Patents R Us: Patent Glossary for Inventors and Patent Owners

Patent Glossary

Appraisal of patent – Use of a patent consultant, recognized expert or third party to place a value on a patent

Assert patent – Aggressive patent enforcement by a patent owner that does not practice (use the patented invention to produce a product or service) the patent

Assertive licensing – Aggressive pursuit of compensation from the patent infringers by a patent owner that does not practice the patent

Carrot license – Agreement to pay a fee or lump sum for the use a patented invention when the agreement has been entered into amicably

Contingency patent assertion – Patent enforcement by a patent enforcement firm or law firm on behalf of the patent owner under which the patent enforcement firm or law firm only earns a fee for its services if it is successful in securing an award or settlement for the patent owner

Contingency patent enforcement – Another term for contingency patent assertion

Contingency patent infringement litigation – Arrangement between the patent owner and a patent enforcement firm or law firm under which the firm under which the firm will be compensated out of the proceeds of the lawsuit and not paid directly by the patent owner/plaintiff. Some firms work on full contingency and cover all litigation expenses themselves, while others work on partial contingency and require the patent owner to cover litigation expenses.

Contingency patent lawsuit – Another term for contingency patent infringement litigation

Damages – What is paid to the plaintiff as the settlement of a lawsuit to compensate the plaintiff for the harm (or damage) done to him (or her or it)

Damages, expert witness on – Third-party with demonstrated expertise who helps calculate the economic damages suffered by the plaintiff in a lawsuit, including lost income and other damages

Enforce patent – Potentially costly process that involves identifying and contacting alleged patent infringers, and using the threat of patent litigation to convince the patent infringers to cease their infringement of the patent or pay for their use of the infringed patent. Since patent infringement is not a crime, patent enforcement must be pursued by the patent owner through civil litigation.

Expert witness on damages – Someone with expertise in the field of patent technology who helps determine the economic damages arising from patent infringement, such as lost income from use of the patent

First-to-file – Practice of some European patent agencies to award a patent to the person or organization that first applied for the patent, and not necessarily the party that actually discovered the patented invention

First-to-invent – Current practice of the U.S. Patent and Trademark Office to award a patent to the person or organization that initially created the patented invention

Infringe patent – To use (or “practice”) a patent without permission of the patent owner

Infringed intellectual property – To use a patent, copyright, trademark, service mark or trade secret without permission of the owner

Infringed patent – Patent in which all of its limitations are used in the device or process without permission of the owner of the patent

Intellectual property – Patent, copyright, trademark or service mark, or any concept, idea or invention that a person or entity claims to have created. Inventions are protected by patents. Written documents are protected by copyrights. Brand names are protected by trademarks. Advertising slogans, as well as product and service descriptions, are protected by service marks.

Intellectual property expert – Patent agent, patent attorney, licensing specialist or intellectual property professional who has the training and experience necessary to determine when infringement of a patent, copyright or trademark has occurred, and how to enforce intellectual property that has been infringed

Intellectual property infringement – Use of intellectual property (patent, trademark or copyright) by a person, business or other entity that does not own the intellectual property and does not have permission of the owner of the intellectual property to use it
 
Intellectual property strategy – Plan for how to make the best use of an organization’s portfolio of patents, copyrights and trademarks

Intellectual property valuation – Determination of the fair market value of one’s patent, copyright or trademarks when the market for them is limited
 
IP – Common abbreviation for “intellectual property”
 
License patent – Grant permission to another party to practice a patented invention. The patent owner retains ownership of the patent and usually collects royalties from the licensee. Patent licenses may be exclusive (only one licensee) or non-exclusive (to multiple licensees).
 
Litigate patent on contingency – Agree to represent the plaintiff in patent infringement litigation on the basis that the litigator will be paid its legal fees and reimbursed for litigation expenses from the proceeds of any award or settlement that results from the litigation. Some attorneys will agree to litigate on a partial contingency basis that includes only legal fees, requiring the plaintiff to cover litigation expenses.

Market participant – Person, business or other organization (usually a business) that owns a patent, is the plaintiff in a patent infringement lawsuit, and practices the patented invention. The opposite of a market participant is an NPE or non-practicing entity.

Non-practicing entity – Person, business or other organization (but usually a person) that owns a patent and is the plaintiff in a patent infringement lawsuit, but does not practice the patented invention. The opposite of a non-practicing entity is a market participant.

NPE – Common abbreviation for “Non-Practicing Entity” (see above)

Patent – Right of a person, business or other entity to prevent others from making, using, offering for sale, or importing an invention. To be awarded a patent, an invention must be “novel” (new), “non-obvious to a person of ordinary skill in the art” (or field of technology), and “useful.”

Patent agent – Person with proven technical expertise in a hard science (such as engineering or software) who has passed the Patent Office Bar Exam and is registered with the US Patent and Trademark Office to represent patent applications and “prosecute” patent applications
 
Patent appraisal – Determination of the worth of a patent. Patent appraisals are often conducted before a patent is assigned or licensed to determine its market value.
 
Patent assertion – Synonymous with patent enforcement, it is the process of protecting a patent by ensuring that licensing fees are paid for its use

Patent assertion on a contingency basis (or “contingent basis”) – Enforcement of a patent by a third party on behalf of the patent owner on the basis that the third party will be paid from the proceeds of any court award or private settlement it receives on the behalf of the patent owner. Patent enforcement firms assert patents on a contingency basis, they do not charge the patent owner for their services up-front, they pay all expenses involved with the patent assertion process themselves, and they are paid from the revenue they generate for the patent owner.

Patent assertion on contingency – Same as above

Patent attorney – Lawyer (or attorney) who has demonstrated technical expertise, has passed the Patent Office Bar Exam and is also admitted to the bar of one of the 50 states or the District of Columbia. Patent attorneys, like patent agents, represent patent applicants before the US Patent and Trademark Office. Unlike Patent Agents, a Patent Attorney can also represent his or her client in court.

Patent broker – Finding and matching patent buyers and and patent sellers. Negotiates deals between the two parties.

Patent brokerage – Handles patent sales and patent licensing. Performs patent valuations.

Patent case – Lawsuit or other legal claim involving patent infringement and/or patent enforcement

Patent damages - Economic losses suffered by a patent owner whose patent was infringed. Patent damages can include lost profits and lost future income, as well as other harm done to the patent owner

Patent enforcement – Also known as patent assertion, the process of ensuring that a patent infringer compensates the patent owner for past, current and future use of the patented invention. Patent enforcement usually involves litigation.

Patent enforcement firm – Business that specializes in representing patent owners in patent enforcement matters, usually patent enforcement litigation. A patent enforcement firm is not a law firm, so it engages a law firm (or law firms) to actually try the lawsuit, it finances all the costs of the litigation, offers additional services, and is repaid from the proceeds of the litigation. A patent enforcement firm works on a 100% contingency basis, and offers a one-stop, comprehensive and seamless package of patent enforcement services for the patent owners who want to pursue infringers of his (or her or its) patent(s).

Patent enforcement on a contingency basis (or “contingent basis”) – Agreement with the patent owner to represent him (or her or it) in patent enforcement litigation on the basis that legal fees and litigation expenses will be paid from the proceeds of the litigation. Some law firms will only agree to a partial contingency arrangement whereas their legal fees are paid out of the settlement, and the patent must cover the litigation expenses. Patent enforcement firms offer patent enforcement on a 100% contingency basis, taking both legal fees and all out-of-pocket expenses from the proceeds of the litigation.

Patent enforcement on contingency – Same as above

Patent expert – Patent attorney, patent agent or other patent professional with expertise in intellectual property law or patent enforcement, patent valuation and other patent-related areas

Patent expert witness – Person with recognized credentials in patent infringement, patent enforcement and patent valuation who provides court testimony for plaintiffs or defendants in patent infringement litigation

Patent experts – Patent attorneys, patent agents or other patent professionals with expertise in patent law or patent-related areas

Patent funding – Financing of the costs of patent infringement litigation by a third party, by the law firm trying the case or by a patent enforcement firm. Patent funding is almost always done on a non-recourse basis; that is, the funding party only gets paid if the patent infringement litigation produces an award or settlement for the plaintiff.

Patent infringement – Practice of a patent by a person, business or other entity that does not own the patent and does not have permission of the owner of the patent to practice it. Patent infringement can be willful (intentional on the part of the infringer) or unintentional (accidental on the part of the infringer).

Patent infringement case – Lawsuit filed against the infringer of a patent by the patent owner

Patent infringement lawsuit – More proper term for “patent infringement case”

Patent infringement lawsuit on contingency (or “contingent basis”) – Arrangement under which a law firm or patent enforcement firm agrees to represent a patent owner in a patent infringement lawsuit, and be paid legal fees and reimbursed for litigation expenses from the proceeds of the lawsuit

Patent infringement litigation – Potentially long and costly process of going to court to determine if the accused device or process infringes on a patent and, possibly, whether the patent-in-suit is valid and enforceable in the first place. Patent infringement litigation is expensive, lengthy and risky for patent holders, so it should not be attempted without competent legal counsel or the assistance of a patent enforcement company.

Patent infringement litigation on a contingency basis (or “contingent basis”) – Representation of the plaintiff in patent infringement litigation on the basis that the litigator or patent enforcement firm will be paid legal fees and reimbursed for litigation expenses from any award or settlement produced by the litigation. Some law firms will take just their legal fees on a contingency basis, and require that the plaintiff cover litigation expenses

Patent infringement litigation on contingency (or “contingent basis”) – Same as above.
 
Patent infringement suit – Lay term for “patent infringement lawsuit”

Patent infringer – Person, business or other organization that practices a patent without the permission of the patent owner. Patent infringers are most often businesses that infringe a patented invention in a product or service they produce and/or sell.

Patent lawsuit – Lay term for “patent infringement lawsuit”

Patent lawsuit funding – Financing of the costs of patent infringement litigation by the law firm trying the case, a patent enforcement firm or a third party. Patent lawsuit funding is always contingency funding in which the party financing the litigation is only repaid if the litigation produces an award or settlement for the plaintiff.

Patent lawyer – Attorney who is registered with the US Patent and Trademark Office to represent patent applicants. The Patent Office prefers the term “patent attorney.”

Patent licensing – Process of contracting for a person, business or other entity to practice a patent in exchange for a royalty, lump-sum payment or other consideration

Patent litigation – Alternate terminology for patent lawsuit or patent infringement lawsuit

Patent litigation funding – Financing of the legal fees and litigation expenses of a patent infringement lawsuit by a patent enforcement firm, the law firm trying the case or a third party. Patent litigation funding is both contingent and non-recourse. Payment to the party financing the litigation is contingent on the outcome of the case, and if there is no award or settlement, the party financing the litigation writes off it losses and has no recourse to be repaid.

Patent litigation on a contingency basis (or “contingent basis”) – Agreement to represent a patent owner in patent infringement litigation on the basis that legal fees and litigation expenses will be paid from the proceeds of any award or settlement produced by the litigation. Many law firms will only agree to have their legal fees paid on a contingency basis, and require the plaintiff to cover all litigation expenses.

Patent litigation on contingency – Same as above.
 
Patent litigator – Patent attorney or law firm that represents plaintiffs or defendants in patent infringement cases. Not all patent attorneys are patent litigators.

Patent Office – Term commonly used in place of the longer and more formal “US Patent and Trademark Office”

Patent portfolio management – Supervision of a collection of patents which involves deciding which to keep and maintain, which to abandon, which to enforce and which to donate to universities or other organizations

Patent practitioner – General term for patent agent or patent attorney

Patent prosecutor – Also a general term for patent agent or patent attorney

Patent suit – Lay term for “patent lawsuit” or, more properly, “patent enforcement lawsuit”

Patent troll – Less than flattering term used by defendants in patent infringement litigation to describe a plaintiff who is an NPE (non-practicing entity). That is, does not practice the patent, but litigates against those whom the patent owner believes is infringing the patent.

Patent valuation – Determining the worth of a patent portfolio with regard to similar patents and technologies

Patent violation – Lay term for “patent infringement”

Practice – Use a patented invention in a product or service that is offered for sale

Prosecute – (1.) Apply for a patent and go through the process of getting an invention patented (Example: “He used a patent agent to help prosecute his application before the Patent Office.”); (2.) Try a patent infringement or other civil lawsuit (Example: “A patent litigator will aggressively prosecute your patent infringement lawsuit.”); (3.) Represent the state in a criminal case (Example: “The District Attorney decided to prosecute both of them for the same crime.”). Definition No. 3 is NOT a patent-related application for “prosecute,” but it is the definition that comes to most people’s minds when they hear the term.

Stick license – Slang for an agreement to pay a fee for the use of a patented invention when the agreement (or “license”) was not entered into amicably, but as the result of a patent infringement lawsuit or the threat of patent infringement litigation

US Patent and Trademark Office - Agency within the US Department of Commerce that issues patents and registers trademarks, copyrights and service marks. The agency is located in Arlington, Virginia, and their website is www.uspto.gov.

Valuation of patent – Determination of the worth or fair market value of a patented invention

Value patent – Determine the worth of a patent, usually through the use a third-party expert