GLOSSARY

ADAPT Professional Guide

The patent profession is full of legal jargon and we are here to help!

Annuity - Fees to be paid to a patent office to keep the patent alive and enforceable. In this U.S., these may also be called maintenance fees.

Billable hour(s) - Hours that a person is expected to bill in a year for work done for clients

Department of justice honors program - Entry-level federal attorney recruitment program through the U.S. Department of Justice

Deposition - An opportunity for parties in a lawsuit to obtain testimony from a witness under oath prior to trial.

Discovery - The efforts of a party to a lawsuit to obtain information before trial.

Docket(s) - A list of patent applications or cases that are being managed by a person (e.g., paralegal, patent agent, or patent lawyer)

Document review - Reviewing documents produced by a litigant in a patent infringement case to identify relevant information

Exhibit(s) - Evidence to be presented to the court to support the plaintiff’s or the defendant’s arguments or positions.

Expert witnesses - Technical experts hired by plaintiff’s and defendant’s lawyers to give their technical opinions about whether a patent is being infringed by a defendant’s technology or whether a plaintiff’s patent is invalid in light of documents or technology that predated the plaintiff’s patent.

Fee schedules - The amount of fees that may be billed by outside counsel to a client for different work product

Freedom-to-operate - A legal opinion from a patent attorney that concludes whether a proposed product or process infringes another party’s intellectual property rights.

Infringe/infringement - A violation of a patent owner’s rights of a patent claim.

Interacting - Responding to office actions from a patent office and calling the patent examiner to discuss whether amendments to a patent application’s claim can lead to an issuance of a patent.

Invalidity - A legal opinion from a patent attorney that concludes whether a patent is valid.

In-house - Full time employees of their company/client, rather than working for a law firm.

IP due diligence - Review strength of an issued patent, determine whether an issued patent has issues with invalidity, and determine whether a competitor is infringing an issued patent.

Opinions - Document drafted by an attorney to indicate whether a patent is being infringed or is invalid

Outside counsel - An attorney who works at a law firm.

Opposing counsel - The lawyers representing the other side (i.e., the opponents) in a legal dispute.

Outside counsel guidelines - Requirements set by a client including instructions on how firms should conduct business with or for the client

Patent - a type of intellectual property protection that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time. In exchange for this bundle of rights, the owner/inventor of the invention must publish an enabling disclosure of the invention. An enabling disclosure has to provide enough technical detail to “enable” a person of ordinary skill in that field to recreate the invention. This transaction (receiving patent protection in exchange for public disclosure) gives the inventor a limited time to monetize their exclusive right to their invention while also benefiting the public by adding the new technology to the public domain of information, which can inspire further innovation for the public benefit.

Patent Bar - A test administered by the U.S. patent office to determine whether a person knows the procedural and substantive rules for filing a patent.

Prior Art - A legal concept that states that an invention or other intellectual property already exists and is known. It is defined as anything that is publicly available before the filing date of a patent application.