Terminology

AuthorClaas Junghans
Pages1-17
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Terminology
Claas Junghans
For those who have had little or no prior exposure to the field, this chapter serves
as a primer to the world of inventions and patents and introduces the topics that
will be discussed in more depth in further chapters.
1.1
The Terms of Patenting
1.1.1
The Patent
Territoriality
A patent is a legal document that specifies a technical invention. Patents are terri-
torial and relate to a specific country and the same invention can therefore be
patented in a number of countries. Usually, these patents have the same owner,
and are related to one another by their process of application; if that is the case,
they form a patent family.
It is possible, however, for different owners to have rights to the same invention
in different countries. This situation can arise if different applicants apply for
patents on the same or similar inventions in different countries, or if the original
inventor or applicant sells the patent rights for each country individually.
Exclusionary Rights
The owner of the patent is given certain rights to exclude others from making
commercial use of an invention; specifically the right to exclude others from com-
mercially using, selling, offering and keeping in stock an invention as specified in
the claim section of the granted patent, in the particular country of the patent.
Since the law governing patent protection differs across geographical jurisdic-
tions, the scope of this protection varies for patents within the same family.
Similar exclusionary rights can be obtained on designs, and in certain cases on
names used in the context of a business, termed trademarks. There are important
differences between the protection of patents on technical inventions, also termed
“utility patents”, which are the main subject of this book, and design patents and
trademarks, which are discussed in Chapter 5. Utility patents have a maximum
term of 20 years from the day of filing the application; other forms of intellectual
property (IP) have different terms.
Reward for Disclosure
The patentee is awarded the right to exclude competitors as a reward for the public
disclosure of an innovation, intended to stimulate scientific development. To meet
this criterion, however the patent must describe the invention in a way that
enables others to reproduce the invention. US law is especially stringent in its
demand for a “best mode” disclosure, non-fulfilment of which may lead to invali-
dation of the patent.
First-to-Apply
More than one inventor may independently make an invention. Europe and most
other nations, with the exception of the USA, grant the patent right to the appli-
cant who first files an application on the invention in their country. In the USA,
the right to patent is granted to whomever first made the invention regardless of
the time of filing. Efforts are ongoing to bring US law in line with the rest of the
world, but it is not clear whether this particular harmonisation will be successful.
1.1.2
The Process of Patenting
Drafting
Patenting an invention is a formal process resembling a dialogue between the
applicant, who submits a patent application on an invention, and the national or
regional Patent Office, which decides whether and to what extent the invention is
patentable.
The process of drafting entails the collection of all material describing the
invention, as well as publications that describe the technical background of the
invention. A skilled professional, most likely a patent attorney or in-house patent
agent, then drafts a patent application specifying the invention in all necessary
detail, and claiming the essential principle and important embodiments that are
to be protected.
Application
The first formal step in achieving patent protection is the submission of a patent
application. This application alone confers only marginal protection to its owner,
and most countries grant provisional protection rights to the applicant after the
application is made public, usually after 18 months.
1 Terminology2

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