Glossary of Patent-Related Terms
Appraisal of patent – Determination of the value of a patent using a recognized expert or third party
Assert patent – Enforce a patent (demand payment for use of the patent) when the owner of patent does not practice the patent
Assertive licensing – Aggressive, pro-active demand for compensation from the user(s) of a patent by a patent owner that does not practice the patent
Carrot license – An agreement, entered into amicably, to pay a fee to the owner of a patent for the use of the patented invention. The opposite of a “carrot license” is a “stick license.”
Contingency patent assertion – Pursuit of compensation from the user(s) of a patent by a patent enforcement firm or law firm on behalf of the patent owner under which the patent enforcement firm or law firm earns a fee for its services only if it is successful in securing an award or settlement for the patent owner
Contingency patent enforcement – Legal action against the alleged infringer of a patent by a patent enforcement firm or law firm on behalf of the patent owner with the goal of receiving compensation for the use of the patent, and the patent enforcement firm or law firm only earns a fee for its services if it is successful in securing compensation for its client
Contingency patent infringement litigation – Arrangement between a patent owner and a patent enforcement firm or law firm under which the firm will be compensated out of the proceeds resulting from a patent infringement lawsuit filed on behalf of the patent owner
Contingency patent lawsuit – Patent infringement lawsuit in which the patent owner or inventor does not pay the patent enforcement firm or law firm any money upfront for their services because the firm is compensated when the case is settled and is paid out of the proceeds of the settlement
Damages – What is paid to the plaintiff as the settlement of a lawsuit to compensate the plaintiff for the harm (or damage) done to him, her or it by the defendant in the lawsuit
Damages, expert witness on – Third-party with demonstrated expertise who helps calculate the economic damages suffered by the plaintiff in a lawsuit
Enforce patent – To contacting alleged patent infringers and, using the threat of patent infringement litigation, convince the patent infringers to cease their infringement of the patent(s) and/or pay for use of the infringed patent(s). Patent infringement is not a crime, so patent enforcement must be pursued by the patent owner through civil litigation.
Expert witness on damages – Someone with expertise in the field of, for example, patent technology who can help determine the economic damages arising from patent infringement, such as lost profits from the sales of products that use the infringed patent
First-to-File – Practice of some European patent agencies to award a patent to the person or entity that first applied for the patent, not necessarily the actual discoverer of the patented invention
First-to-Invent – Current practice of the U.S. Patent and Trademark Office to award a patent to the person or entity that first discovered the patented invention
Incubator – Business that invests in or owns start-up businesses, proving them with capital and management expertise while they grow their sales and staffs
Infringe patent – To use a patented invention without permission of the owner of the patent. However, under what is known as the “All Elements Rule,” if a single limitation is missing from the accused device or process, there is no infringement.
Infringed intellectual property – In addition to patents, these can be copyrights, trademarks, service marks and/or trade secrets that are used without permission of the owner
Infringed patent – Patent in which all of its limitations are used in a device or process without permission of the patent owner
Intellectual property – Usually a patent, trademark, service mark or copyright, but any concept, idea or invention that a person or entity claims to have created or discovered. Inventions are protected by patents, while brands and product names are protected by trademarks. Advertising slogans, as well as product and service descriptions, are protected by service marks. Written documents (including software) are protected by copyrights.
Intellectual property expert – Patent and trademark attorney, licensing specialist or other intellectual property authority who has sufficient credentials to determine when infringement of a patent, copyright and/or trademark has occurred
Intellectual property infringement – Use of or profiting from the sale of a patent, trademark or copyright by a person, business or other entity that does not own the intellectual property and does not have consent of the owner of the intellectual property to use it
Intellectual property strategy – Combination of tactics related to the ownership and management of a business or other organization’s portfolio of patents, trademarks, copyrights and trade secrets
Intellectual property valuation – Determination of the worth of one’s intellectual property (usually a patent portfolio) in a market without multiple buyers and sellers that would enable the value to be set by the marketplace. Intellectual property valuation can be based on replacement cost, discounted revenue stream, market value and incremental value.
IP – Commonly used abbreviation for “intellectual property”
License patent – Grant permission, in exchange for a lump sum payment or payment of royalties, to another party to use a patented technology while the patent owner retains ownership of the patent. A patent license may be exclusive (issued to one entity) or non-exclusive (issued to multiple entities).
Litigate patent on contingency – Agree to represent a plaintiff in a patent infringement lawsuit on the basis that the litigator will be paid from any awards or settlements the lawsuit produces.
Market participant – Person, business or other organization that owns a patent, is the plaintiff in a patent infringement lawsuit, and practices (uses the patented invention to produce a product or service) the patent-at-suit. The patent owner that does not practice its patent is known as a “non-practicing entity” or “NPE.”
Non-practicing entity – Person, business or other organization that owns a patent, is the plaintiff in a patent infringement lawsuit, and does practice (use the patented invention to produce a product or service) the patent. The patent owner that does practice its patent is known as a “market participant.”
NPE – Commonly used abbreviation for “Non-Practicing Entity” (see above)
Patent – Right of a person, business or other entity to prevent others from making, using, offering for sale, or importing a product or service that uses the patented invention. To qualify to receive a patent, an invention must be novel (new), non-obvious to a person of “ordinary skill in the art” (field of technology) and useful.
Patent agent – Person who has passed the US Patent Office Bar Exam and is registered with the Patent Office to prepare, submit and prosecute patent applications. A patent agent may not render patent validity or infringement opinions, engage in litigation, or draft license documents; those activities may only be performed by patent attorneys.
Patent appraisal – Determination of the value of a patent. Patent appraisals are often conducted before a patent is assigned or licensed.
Patent assertion – Synonymous with patent enforcement, protecting a patent and ensuring that licensing fees are paid for its use.
Patent assertion on contingency basis (or “contingent basis”) – Enforcement of a patent by a patent enforcement firm or law firm under which the patent enforcement firm or law firm is out of any award or settlement it generates for the patent owner. Firms that assert patents on a contingency basis do not charge for their services up-front, and they often also pay all expenses involved with the patent assertion process.
Patent assertion on contingency – Same as above
Patent attorney – Attorney who has passed the Patent Office Bar Exam and is also admitted to the bar of one of the 50 states or the District of Columbia. Patent attorneys prosecute patent applications, and also render patent validity or infringement opinions, engage in litigation, and/or draft patent licenses.
Patent case – Legal claim or lawsuit that involves patent enforcement or patent infringement
Patent damages - Economic losses suffered by a patent owner as the result of patent infringement. Patent damages can include lost profits, future income and royalties.
Patent enforcement – Also known as “patent assertion,” ensuring that a patent infringer takes a license for the patent and pays the patent owner for use of the patent. Patent enforcement often involves patent litigation or the threat of litigation.
Patent enforcement on contingency basis (or “contingent basis”) – Agreement with a patent owner to represent the patent owner in a patent infringement lawsuit on the basis that the litigator’s fees will be paid from any award or settlement produced by the lawsuit.
Patent enforcement on contingency – Same as above
Patent expert – Patent attorney, patent agent, licensing executive or other person with expertise in intellectual property law or patent enforcement, patent valuation, patent licensing and/or other patent-related areas
Patent expert witness – Person with recognized expertise in patent enforcement, patent infringement and patent valuation who provides testimony in a court of law for either the plaintiff or defendant in a patent infringement lawsuit. Patent expert witnesses are usually experts in a specific technology or hard science.
Patent infringement – Use of a patent by a person, business or other entity that does not own the patent and does not permission of the patent owner use the patent. Patent infringement occurs when a device or process meets every limitation of at least one of the patent’s claims.
Patent infringement case – Lawsuit filed against an alleged infringer of a patent by the patent owner
Patent infringement lawsuit – Litigation filed against the alleged infringer of a patent by the patent owner
Patent infringement lawsuit on contingency (or “contingent basis”) – Claim of patent infringement in which the law firm or patent enforcement firm agrees to be paid from the proceeds of the lawsuit. Should the lawsuit fail to produce an award or settlement, the law firm or patent enforcement firm would receive nothing.
Patent infringement litigation – Potentially long and costly legal process of determining whether an accused device or process infringes a patent and if the patent-in-suit is valid and enforceable. Patent infringement litigation can be risky and expensive, so it should not be attempted without legal counsel or assistance from a patent enforcement firm.
Patent infringement litigation on contingency basis (or “contingent basis”) – Representation of a plaintiff in a patent infringement lawsuit on the basis that the law firm or patent enforcement firm will be paid from any award or settlement received as a result of the lawsuit.
Patent infringement litigation on contingency (or “contingent basis”) – Same as above.
Patent infringement suit – Common, lay term for “patent infringement lawsuit,” a legal claim against the alleged infringer of a patent by the patent owner
Patent lawsuit – Term used in place of the more proper “patent infringement lawsuit”
Patent lawyer – Less formal term for “patent attorney”
Patent licensing – Issuing permission to a third party to use a patented invention. A license may be royalty-bearing or non-royalty-bearing, and a royalty-bearing license may be paid in a single payment, or it may be paid over time based on sales of the licensed goods or services.
Patent litigation - Another term for a patent lawsuit or patent infringement lawsuit in which a patent owner sues for infringement of his, her or its patent
Patent litigation on contingency basis (or “contingent basis”) – Agreement to represent a patent owner in a patent infringement lawsuit with the understanding that the litigator or patent enforcement firm will be paid from the proceeds of any award or settlement that results from the lawsuit.
Patent litigation on contingency – Same as above.
Patent litigator – Patent attorney (or patent lawyer) who represents plaintiffs or defendants in patent infringement litigation. Patent litigators must possess both technical expertise and trial experience.
Patent portfolio – Collection of patents owned by the same person, business, university or other entity
Patent portfolio management – Supervision of a person’s or organization’s patents, deciding which patents to maintain and which to abandon, determining which patents should be enforced, and which should be donated to universities or other organizations.
Patent suit – Lay term for “patent lawsuit” or, more properly, “patent infringement lawsuit”
Patent troll – Unflattering term used by defendants in patent infringement lawsuits to describe the plaintiff who does not practice his, her or its patent. The legal term for a patent owner who does not practice the patent is “non-practicing entity” or “NPE.”
Patent valuation – Determining the worth of an individual patent or, more commonly, a portfolio with regard to similar patents and technologies
Patent violation – Lay term for “patent infringement.” This occurs when a device or process meets every limitation of at least one of the patent’s claims. “Patent infringement” is the more proper term.
Stick license – An agreement to pay a fee to use a patented invention when the agreement (or “license”) was not entered into amicably, but was probably the result of patent infringement litigation or the threat of a patent infringement lawsuit. The opposite of a “stick license” is a “carrot license.”
US Patent and Trademark Office - Agency within the United States Department of Commerce that issues patents for inventions and registers trademarks and service marks for product identification. The agency’s website is www.uspto.gov.
Valuation of patent – Determining the worth of a single patent with regard to similar patents and technologies
Value patent – Use a recognized expert or third party to place a dollar worth patent
Venture capital – Money invested in start-up or early stage businesses. Venture capital is not a loan, but actual capital invested in the business in exchange for equity.
Venture capitalist – Person or business that invests in start-up or early stage businesses. Venture capitalist typically make a profit on their investment when the start-up or early stage business makes an initial public offering (or “IPO”), issues new stock or sells current stock in the company, and the venture capitalist can sell its equity in the business at a substantial profit.
Violate patent – Lay term for “infringe patent.” “Infringe” is the more proper term.