Jargon Buster

Annuity – see "Renewal fee".

Application –a request for a registered right to be granted by the relevant authorising body (e.g. a patent application, trade mark application).

Assignment – a transfer of ownership from one party to another.

CIPA – the Chartered Institute of Patent Attorneys. The professional body governing the training, qualification and practice of patent attorneys in the UK. We strongly recommend that anyone seeking patent advice uses an attorney who is a member of CIPA.

Claims – the most important part of a patent. The claims determine the scope of the patent, i.e. what the patent covers. The claims are thus relevant for infringement (whether or not a particular act falls within the scope of the patent), and validity (whether or not the invention claimed is novel and has an inventive step).

Confidentiality agreement (CDA) – a contract between two or more parties in which they agree to keep secret certain disclosed information. 

Copyright – a free, unregistered right for the protection of aesthetic creations. Limited to direct copying.

Design right (unregistered) – a similar free unregistered right to copyright, but for non-aesthetic/industrial designs.

Divisional application – a patent application which is split off ("divided") from an earlier application (the "parent" application), and which retains the priority and filing dates of the parent application.

Enforcement – protecting intellectual property rights through legal action, for example in the courts.

Entitlement – the question of who has rights of ownership to an intellectual property right.

EPO – the European Patent Office, the organisation based in Munich which administers the European patent system and grants European patents.

European Patent Attorney – a patent attorney who has passed the European Qualifying Examinations and is thus qualified to represent parties in proceedings before the EPO.

Examination – the detailed consideration by an authorising body of whether or not an application for a registered intellectual property right meets the necessary legal criteria to be granted, for example by the IPO, OHIM or EPO. After examination a report issues to the applicant, summarising whether or not the criteria are met, if not then the reasons why not and setting a period for reply.

Infringement – the unauthorised use of the intellectual property rights of another person.

Intellectual property – the umbrella term for property which is a result of intellectual effort and creative thinking, including patents, trade marks, registered designs and copyright.

Intellectual Property Office – the government agency in the United Kingdom which administers intellectual property matters, and grants intellectual property rights. It includes the Patent Office, the Trade Marks Registry, and the Designs Registry.

International patent application – often referred to as a "PCT" application, a patent application which covers many different countries around the world within a single application, and which is later split into separate applications in the different territories of interest. It is to be noted that there is no such thing as a "worldwide patent", all patents ultimately only being effective in their specific country.

Inventive step – one of the criteria that an invention must meet to be patentable. In general terms, to be considered "inventive" an invention must not be a mere obvious or routine development (to a so-called "skilled person") of existing technology in the field.

Inventor – a person who makes an invention.

ITMA – the Institute of Trade Mark Attorneys. The professional body governing the training, qualification and practice of trade mark attorneys in the UK. We strongly recommend that anyone seeking trade mark advice uses an attorney who is a member of ITMA.

Licence – permission granted by the owner of an intellectual property right to a third party to use that right. Licences may be "exclusive" (only the licensee has the right), "sole" (the licensee and the rights owner have the right), or nonexclusive (the rights owner and any number of licensees may have the right).

Madrid Protocol – an international agreement for the filing of trade mark applications, administered by WIPO.

Nondisclosure agreement (NDA) – see "Confidentiality agreement".

Novelty – one of the criteria that an invention must meet to be patentable. In general terms, to be considered "novel" an invention must be different from anything previously disclosed in the public domain, anywhere in the world.

OHIM – the Office for Harmonisation in the Internal Market. The EU body in Alicante, Spain which administers and grants Community Trade Marks and Registered Designs.

Opposition – a legal procedure for revoking (cancelling) an intellectual property right, normally before the authorising body which granted the right. For example, oppositions may be filed against granted European patents at the EPO, and against Community Trade Marks at the OHIM.

Patent – a registered intellectual property right protecting a technical invention, for a period of up to 20 years.

Patent Attorney – in the UK, the legally protected title for a person who has passed the qualifying examinations (set by the Joint Examination Board of CIPA/ITMA) and is on the official Register of Patent Attorneys. A Registered Patent Attorney (RPA) refers to a person on the Register, whilst a Chartered Patent Attorney (CPA) refers to an RPA who is also a Fellow of CIPA.

PCT – the "Patent Cooperation Treaty", an international agreement to which most countries in the world are signatories, governing the filing of patent applications. See "International patent application".

Prior art – for patents, any information in the public domain prior to the priority or filing date of the patent which might be relevant to the patentability of the invention.

Priority – a "priority claim" for a registered intellectual property right (patent, trade mark, design) is a claim in a later application to the filing date of an earlier application, in respect of the same invention (for a patent), mark (for a trade mark), or design (for a registered design). Priority may be claimed for a period of up to one year for a patent, and six months for trade marks and designs.

Registered design – a registered intellectual property right which protects the appearance of an article.

Renewal fee – a fee payable to an official body for the maintenance of a registered intellectual property right. If the fee is not paid then the right will lapse and cease to have legal effect. For patents most renewal fees are paid annually (often referred to as an "annuity"), for trade marks every 10 years, and for designs every 5 years, although these periods vary from country to country. In some territories renewal fees are payable on pending applications (e.g. European patent applications), often referred to as "maintenance fees".

Restoration – a legal procedure through which a lapsed intellectual property right is restored to legal effect. Normally refers to rights which have lapsed through an unintentional failure to pay a renewal fee.

Revocation – a legal procedure before the relevant official body (e.g. intellectual property office or court) to determine whether or not an intellectual property right is valid and should be maintained or cancelled.

Search –usually refers to a search performed by an authorising body (e.g. the IPO, EPO, OHIM) as part of the application procedure for registration of a right. The search is normally for earlier conflicting rights which might prejudice the registration of the right being applied for (e.g. earlier "prior art" or trade marks).

"Skilled person" – the notional person to whom patent specifications are addressed. This person is assumed in law to be knowledgeable about the technical field (having read and understood all the relevant prior art documents) but to have no imagination to make inventions. To be patentable, an invention must not be obvious to a skilled person.

Sufficiency – the requirement that a patent specification discloses an invention with enough clarity and detail for it to be performed by a "skilled person".

Trade mark – a word, sign, or other mark which is used in connection with goods or services to indicate the origin of the goods or services.

Trade Mark Attorney - in the UK, the legally protected title for a person who has passed the qualifying examinations (set by the Joint Examination Board of CIPA/ITMA) and is on the official Register of Trade Mark Attorneys.

Validity – the question of whether or not an intellectual property right meets all the legal criteria for it to be legally enforceable. For example, for a patent to be valid and thus enforceable against infringers the invention being claimed must be patentable, and the patent specification must "sufficiently" disclose the invention and not contain any information which was not disclosed in the application documents as originally filed. Invalidity is often counterclaimed by the defendant in an infringement action, because an invalid intellectual property right cannot be infringed.

WIPO – the World Intellectual Property Organisation, based in Geneva, Switzerland, the body which administers certain global intellectual property matters, including the PCT and Madrid trade mark system.