Ogilvie Law Firm
Patent & IP Glossary
Plain-English definitions of terms used in patent and intellectual property practice.
These definitions are for general informational purposes only and do not constitute legal advice. Terms can have different meanings in different legal contexts. If you have questions about how any of these concepts apply to your situation, use the Contact form to get in touch.
Abstract Idea
A category of subject matter that the USPTO and courts have held is not patentable on its own. Software and AI inventions frequently face rejections arguing the claims are directed to an abstract idea. The applicable law is not clear and is continually changing, but some things can be done while drafting a patent application that are often helpful later if the application is rejected on this ground.
Attorney-Client Privilege
A legal rule protecting confidential communications between a client and their attorney from disclosure in legal proceedings. The communication must be made in confidence for the purpose of seeking or receiving legal advice. Privilege is not necessarily permanent — it can be waived, on purpose or by accident.
Claim Charting (Evidence of Use Charting)
A structured document mapping each element of a patent claim to a specific product, process, or prior art reference, element by element. Used in licensing negotiations, infringement analysis, and validity challenges to show exactly where and how a claim reads on the target.
Claim Construction
The process of interpreting what the words of a patent claim mean — legally and technically. Claim construction drives infringement and validity analysis: a claim can only be infringed or invalidated based on what it actually means, not what the patentee wished it meant.
Contested Proceeding
A formal adversarial proceeding in court or the USPTO. Some examples include patent Inter Partes Review (IPR) and patent Post-Grant Review (PGR), and trademark cancellation or opposition proceedings. Distinct from an ex parte appeal, which involves only the applicant and the USPTO.
Dependent Claim
A patent claim that incorporates all the elements of another claim (its parent) and adds further limitations. A dependent claim is narrower than its parent.
Divided Infringement
A doctrine addressing infringement of a method claim whose steps are performed by more than one party. No single party performs all the steps, so direct infringement is not established in the ordinary way. Courts have developed rules for when one party can be held responsible for steps performed by another — a complex area particularly relevant to AI workflows and multi-party systems.
Duty of Candor
The obligation of patent applicants and their attorneys to disclose to the USPTO all information known to be material to patentability. Violation — including deliberate concealment — can result in a finding of inequitable conduct that renders the patent unenforceable. AI-assisted prior art searches raise specific duty-of-candor questions that applicants should understand before filing.
Eligibility
Whether the subject matter of a patent claim falls within a category the law permits to be patented — processes, machines, manufactures, and compositions of matter. Abstract ideas, laws of nature, and natural phenomena are not eligible. Eligibility is a threshold question distinct from novelty or non-obviousness: a claim can be new and non-obvious and still be ineligible.
Embodiment
A specific implementation or version of an invention described in a patent application. A single application may describe multiple embodiments — different ways of carrying out the invention. Claims may cover all embodiments or only some.
Enablement
The requirement that a patent application describe the invention in enough detail that a person of ordinary skill in the relevant field could make and use it without undue experimentation. An application that claims more than it actually teaches how to make or use can be rejected or invalidated for lack of enablement. See also: Written Description.
Engagement
The formal attorney-client relationship established when a client retains Ogilvie Law Firm for legal services. At OLF, engagements are either full-service or limited-scope. No attorney-client relationship is created by visiting the website, submitting the contact form, or purchasing a DIY service without a signed engagement agreement.
Ex Parte Appeal
An appeal within the USPTO from a final rejection by an examiner, heard by a USPTO Board of administrative law judges. "Ex parte" means only one party — the applicant — is before the Board. The USPTO is not an adverse party in the way it would be in a contested proceeding. An ex parte appeal is part of ordinary prosecution; a contested proceeding is not.
Field-of-Use Variation
A version of an existing invention adapted for a different application or industry.
File History (Prosecution History)
The complete official record of communications between an applicant and the USPTO during patent prosecution — office actions, responses, amendments, arguments, and decisions. The file history is public and is used in claim construction and litigation to determine what an applicant surrendered or argued during prosecution. Statements made to distinguish prior art can limit claim scope even when the claim language itself is broad.
Freedom to Operate
An analysis of whether a product, process, or technology can be used or sold without infringing an existing patent. A freedom-to-operate opinion does not guarantee safety — it reflects the patents identified and the claim construction applied at the time — but it is a prudent step before launching a product in a competitive space.
Full Service
A full-scope engagement in which John Ogilvie handles the matter from start to finish — drafting, filing, prosecuting, responding to office actions, and seeing the matter through to issuance, registration, or resolution. Contrasted with limited-scope representation.
Incorporation by Reference
A technique for including the contents of one document within another by reference rather than by reproducing the text. In patent practice, an application may incorporate an earlier application or external document by reference. USPTO rules govern what can be incorporated and how — improper use can leave a gap in the disclosure that cannot be filled after filing.
Indefiniteness
A basis for rejecting or invalidating a patent claim when the claim language fails to inform a skilled person, with reasonable certainty, of the scope of the invention. Indefinite claims are invalid. Vague functional language and poorly defined terms of degree are common sources of indefiniteness rejections.
Independent Claim
A patent claim that stands on its own, without reference to any other claim. It defines the broadest version of what is claimed. An independent claim must include every element necessary to define the invention; dependent claims then add narrower limitations.
Inequitable Conduct
A defense to patent infringement based on the applicant's failure to comply with the duty of candor during prosecution — typically intentional concealment or misrepresentation of material information. A finding of inequitable conduct renders the entire patent unenforceable, not just the affected claims. It is one of the most serious outcomes in patent litigation.
Infringement
Making, using, selling, offering for sale, or importing a patented invention without authorization during the patent term. Infringement analysis compares the accused product or process to the patent claims as construed. See also: Literal Infringement; Infringement by Equivalents.
Infringement by Equivalents
Infringement that occurs when an accused product or process does not literally meet every element of a patent claim, but performs substantially the same function in substantially the same way to achieve substantially the same result. The doctrine of equivalents prevents a copyist from avoiding infringement through trivial changes that fall just outside the literal claim language.
Limited-Scope Representation
An engagement in which John Ogilvie provides legal services for a defined, bounded task — not full prosecution or representation. Some of OLF's services (AI Patent Guide™, Step Forward™, Check A Patent™, and Safe Inventing with AI™) are limited-scope engagements. The scope of the engagement is defined in the engagement agreement; work outside that scope is not included.
Literal Infringement
Infringement in which an accused product or process meets every element of a patent claim exactly as written. If even one claim element is absent from the accused product or process, there is no literal infringement — though infringement by equivalents may still apply.
Litigation Support
Analytical, drafting, or strategic assistance provided to litigation counsel in connection with patent disputes — claim charts, prior art searches, technical analysis, expert support, or prosecution history review. Litigation support is distinct from serving as counsel of record in the litigation. John Ogilvie provides litigation support; he does not appear as trial counsel or counsel of record.
Means-Plus-Function
A claim format that defines an element by what it does rather than what it is — "means for [performing a function]." Governed by 35 U.S.C. § 112(f), such claims are interpreted to cover the structure described in the specification for performing that function, and equivalents thereof. Means-plus-function claiming can narrow claim scope significantly, and courts apply it to claims even when the word "means" is not used if the claim uses purely functional language without structural support.
Non-Provisional Application
A formal patent application that begins the substantive examination process at the USPTO. A non-provisional application must include claims, a full specification, drawings (if needed), and the required fees. It establishes a filing date and, if issued, results in a patent.
Novelty
The requirement that an invention be new — not previously disclosed in any prior art anywhere in the world before the effective filing date. A single prior art reference that discloses every element of a claim anticipates it and defeats novelty. Novelty is a threshold patentability requirement; an invention that lacks novelty cannot be patented regardless of its other merits.
Obviousness
The requirement that an invention not be an obvious variation of what was already known. Even if no single prior art reference discloses every element of a claim (so novelty is not defeated), the claim can still be rejected if a skilled person would have been motivated to combine known elements to arrive at the invention. Obviousness is typically a more difficult rejection to overcome than anticipation.
Patentability
Whether an invention satisfies all the legal requirements for a patent to issue — eligibility, novelty, non-obviousness, enablement, written description, and definiteness. A patentability analysis considers each requirement. "Patentable" does not mean a patent will issue; it means the invention appears to satisfy the requirements as understood at the time of the analysis.
PCT (Patent Cooperation Treaty)
An international treaty that allows an applicant to file a single "international application" that preserves the right to pursue patent protection in over 150 member countries. A PCT filing does not result in an international patent — patents are still granted by individual national or regional offices — but it defers the cost and complexity of filing in multiple countries while preserving priority.
Prior Art
Any public disclosure of an invention before the effective filing date of a patent application. Prior art includes patents, published applications, journal articles, products on sale, public uses, and — increasingly — AI-generated content and chatbot conversations. A single prior art reference can defeat novelty; a combination of references can establish obviousness.
Priority Claim
A claim in a patent application asserting that the application is entitled to the filing date of an earlier application. A non-provisional application can claim priority to a provisional filed within the prior 12 months. An international PCT application can claim priority to a prior national application. Priority date determines which prior art can be used against a claim.
Prosecution (Patent)
The process of communicating with the USPTO to obtain a patent — filing the application, responding to examiner rejections and objections, amending claims, and ultimately receiving a notice of allowance or final rejection. Patent prosecution is entirely distinct from criminal prosecution. It is an administrative proceeding before the USPTO.
Provisional Application
A lower-cost, lower-formality application that establishes a priority date but does not itself get examined or issue as a patent. A provisional must be followed by a non-provisional application within 12 months or the priority date is lost. Provisionals do not require claims but must adequately support the claims ultimately filed in the non-provisional — a common source of problems when provisionals are drafted without legal guidance.
Specification
The description of the invention in a patent application — everything except the claims. The specification must describe the invention, explain how to make and use it, and provide support for the claims. Claims are interpreted in light of the specification. A claim that lacks support in the specification can be rejected for lack of written description.
Trade Secret
Confidential business information that has economic value because it is not publicly known and is subject to reasonable measures to maintain its secrecy. Trade secret protection lasts as long as the secret is kept — unlike a patent, which expires. The two protections are sometimes in tension: patent filing requires public disclosure; trade secret protection requires secrecy. Using an AI chatbot to explore or describe a trade secret without appropriate safeguards can destroy trade secret protection.
USPTO
The United States Patent and Trademark Office — the federal agency responsible for examining and granting patents and registering trademarks. Patent examination is conducted by USPTO patent examiners; appeals from patent examiner rejections go to the Patent Trial and Appeal Board (PTAB). The USPTO does not provide legal advice and does not represent applicants.
Validity
Whether an issued patent satisfies all legal requirements for patentability. A patent is presumed valid, but that presumption can be overcome. Validity is challenged in litigation, in USPTO contested proceedings (IPR, PGR), or through ex parte reexamination. A claim found invalid is unenforceable, even if infringed.
Work Product
Materials prepared by an attorney — or at an attorney's direction — in anticipation of litigation, for trial, or in connection with any proceeding in which the attorney's client has an interest. In patent practice, work product can arise in prosecution as well as litigation: attorney analyses of patentability, claim strategy, responses to office actions, and assessments of prior art prepared for a client may qualify for work product protection, particularly when a USPTO proceeding or potential dispute is reasonably anticipated. Work product includes documents, notes, analyses, and mental impressions. Work product prepared by AI tools at an attorney's direction, using appropriately structured prompts, may qualify for protection — though the law in this area is still developing.
Work Product Privilege
The legal protection shielding work product from compelled disclosure. Stronger than attorney-client privilege in some respects: it can protect materials shared with certain third parties without waiver, and it survives the end of the attorney-client relationship. Ordinary work product can be overcome by a showing of substantial need; opinion work product — reflecting the attorney's mental impressions and legal conclusions — receives near-absolute protection.
Written Description
The requirement that a patent application demonstrate that the inventor actually possessed the claimed invention at the time of filing — that the specification shows the inventor had conceived and understood the invention in the form claimed. Written description is a distinct requirement from enablement: enablement asks whether a skilled person could make and use the invention from the disclosure; written description asks whether the applicant actually had the invention. A claim can be enabled — a skilled person could figure out how to make it — yet still fail written description if the specification does not show the applicant possessed that specific claim scope. Written description rejections can occur when claims are amended during prosecution to cover subject matter not clearly supported in the original application as filed.