Patent Bar Exam Prep
Patent Bar Exam Glossary - 40 Terms
Search the terminology pack for Registration Examination for Patent Practitioners. Use these definitions with the study guide and practice questions.
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- 35 U.S.C. § 101
- Statutory provision defining patent-eligible subject matter as any new and useful process, machine, manufacture, or composition of matter.
- 35 U.S.C. § 102
- Statutory provision governing novelty and what qualifies as prior art.
- 35 U.S.C. § 103
- Statutory provision governing obviousness based on prior art.
- 35 U.S.C. § 112(f)
- Statutory provision allowing claim elements to be expressed as a means or step for performing a function without reciting structure, material, or acts.
- 35 U.S.C. § 133
- Statutory provision governing the time for prosecuting an application and responding to USPTO actions.
- 35 U.S.C. § 321(c)
- Statutory provision setting the deadline for filing a post-grant review petition no later than 9 months after patent grant.
- 37 C.F.R. § 1.137
- Regulation governing revival of abandoned patent applications for unavoidable or unintentional delay.
- 37 C.F.R. § 1.27
- Regulation defining small entity status and related fee reduction eligibility.
- 37 C.F.R. § 1.29
- Regulation defining micro entity status and the requirements for eligibility.
A
- accused device
- The product or apparatus alleged to infringe a patent claim.
C
- claim
- The part of a patent that defines the legal scope of the invention.
- clerical error
- A minor mistake in a patent that may be corrected through statutory correction procedures when no deceptive intent is involved.
- composition of matter
- A statutory category of invention covering chemical compositions and mixtures.
D
- doctrine of equivalents
- Infringement doctrine under which an accused product or process may infringe even if it does not literally meet claim language, if differences are insubstantial.
- duty of candor and good faith
- Requirement that parties dealing with the USPTO act honestly and disclose material information during prosecution.
- duty of disclosure
- Obligation of individuals involved in prosecution to disclose information material to patentability to the USPTO.
E
- ex parte reexamination
- A USPTO procedure allowing reconsideration of an issued patent based on prior art patents or printed publications, conducted primarily between the patent owner and the Office.
I
- inter partes review
- A PTAB trial proceeding to challenge patent claims on limited prior art grounds under §§ 102 and 103.
M
- machine
- A statutory category of invention covering a concrete apparatus or device.
- manufacture
- A statutory category of invention referring to an article made by humans.
- means-plus-function claim
- A claim format that recites a function rather than specific structure and is construed to cover corresponding disclosed structure and equivalents.
- micro entity
- An applicant status under USPTO rules providing greater fee reductions for parties meeting income, filing, and assignment limitations.
- MPEP
- The Manual of Patent Examining Procedure, which provides guidance on patent examination practice and procedure.
N
- non-final Office Action
- An Office Action issued before final rejection, typically allowing the applicant to respond as a matter of right.
- nonstatutory double patenting
- A judicially created doctrine preventing unjustified extension of patent rights through claims that are not patentably distinct from claims in another patent.
O
- Office Action
- An official written communication from the USPTO examiner stating objections, rejections, or other requirements.
P
- Patent Trial and Appeal Board
- The USPTO tribunal that handles appeals and post-grant trial proceedings such as IPR and PGR.
- patent-eligible subject matter
- Types of inventions that may qualify for patent protection under the patent statutes.
- petition to revive
- A request to reinstate an abandoned patent application under specified USPTO rules.
- post-grant review
- A PTAB proceeding that permits broad validity challenges to a patent within a limited period after grant.
- printed publication
- A publicly accessible document that may qualify as prior art for patentability challenges.
- prior art
- Existing knowledge or references that may be used to assess novelty or nonobviousness of a claimed invention.
- process
- A statutory category of invention involving a method or series of acts.
R
- RCE
- Abbreviation for Request for Continued Examination.
- Request for Continued Examination
- A filing that reopens prosecution after it has been closed, allowing further examination of an application.
S
- small entity
- An applicant status under USPTO rules that qualifies eligible parties for reduced patent fees.
- specification
- The written description in a patent application that explains the invention and how to make and use it.
- statutory period
- The time period set by statute for taking a required action in patent prosecution.
T
- terminal disclaimer
- A statement filed to disclaim or give up part of a patent term, often used to overcome a nonstatutory double patenting rejection.
U
- unintentionally abandoned application
- A patent application that became abandoned due to an unintended failure to take a required action.
About These Definitions
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