past是什么意思：美国专利法理解

2020年12月3日发(作者：于采章)
A
Abandonment (of a patent application) – stopping the prosecution process; can be implicit (failure to
reply to an office action or pay a prescribed fee within the time period allowed) or explicit (PTO is
informed by the applicant or his agent that further prosecution will not be pursued).
Application (patent application) – formal documents filed requesting the grant of a patent.
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B
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C
Claim – a statement by the patent applicant describing the
protected by a patent.
Conception (invention conception) – creation in the inventor’s mind of a useful way to solve a
problem; act of visualizing an invention, complete in all essential detail; occurs when a solution is
formulated, not when the underlying problem is recognized.
Confidentiality Agreement – a legal document through which intellectual property can be disclosed
by one party to another to be used only for stated purposes, not to be disclosed to others, and
returned to the giver upon request.
Continuation Application (also called a file wrapper continuation application) – an application filed
after the final office action on an earlier filed application that consists of the same disclosure; the
claims may be the same or there may be a new set of claims directed to the same invention claimed in
the prior application; continuation applications must be filed before the earlier application is
abandoned and must contain no new matter; a continuation application has the same filing date as the
earlier (parent) filed application.
Continuation in Part Application (CIP) – an application filed before the earlier filed application is
abandoned that adds new material to or deletes material from the earlier filed application; material in
common with the earlier application has the original application’s filing date, new material has the filing
date of the CIP.
Copyright – a type of intellectual property protection that protects the manner in which an idea is
expressed.
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D
Design Patent – patent used to protect the aesthetic aspects of an article and not the functional
aspects.

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Disclosure – description of an invention in an application or patent; consists of a specification (written
description), drawings, and claims.
Divisional Application – an application during the pendency of a prior application continuing the
same disclosure but with claims directed to an invention that differs from the original application;
usually filed in response to a Restriction Requirement from the PTO.
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E
Embodiment – one form of an invention; an example of the invention.
Enablement – the requirement of the Patent Code that the patent application disclosure must give a
sufficiently clear description of the invention so as to enable a person having ordinary skill in the art
(technology) to make and use the invention without undue experimentation.
Examination – process by which the PTO decides to grant a patent.
Exclusive License Agreement – a legal document licensing an intellectual property to another party
for their exclusive use. This intellectual property cannot be licensed to any other party for any use.
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F
File Wrapper (also called file history) – folder kept by the PTO that contains all the
correspondencedocuments involved in a patent application; contents of the file.
Filing Date – date on which all the required parts of an application are received at the PTO.
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G
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H
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I
Improvement Patent – a patent having claims that are an improvement or modification of the
invention of a prior patent.
Infringement – an unauthorized attempt to make, use, sell or have made a property right owned by
another; can be direct or contributory or can be actively induced (the encouragement of others to
infringe).

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Intellectual Property – property in the form of patents, trademarks, service marks, trade names,
trade secrets, and copyrights.
Interference – priority proceedings in the PTO to determine which of the two or more parties was first
to invent the subject matter in conflict.
Invention – conception of a novel, useful, unobvious contribution which is then reduced to practice.
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J
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K
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L
License – an agreement between the owner of a patent and another party that permits the other party
to practice the invention or benefit from rights; usually involves some compensation from the licensee
to the licensor; does not include legal title (remains with licensor).
Licensee – party obtaining rights under a license agreement.
Licensor – party granting rights under a license agreement.
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M
Maintenance fees – fees that must be paid 4, 8, and 12 years after a utility patent is granted.
Materials Transfer Agreement – a legal document by which exchanges of tangible materials may be
transferred among public and non-profit organizations.
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N
Non-exclusive License Agreement – a legal document licensing an intellectual property to another
party for use in a defined field. This intellectual property may be licensed to additional parties for use in
fields other than the ones specified in previously executed license agreements.
Non-obvious – a criterion in Section 103 of the Patent Code which requires that an invention cannot
receive a valid patent if the invention could be readily deduced from publicly available information by
one of ordinary skill in the art.
Novel – requirement for patentability: original in conception or style.

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O
Obvious – term used by examiner when rejecting claims that the examiner feels would have been
apparent to one
Official Gazette – published each Tuesday; officially announces the issuance of patents.
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P
Patent (utility, letters, design, plant) – a grant by a government to an inventor giving the latter the right
to exclude others for a limited period of time for making, using, or selling the invention.
Patent Application – formal document submitted to the PTO with a request for a grant; includes an
Abstract of Disclosure, patent drawings, specification, claims, oath or declaration, and a filing fee
payment.
Patent Cooperation Treaty (PCT) – a multilateral treaty which became effective in 1978 that
eliminates some of the duplication involved when obtaining patent protection for the same invention in
several countries; more than 40 nations are signatories of the PCT; with the PCT it is possible to file
and prosecute a single international application, which has the same effect as filing a separate
application in each PCT nation that the inventor designates at the time of filing the application; the
PCT neither creates an international patent nor changes the substantive requirements of patentability
in any individual PCT nation (including the US), it merely reduces the duplication of effort required to
file and processes parallel applications in several nations at the same time.
Patent and Trademark Office (PTO) – organization within the Department of Commerce that deals
with the issuance of patents.
Plant Patent – two distinct forms of plant patent or patent-like protection are available for new plant
varieties; (a) 1930 Plant Patent Act (PPA), PTO may grant patents for asexually reproduced varieties
and (b) under the 1970 Plant Variety Protection Act (PVPA) protection of new sexually reproduced
varieties are protected by the Department of Agriculture.
Prior Art – existing technical information against which the patentability of an invention is evaluated;
is pertinent in novelty and obviousness requirements for a patent.
Provisional Patent Application – accepted in 1995, the provisional patent application provides an
early priority date without counting against the twenty-year life of the patent. Requirements for filing a
provisional are specifications, drawings if necessary, filing fee, and assignee. No claims are submitted
with the provisional.
Public Disclosure – an unrestricted disclosure to any other person not bound by confidentiality
obligations, express or implied.
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Q
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R
Reduction to Practice – there are two types: (a) actual - occurs when the invention is physically
implemented, the article is manufactured, machine is built and tested, the method is performed and
confirmed, or the composition of matter has been synthesized or produced and (b) constructive – filing
of a patent application; to show one of average skill in the art how to make and use the invention.
Royalty – a share of income, in accordance with the terms of a license agreement, paid by a licensor
for the right to make, use or sell an invention.
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S
Search (location of information) - sometimes performed to determine if prior art exists that would
affect the patentability of an invention.
Statutory Bar (requirements) – specific acts related to an invention which if performed more than one
year prior to the filing of a patent application will preclude patentability; i.e., publication, sale of
invention, abandoning the invention, or public use.
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T
Trademark – a word, name, symbol, or device or any combination of these used by a manufacturer or
vendor in connection with a product.
Trade Secret – a property protected by keeping it confidential or secret.
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U
Utility Patent – one of three types of US patents; this type is most widely regarded as
protects patentable inventions such as processes, machines, compositions of matter and
improvements (other types of patents are design and plant).
Categories
The U.S. Patent and Trademark Office grants patents in three categories:
Utility Patents: Most common patent -- for machines, articles of manufacture, composition of matter,
and methods of making and doing things. Animal patents fall within this category.
Design Patents: This patent protects only the ornamental appearance of the device. A very simple
application to fill out because there is only one claim.

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Plant Patent: Any plant produced by budding or grafting, i.e., asexually reproduced. When you buy a
rose plant, for example, note that it is most probably patented.
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Elements of a Patent
A patent application consists of five elements:
1. A declaration that attests to the fact that you are the true inventor. It is like swearing that you did
not copy the invention from someone else.
2. Filing fee.
3. All drawings -- if drawings help explain the invention. The drawings do not have to be perfectly
executed, initially. They should, however, show all of the parts of the invention, because
nothing can be added later. The drawings must be perfected at the time the PTO decides to
grant a patent.
4. Written specifications -- a description of the invention, referencing the drawings, such that
someone skilled in the art can understand what it is, how it works, how it is assembled, and
what its attributes are.
5. At the end of the specification are the claims -- the legal part of the patent. They specifically
define what the improvement is. The claims are the basis for your suit for infringement if ever
you need that resort. The suit cannot be based on the drawings or the description. The claims
are the legal part.
The Patent and Trademark Office also requires the submission of copies of any other patents or
relevant published materials similar to or related to your invention. But the application itself consists of
only the five elements above.
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What is a Patentable Invention?
To be eligible for a utility patent, an invention must be either:
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a machine (e.g. a mechanism with moving parts);
an article of manufacture (e.g. a hand tool);
composition of matter (e.g. plastic or alloy);
a process (technological methods);
a new use of or improvement to an existing invention. Living organisms or other natural matter
that is modified or isolated may be potentially patentable.
Intangible ideas or objectives are not patentable.
In addition to fitting into one of these classes, an invention must also be:
previously known or used by others in the U. S. or described in a printed publication anywhere;

actually works, and is not frivolous or immoral.
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Patentability Determination
In addition to a review of the relevant literature for

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the resources of the Patent & Trademark Depository Library Program at the Clemson University
Library, that will provide a reasonable assessment of the patentability of a particular technology. A
disclosure of a similar concept or device in an earlier U. S. patent can prevent an inventor from
obtaining a patent on hisher invention. A patentablity search may reveal this kind of earlier disclosure.
If the results of a search are generally unfavorable, the inventor may not wish to pursue a patent
application. Alternatively, the search may be helpful in preparing the patent application and predicting
the scope of protection. Another benefit of a search is an indication of whether the invention may
potentially infringe on another patent.
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Patent Duration
Utility patents expire 20 years from the date of filing with the U. S. Patent & Trademark Office, if
maintenance fees are paid. Plant and design patents do not require maintenance fees. Design patents
expire 14 years from grant. A patent cannot be renewed. After a patent expires, anyone may use the
invention without the inventor's permission.
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Inventorship
Inventorship has a strict legal meaning under the laws and regulations of the U. S. patent system. The
law specifies that only those who have made independent, conceptual contributions to an invention
are legal inventors. An inventor is one who, alone or with others, first invents a new and useful process,
machine, composition of matter, or other patentable subject matter. The most important consideration
in determining inventorship is initial conception of the invention. The courts have ruled that, unless a
person contributes to the conception of the invention, that person is not an inventor. Conception of the
invention under patent law has been defined as the
definite and permanent idea of the complete and operative invention as it is thereafter to be applied in
practice.
would enable a person of ordinary skill in the art to construct or use the invention without extensive
research or experimentation
A patent application consists of three parts:
1. its specification including one or more claims - a narrative presentation of the invention,
including prior art;
2. drawings, where necessary to help describe invention;
an oath by the applicant(s), as specified by law.
3. Legal determination of inventorship is made in relation to patent claims. The test of inventorship
is whether a person has made an original, conceptual contribution to at least one of the patent's
claims.
To be a sole inventor, a person must be responsible for the conception of the invention as described in
all the patent claims. Each co-inventor is considered to have the same legal interest in a joint invention
as any other co-inventor. For legal reasons, the status of co-inventor may not be conferred merely as
a reward for hard work, friendship or even outstanding science. This means that colleagues, students,
research assistants, technicians, etc., and those who supervise them, even though they may gather
essential data or construct a practical embodiment of the invention, are not inventors unless they have
made an inventive contribution.

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What is the inventor's (author) commitment in the patentingmarketing process?
Although most of the marketing and patenting (copyright) functions will be performed by the
Technology Transfer staff, considerable input is usually required from the inventor (author), especially
in the patent applications process and, to a lesser extent, for copyright applications.
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What about publications?
If a technology has commercial potential and should be protected and marketed, it is advantageous to
disclose the technology to the Technology Transfer Office for review of the technology's patent
potential well in advance of any
dissertations may be considered public disclosure). If public disclosure occurs prior to filing a U.S.
patent application, valuable foreign patent rights may be lost. It is also encouraged that grant
proposals be labeled
Disclosure of the invention to the Technology Transfer Office should be far enough in advance of
public disclosure as possible.
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Protecting your technology
It is important to keep thorough records in the form of lab notebooks that record your ideas and
experiments and note independent witnesses to verify successful results. As such:
Inventors should keep good research notes in indelible ink in a bound notebook, with numbered
pages. The notebook is a record of progress, what was done and when, what parts were
bought, what was thought of when -- and includes sketches.
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Leave no blank pages or large blank spaces.
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Date and initial every page; if possible, have witnessed.
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Identify and cross-reference non-notebook material, i.e., tapes, biological materials, x-rays,
scans, etc.
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In the U. S., if anyone else also files a patent application that is essentially the same as yours, the
inventor that can prove that he or she was the first inventor -- by date of conception -- will win the
patent grant.
The old
evidence.
The courts want corroborating witnesses. They want to see periodic dated signatures on the notes
from a colleague (not a close relative or someone you supervise). The corroborating witness must be
someone that can read and understand what you've accomplished.
Team studies: Secure written verification of authenticity of data provided by every person involved,
including faculty, graduate students, post-docs, visiting scientists, technicians, etc.

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A Confidential Non-Disclosure Agreement is highly recommended before you discuss your invention
with a company or before you send unpublished confidential information to a company. This provides
a measure of protection for the concepts and claims embodied in your invention.
When submitting a proposal to a Federal or state agency or a privatecorporate foundation, notification
of proprietary content should be included in the transmittal letter and all pages containing proprietary
material should be embellished with the words
Additionally, a Materials Transfer Agreement (MTA) is strongly encouraged when sending proprietary
samples (e.g. biological materials) to a company. In many circumstances, the MTA may help protect
Clemson intellectual property. When obtaining sample material from companies, Clemson technology
may receive additional protection through an
requests use of their Confidential Non- Disclosure Agreement or Materials Transfer Agreement, please
have the document(s) reviewed by the Technology Transfer Office. Your signature, alone, may not
bind the University to ensure appropriate protection of the company's rights.
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Can Marketing Begin Before the Filing of a Patent?
A patent is not required in order to sell an invention; the product may be sold before filing a patent
application.
A patent conveys no rights to makeusesell an invention. It allows the holder to stop others from so
doing.
An inventor can do anything with hisher invention, without a patent, unless it infringes on someone
else's rights. So, the only way you can be precluded from making, using or selling a product is if
someone else has a patent on it and stops you from doing so.
An application need never be filed. However, the patent is the inventor's protection against
competitors -- which is the main purpose of a patent grant.
You must be cautious of making, using, selling, or showing an invention publicly before filing a patent
application. The one-year rule applies:
If more than one year passes between the time an invention is first publicly shown and the time the
patent application is filed, a patent cannot be issued.
This is true even if you are the first-to-invent, it is a really great invention, and it is truly novel -- no one
can get a patent, including the inventor. This is called the one-year publication bar.
Filing a disclosure document within one year of publication is not good enough. The actual patent
application must be filed within the year; otherwise, one is barred from obtaining a patent.
A Confidential Non-disclosure Agreement should always be signed before you discuss your invention
with any company. This provides a measure of protection for the concepts and claims embodied in
your invention.
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Computer Software Copyrights
The Technology Transfer Office manages and promotes software developed at the University. Much
of the subject matter discussed above also applies to computer software copyrights. For more
information regarding software issues (e.g., University Computer Software Copyright Policy), please
contact our office.
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As the InventorAuthor, can I Commercialize my Technology myself?
Although Clemson is the owner of inventions and software developed in Clemson facilities by
Clemson faculty, students and staff, certain rights, upon request, may be released or licensed to the
inventor following approval by the Vice President for Agriculture, Natural Resources and Research
and the Vice President for Administration and Institutional Advancement. The University will consider
licensing a particular technology to a company in which the inventor owns equity; this is treated by the
University like other licensing opportunities. However, if the University decides not to pursue a
particular technology, it may release this technology to the inventor(s), via the Clemson University
Technology Transfer Agreement (for inventions) or the University Computer Software Copyright Policy,
(for software copyrights). The inventor(s), then, has the option of licensing it to a company or
establishing a company for the purpose of commercializing the inventionsoftware, with a specified
portion of any income shared with the University.



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