obtaining FDA regulatory approval for certain products (e.g., drugs, biologics, medical devices). Distinct from PTA; subject to different caps and requirements.

Source: 35 U.S.C. § 156 · Reference: en.wikipedia.org/wiki/Patent_term_extension

See also: PTA vs PTE

#pte

An administrative body within the USPTO that hears appeals from examiner rejections and conducts post-grant proceedings such as IPRs and PGRs. Decisions can be appealed to the Federal Circuit.

Reference: en.wikipedia.org/wiki/Patent_Trial_and_Appeal_Board

See also: RCEs vs PTAB appeal

#ptab

The USPTO’s two-number locator (e.g., Reel 012345, Frame 0678) that identifies a specific recorded document in the Patent Assignment Search database. Each recorded document gets a unique reel/frame pair.

See also: What reel and frame mean

#reel-and-frame

A filing under 35 U.S.C. § 132(b) that reopens prosecution of an application after a final rejection or notice of allowance. Filing an RCE excludes the resulting period of continued examination from B-Delay.

Source: 35 U.S.C. § 132(b) · Reference: www.uspto.gov/patents/apply/applying-online/request-continued-examination-rce

See also: RCEs and the B-Delay trade-off

#rce

A certification filed with an IDS (Form PTO/SB/133) stating that the cited items were first cited in a communication from a foreign patent office no more than 30 days before the IDS filing. A qualifying statement prevents the IDS from generating applicant delay under 37 CFR 1.704(c)(8).

Source: 37 CFR 1.704(d)

See also: Applicant delay and PTA reductions

#safe-harbor-statement

A recorded interest in a patent granted as collateral for a loan or other obligation. A security interest is not an ownership transfer; it is an encumbrance. Often shows up in assignment records but does not change who owns the patent.

Reference: en.wikipedia.org/wiki/Security_interest

See also: Security interests in patents

#security-interest

A written disclaimer filed under 35 U.S.C. § 253 that caps a later patent’s term to the expiration of an earlier related patent, typically to overcome a non-statutory double-patenting rejection. Also binds enforceability to common ownership.

Source: 35 U.S.C. § 253 · Reference: en.wikipedia.org/wiki/Terminal_disclaimer

See also: How terminal disclaimers affect patent expiration

#terminal-disclaimer