If any system or field of study feels slightly difficult, it often boils down to ‘terminology.’ Concepts that aren’t inherently complex can seem daunting simply because the words used are unfamiliar.
Before diving in, let’s briefly cover some fundamental patent terms you’ll need to know for us to be on the same page.
Patent: Refers to the exclusive right to a technical idea. Separately, exclusive rights for the shape of a product are design rights, exclusive rights for a brand are trademark rights, and exclusive rights for creative works are copyrights.
Specification (application body): A document describing the technology seeking patent protection in detail. It is text that transforms an intangible technical idea into a tangible form using language.
Claim(s): Refers to the core constituent parts of the invention seeking protection via patent rights. The specification typically outlines existing problems and then details the conceived invention to solve them. The claims clearly reiterate the specific configuration or method for which patent rights are sought, defining the scope of exclusive rights being established.
Application: Abbreviation for registration application. Can be understood simply as ‘filing’ or ‘request’.
Applicant: The person or entity filing the application.
Inventor: The person who created the invention. Patents, being a form of intellectual property right, are based on the principle that the ‘right to obtain a patent’ naturally arises for the inventor upon completion of the invention.
However, the inventor and the applicant may not be the same. While the inventor holds the ‘right to obtain a patent,’ they can assign this right to others.
For example, a corporation cannot be an inventor (as it cannot invent), but it can become an applicant by acquiring the right to obtain a patent from the inventor(s).
Examiner: A patent office official who reviews the filed specification to determine whether to grant patent rights.
Notification of Reasons for Refusal (provisional refusal): A notice sent by the examiner when, after reviewing the filed patent specification, they identify reasons to reject the patent registration. It indicates that rejection is pending due to identified reasons and provides an opportunity to submit arguments against them.
Argument: A rebuttal document that can be submitted in response to the examiner’s notification of reasons for refusal.
Amendment: A document that modifies the specification to address the points raised in the examiner’s reasons for refusal.
Priority Claim: When filing for registration overseas after a domestic application for the same invention, this is a request to have the patentability requirements assessed based on the domestic filing date, effectively backdating the overseas filing date.
Priority claims are recognized through international treaties. Since the treaty was signed in Paris, it’s also referred to as a ‘priority claim under the Paris Convention’. However, as priority claims in patents are exclusively under the Paris Convention, explicitly mentioning the treaty is often unnecessary.
There are specific requirements to meet for the filing date assessment to be backdated via a priority claim. Furthermore, for patents, the overseas application claiming priority must be filed within 1 year from the domestic filing date (6 months for designs). Missing the statutory deadline, even by a single day, invalidates the claim.
Accelerated Examination: A system allowing for earlier examination than other applications. It is requested when rapid registration is needed. This expedites the examination process but does not backdate the filing date. If an earlier-filed identical invention exists, registration will be denied even with accelerated examination.
Annuity: Maintenance fee for the right. Patent rights and design rights require annual payment of annuities after registration to remain in force.
