University of Vermont

Office of Technology Commercialization

Glossary

see also    Patent Terms    |    Contract Terms

General Technology Commercialization Terms

  • Bayh-Dole Act
    A chapter (35 U.S.C. § 200-212) within the U.S. Patent Act created by Congress in 1980 that specifies rights and duties of all organizations that elect to patent inventions made with federal support, including the right of research organizations to take title to inventions conceived or reduced to practice in the performance of a federal grant, contract, or cooperative agreement.
  • Bar Date
    The date on which a statutory bar prevents application for a valid patent. Most typically used in the US to refer to the date one year from any public disclosure of an invention.

  • Confidential Disclosure Agreement (CDA)
    A form of contract that establishes rights and duties of two parties exchanging confidential information
  • Consortium
    An association of two or more individuals, companies, organizations or governments (or any combination of these entities) with the objective of participating in a common activity or pooling their resources for achieving a common goal.
  • Copyright
    A copyright is a limited-term monopoly granted by federal statute to the authors of original artistic and creative works, such as writings, paintings, written or recorded music, etc. The monopoly applies only to the author's original expression, not to the ideas or concepts embodied in the expression.
  • Copyright License
    A contract under which the owner of copyright in a work of authorship has agreed not to sue the licensing party for using one or more of the owner's rights under copyright, such as reproducing, modifying, or publicly performing the work. This license might be exclusive (granted to a single party for a wide scope of commercial uses) or non-exclusive (granted to several parties who might compete to simultaneously deliver the work to the market).

  • Exclusive License
    An agreement that the owner of certain intellectual property will not sue the licensing party for using such intellectual property, and that owner will make such an agreement with only one party.

  • Freeware
    A term usually applied to computer code or software that is made freely available to all through web postings with limited or no copyright restrictions.

  • Intellectual Property
    Intellectual property (IP) is any new and useful process, machine, composition of matter, life form, article of manufacture, software, trademark, copyrighted work, or tangible research property. It includes such things as new or improved devices, circuits, chemical compounds, drugs, genetically engineered biological organisms, antibodies, clones, cell lines, data sets, software, web-based tools, musical processes, or unique and innovative uses of existing inventions. Common types of protection methods for intellectual property include copyrights, trademarks, patents, industrial design rights and trade secrets.
  • Inter-Institutional Agreement (IIA) or Joint Invention Agreement (JIA)
    An agreement between two organizations, usually research organizations such as universities, medical centers, or federal laboratories, concerning the management of intellectual property rights owned by one or more of the parties. These agreements allow one of the parties to aggregate a bundle of rights in order to license those rights to third parties, such as commercial entities. Among other issues, an IIA typically specifies how intellectual property will be managed, by which party, and with what sharing of costs and benefits.
  • Invention Disclosure or Report of Invention
    A documented set of information that provides the technology transfer office with all of the information necessary to properly evaluate, protect and develop a preliminary plan for commercializing an invention.

  • License
    A legal document granting the recipient (licensee) permission to do something with a piece of IP, or agreeing not to bring suit if the licensee does something with that IP. For example, a patent license is an agreement not to bring suit against the licensee for practicing/infringing the patent.

  • Material Transfer Agreement (MTA)
    A form of contract that establishes rights and duties of two parties exchanging proprietary tangible material, such as a biological material, a sample of an optical material, a chemical compound, or device prototype.

  • Non-Disclosure Agreement (NDA)
    A form of contract that establishes rights and duties of two parties exchanging confidential information
  • Non-Exclusive License
    A contract under which a licensor agrees not to bring suit against another party for using the licensor’s technology, while reserving a right to grant similar licenses to additional parties.

  • Open Source
    A term usually applied to computer code or software that is made freely available to all through web postings with limited or no copyright restrictions.
  • Option
    A contract granting one party a right to execute a specific transaction with a second party at some later date. An example would be an option to take a license to a particular patent at any time within six months of the option grant.

  • Patent
    A patent is a limited-term monopoly granted by federal statute to inventors of new, useful and non-obvious inventions, which might include a process, machine, manufactured item, or composition of matter, all of which are defined very broadly by the courts. Patents can also protect any new, useful and non-obvious improvement on an existing invention. Patents are not issued on ideas, or on unmodified discoveries of naturally occurring phenomena.
  • Proprietary Information
    Recently gathered technical information that by its nature, or by the choice of the researchers who create it, is managed as a University asset, for a limited period, before it is published. Examples would be the in situ location of a newly discovered gene or natural function of a previously known gene, the crystal structure or new synthesis path of a known chemical compound, and new high-resolution maps of the local gravitational field strength over a region of the earth's surface.
  • Public Disclosure
    Any publicly available document, oral presentation, offer of sale, or sale that reveals enough information about an invention to permit others in the field to make and use the invention without undue experimentation

  • Research License
    A license granted to give the licensee rights only to practice the invention for research uses only.

  • Spin-Out or University Start-Up
    A start-up company whose technology and products are based primarily from inventions developed at a university or other research organization. May also have received gap funding, incubation, and other such support from the research organization as well.
  • Sponsored Research
    Research that is sponsored by a party other than the one doing the research.  Typically involves the sponsoring party paying all costs of the research and receiving some option to license intellectual property that may result from the work.
  • Sponsored Research Office
    A central administrative unit of a research organization that is typically responsible for securing external resources through grants and contracts and providing financial and contractual stewardship of awards.  May also include the research protections office, for review and approval of the use of animals and human subjects in research at that organization.

  • Tangible Property
    Tangible materials that are used or produced in the course of University research projects. Tangible property includes biological materials and living organisms, chemical substances, prototype instrumentation or devices, and research records and documentation, regardless of form or media used to capture or create those records. Use of the label tangible property usually suggests that the material in question is being managed through access rights rather than through intellectual property rights associated with patents or copyrights.
  • Tangible Property Agreement
    A contract under which the owner of tangible property has agreed not to sue the licensing party for using one or more of the owner's rights in the tangible property, such as reproducing, modifying, or selling the material. This license might be exclusive (granted to a single party for a wide scope of commercial uses) or non-exclusive (granted to several parties who might compete to simultaneously deliver the work to the market).
  • Trademark
    Any symbol, such as a word, number, picture, or design, used by manufacturers or merchants to identify their own goods and distinguish them from goods made or sold by others.
  • Trade Secret
    A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers.  The owner of a trade secret has to demonstrate significant care in controlling access to the trade secret information to receive the statutory protection.
  • Term Sheet
    A document which summarizes the financial terms and conditions under which a research organization and potential licensee are willing to enter into a license agreement.
  • Triage
    An initial analysis made by the technology transfer professional to make decisions about how we will handle new inventions disclosed to the tech transfer office.

  • Uniform Biological Material Transfer Agreement (UBMTA)
    A standardized form of Material Transfer Agreement subscribed to by many U.S. universities. The UBMTA is implemented in two parts: a multi-page Master Agreement that details the terms of the agreement, is uniform for all participating parties, and is executed once per institution; and a brief Implementing Letter that is executed for each instance of an exchange of material between participating parties
  • United State Patent and Trademark Office (USPTO)
    The agency of the U.S. Federal Government responsible for administering the country's patent system.

  • Work for Hire
    A work of authorship made under a written agreement that establishes the party commissioning the work as the author, and hence the initial owner, of the copyright in the work.
  • Work of Authorship
    A creative work in any medium, such as any writing in words or symbols, musical composition, sound recording, sculpture, or painting
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    Patent Terms


    • Abandoned
      To relinquish, either by express abandonment or by inaction, a patent application or issued patent. Abandonment by inaction typically involves failure to take a required action (e.g., filing a incomplete response or not paying a fee) during the statutory period for taking the action. A U.S. patent application that was unavoidably or unintentionally abandoned, can be revived by petition.
    • Absolute Novelty
      A requirement of some patent offices (but not the USPTO) that public disclosure or sale of an invention anywhere in the world cannot occur prior to the filing of a valid patent application
    • Action or Office Action
      An official communication from a patent office, ususally requiring some response by the applicant. Often occurs as a written communication from a patent Examiner that contains requirements and/or documents the reasons behind the Examiner's patentability decisions and usually sets a time for response by the applicant.
    • Allowance
      A decision by a patent office that an applicant is entitled to a patent on an invention. A written notice is sent to the applicant by a patent office that an applicant is entitled to a patent on an invention and in the U.S., an issue fee must be paid within the period for response or the application will become abandoned.
    • Amendment
      A change in any part of a patent application made after it is filed. Also, the communication from the applicant to a patent office directing or requesting that a change be made is also called an amendment. Amendments are typically made to overcome rejections, objections or requirements made by the patent office.
    • Annuity
      An annual fee that must be paid to most patent offices to maintain a patent in force. In the U.S., the fee is called a maintenance fee.
    • Appeal
      A request that a higher authority (in a patent office or a court) review an adverse patentability decision (a rejection of a claim) by an Examiner. In the USPTO, an appeal is first taken to the Board of Patent Appeals and Interferences.
    • Application
      A document describing a claimed invention and requesting that a patent on the claimed invention be granted to an applicant. In the U.S., an application must include a specification and a drawing (if required to understand the invention). A regular U.S. patent application must also include at least one claim and it must be accompanied by an oath and a fee. In addition to a specification and a fee, a provisional U.S. patent application must be accompanied by a cover sheet and a fee
    • Assignee
      A recipient of an ownership right in a patent application, patent or interest in a patent application or patent.
    • Assignment
      A transfer by a party (the assignor) of all or part of its right, title and interest in a patent or patent application to another party (the assignee). In this regard, patents have the attributes of personal property
    • Assignor
      To tranferor of an ownership right in a patent application, patent or interest in a patent application or patent.

    • Background of the Invention
      A section heading in the specification of a U.S. patent application that includes a statement of the technical field of the invention and a description of related art.
    • Base Claim
      A claim from which another claim depends, either directly or indirectly
    • Best Mode
      The way of implementing the inventive concept contemplated by the inventor on the filing date of the patent application.
    • Biological Material
      Material referenced in the disclosure of a patent application that is capable of self-replicating, either direclty or indirectly. Examples include bacteria, fungi including yeasts, algae, protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses, plant tissue cells, lichens and seeds.

    • Cancellation of Claims
      Removal of claims from a patent application, usually by way of an amendment.
    • Citation
      A reference to a document considered relevant to the examination of a patent application. Citations by the Examiner appear on the front page of a U.S. patent. Citations by the applicant may appear in the specification and/or in an Information Disclosure Statement.
    • Claim
      The definition of a monopoly right that an applicant is trying to obtain. The claims define the actual monopoly when the patent is granted.
    • Claimed Invention
      The invention that the inventor(s) claim to have invented and for which he/she/they seek patent protection.
    • Classification
      A subdivision of technology (and, hence, patents) by subject matter.
    • Composition of Matter
      An invention in which the substance and not the form or shape is the inventive subject matter. Under U.S. law, one of the statutory classes of inventions. 35 U.S.C. 101
    • Conception
      The formation in the mind of the inventor of a definite and permanent idea of the invention
    • Continuation Application
      A subsequent application for the same invention disclosed in a prior (regular or nonprovisional) application that is filed before the original application becomes abandoned or patented. Also called a continuing application.
    • Continuation-in-part Application (CIP)
      An application by the same applicant repeating a substantial portion or all of an earlier (regular or nonprovisional) application and adding matter not disclosed in the original application that is filed before the original application becomes abandoned or patented. Also called a CIP.
    • Corresponding Foreign Application
      An international patent application or a regional or national patent application or inventor's certificate filed in a country other than the U.S. that establishes a priority date for a later-filed U.S. application.
    • Court of Appeals for the Federal Circuit (CAFC or Fed.Cir)
      A U.S. court to which an applicant for patent can appeal a decision of the USPTO Board of Patent Appeals and Interferences.

    • Declaration
      A written statement made with the understanding that willfully providing false information is punishable by fines or imprisonment or both. In the U.S., declaration may be used instead of an oath (a sworn statment) to verify that information being submitted to the USPTO is true
    • Dependent Claim
      A claim that refers back to and further limits or restricts the breadth of another claim. The other claim may be an independent claim or another dependent claim
    • Design Patent
      A patent that protects the visual characteristics of, or aspects displayed by, an object
    • Diligence
      The activity required of an inventor and his attorney that must have started just prior to the entry into the field of another "inventor" and continue until the invention is reduced to practice, either by building and testing it or filing an enabling patent application. Diligence towards the building and testing of an invention typically includes such activities as ordering parts, fabrication of a prototype or working model, testing of a prototype under the expected conditions of normal use of the invention, etc. Dilegence towards the filing of a patent application typically involves preparation of an invention disclosure, hiring a patent agent or patent attorney, with the patent agent or attorney taking up preparation of the patent application in chronological order. Diligence must be able to be proven and, in an interference proceeding, must be corraborated by a person who is not an inventor.
    • Disclosure
      Communication to another of how to make and how to use an invention to the extent necessary for the disclosure to meet its purpose. In the U.S, the disclosure of a patent application must be sufficient for a person who is skilled in the art to which the invention pertains to (1) understand what is being claimed (the description requirement) and (2) to enable the person to make and use the invention (the enablement requirement). Also, in the U.S., the best mode of the invention must be disclosed.
    • Divisional Application
      A later application "carved out of" an earlier application for an invention that is disclosed in the earlier application but that is distinct or independent from the invention claimed in the earlier application that is filed before the earlier application becomes abandoned or patented. Also known as a division.
    • Doctrine of Equivalents
      A legal docrine that allows a court to expand the literal language of claims so that one who has made inconsequential changes in the product or process to avoid infringement will nevertheless be found to be infringing.
    • Dominated
      Covered by one or more claims in a patent
    • Dominating Patent
      A patent having a claim broad enough to encompass the subject matter of a claim in a subsequent patent. The patentee of a dominating patent can prevent the patentee of the subsequent patent from practicing his/her "improvement" invention. The patentee of the subsequent patent can prevent the patentee of the dominating patent from practicing the "improved" invention only, but not the orginal invention.
    • Double Patenting
      An improper attempt to obtain more than one patent on the same invention or on an obvious variant of the same invention
    • Drawing
      A figure filed as part of a patent application to describe and explain an invention. At some point in the proceedings, the drawings must comply with the patent office requirements for formal drawings.
    • Duty of Disclosure
      A duty imposed on each individual associated with the filing and prosecution of a U.S. patent application to disclose to the USPTO all information known to that individual to be material to the patentability of the claimed invention.

    • Election
      The choice by the applicant of the invention to be prosecuted and, hence, the claims to be examined.
    • Embodiment
      One (generally of many possible) concrete (physical) form of an invention as described in a patent application or patent.
    • Enablement
      Support within a disclosure of a claimed invention. Enablement occurs when a person skilled in th art to which the invention pertains is taught how to make and how to use an invention.
    • European Patent Convention (EPC)
      An agreement among countries in Europe establishing a system of filing and examination of a single patent application in a central patent office called the European Patent Organization.
    • Examination
      Review of a patent application to determine if a claimed invention is patentable.
    • Examiner
      An official of a patent office charged with determining the patentability of inventions claimed in patent applications.
    • Example
      An example of one embodiment (implementation) of an invention. If the example is an actual ("working") example, i.e., an example of work actually done, it is described in the past tense. If it is a prophetical example, or if simulated or predicted test results are presented, the present tense is used.
    • Exhibit
      A physical embodiment of an invention; a model or specimen.
    • Experimental Use
      A public use of the invention that having the primary purpose is of testing of the invention. Experimental use is allowed in the U.S. and Japan (for a short period) but not in most jurisdictions.
    • Expiration Date
      The date when a patent has run its full term and the invention is no longer protected by it.

    • File History or File Wrapper
      The complete file of a patent application containing all related papers prepared by the patent office and the applicant during the prosecution of the application.
    • Filing Date
      The date when a sufficiently-complete patent application reaches a patent office.
    • Filing Fee
      The fee charged by a patent office for filing a patent application
    • Final Action
      An Office action that contains a final rejection of one or more claims or another final action
    • Final Rejection
      A rejection of a claim that is made final on a second or subsequent examination or consideration. After a rejection of a claim is made final, an applicant must generally either agree with Examiner suggestions or appeal the rejection.
    • First Action
      The first examination on the merits of the claims.
    • First to File
      A system in which the first person to file a patent application on a patentable invention will be awarded a patent. Patent systems in all countries other than the U.S. and the Philippines use this system.
    • First to Invent
      A system in which the first person to invent an invention will be awarded a patent. This system is used in the U.S. and in the Philippines.

    • Generic Claim
      A claim that describes ("reads on") a generic form of an invention. A generic claim generally reads on all the claimed species of an invention.
    • Grant
      The issuance of a patent; a right given by a patent office to an applicant that allows the grantee (patentee) to prevent anyone else from using the technology defined in the claims of a patent during the term of the patent.

    • Improvement Patent
      A patent claiming an invention that is an improvement or modification of an invention claimed in a prior patent. In some instances, it means a patent that cannot be practiced without infringement of a prior patent
    • Independent Claim
      A claim that does not reference (depend from) another claim.
    • Infringe
      To make, use or sell a patented invention in the jurisdiction and during the term of a patent.
    • Infringement
      The practice of a claimed invention without a license to do so.
    • Interference
      A priority contest in the USPTO to determine which of two or more parties was the first to invent commonly-claimed subject matter.
    • Inventor
      is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. is the one with "intellectual domination"[1] over the inventive process, and not merely one who assists in its reduction to practice.
    • Issue Fee
      The fee charged by a patent office for issuing (granting) a patent.

    • Joint Invention
      An invention conceived by more than one person.Joint inventors", or "co-inventors", exist when a patentable invention is the result of inventive work of more than one inventor. Joint inventors exist even where one inventor contributed a majority of the work.

    • Machine
      A device, a product, a physical thing. Under U.S. law, one of the statutory classes of inventions.
    • Maintenance Fee
      The periodic fee charge by the U.S. patent office for maintaining a patent in force
    • Manual of Patent Examining Procedure (MEPEP)
      A document that contains a description of the practices and procedures of the USPTO
    • Manufacture
      One of the classes of patentable subject matter under U.S. law.
    • Method
      One of the classes of patentable inventions (a process) under U.S. law.

    • New Matter
      Matter (information) that is not present in the original specification, claims or drawings that an applicant attempts to add to a patent application.
    • New Use
      One of the classes of patentable subject matter under U.S. law.
    • Nonprovisional Application
      A type of U.S. utility patent application that must contain at least one claim and can issue as a patent.
    • Novelty
      New; not anticipated by (taught by) the prior art.

    • Obviousness
      A characteristic that makes an invention predicable to a person having ordinary skill in the art who has knowledge of all of the prior art. No "inventive step" was involved in conceiving the invention. One of the most difficult terms in patent law to define and understand
    • Opinion
      An opinion offered by a patent agent or a patent attorney as to whether a claimed invention is likely to be deemed patentable by a patent office in view of the prior art made available to him/her. An opinion offered by a patent agent or a patent attorney as to whether the claims of an issued patent would likely be upheld by a court in view of the facts made available to him/her.
    • Opposition
      A procedure available in most countries (but not the U.S.) whereby a third party may request that a patent not issue or that an issued patent be invalidated.
    • Ordinary Skill in the Art
      is a legal fiction found in many patent laws throughout the world. This fictional person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. He or she mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not

    • Paris Convention
      The Paris Convention for the Protection of Industrial Property. The Paris Convention provides that applicants to file in a second convention country within 12 months of the original filing.
    • Patent
      A patent is a limited-term monopoly granted by federal statute to inventors of new, useful and non-obvious inventions, which might include a process, machine, manufactured item, or composition of matter, all of which are defined very broadly by the courts. Patents can also protect any new, useful and non-obvious improvement on an existing invention. Patents are not issued on ideas, or on unmodified discoveries of naturally occurring phenomena.
    • Patentability
      The issue of whether an invention is capable of being patented in a particular jurisdiction. A type of evaluation that addresses whether a particular invention is patentable in a particular jurisdiction.
    • Patent Agent
      A person who is not an attorney who can legally represent an inventor or applicant in dealing with a patent office.
    • Patent Attorney
      A person who is an attorney who can legally represent an inventor or applicant in dealing with a patent office.
    • Patent Cooperative Treaty (PCT)
      A treaty that set up a system for searching and, optionally, examination of patent applications.
    • Patent Family
      All the patent application and patent documents that relate to he same invention regardless of the patent office involved. The patent family concept is used in patent searching, e.g., to find a published patent application (PCT, EPO, etc.) that corresponds to a (secret) U.S. patent application.
    • Patent Number
      The number assinged to an issued patent by a patent office.
    • Patent Search
      A study of the patent literature to determine the state of the art in a particular field; a study of the patent literature in a particular field to determine whether the prior art in the field renders a particular invention anticipated or obvious, and, hence, unpatentable
    • Patent Term
      The period during which a patent is valid.
    • PCT Application
      a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in up to 117 countries throughout the world The Patent Cooperation Treaty
    • Pending
      The status of a patent application that occurs before either an application is abandoned (withdrawn) or a patent issues.
    • Petition
      A request that the Commissioner of Patents and Trademarks review and supervise the work of an employee of the Office.
    • Plant Patent
      A U.S. patent that claims an asexually propagated plant.
    • Preliminary Application
      An amendment to a patent application filed simultaneously with the filing of the patent application or an amendment to a patent application filed before the Examiner mails the first action on the merits of the application.
    • Preliminary Examination
      The examination of an international patent application that is conducted by an International Preliminary Examination Authority
    • Prior Art
      Technology that was available prior to either the date of invention or the filing date of the application, depending on the patent office rule under consideration. Availability can be based on such factors as public use, secret sale, publication, public knowledge, etc. depending on the patent law of the jurisdiction in which the patent is being sought.
    • Priority Date
      The filing date of the first patent application disclosing an invention, which filing date has occurred no more than 12 months before the filing date of a later-filed patent application claiming the priority date of the first application.
    • Process
      A method of making something, a process of operating something or a process of using something. Under U.S. law, one of the statutory classes of inventions.
    • Product
      A machine, an article of manufacture or a composition of matter.
    • Product of Nature
      A thing occurring in nature that is substantially unaltered by Man. An essentially pure culture of a microorganism does not occur in nature and is not, therefore, a product of nature. Neither is a genetically-engineered organism a product of nature.
    • Prosecution
      The process of fact finding and negotiation of patent claim language that occurs during the time that a patent application is pending and under examination at a patent office.
    • Provisional Application
      A type of U.S. utility patent application that is used to establish priority of invention. It need not contain a claim and cannot issue as a patent.
    • Publication
      Any document that is available to the public anywhere in the world.
    • Public Sale
      A sale or offer to sell an invention to a member of the public. A sale need not be public to bar a patent under U.S. law.
    • Public Use
      Utilization of a completed invention in a nonexperimental manner in public, i.e., under conditions permitting a party who is not under an obligation of secrecy to observe the invention.
    • Published Application
      A patent application that has been published by a patent office during its prosection (before issue).

    • Reduction to Practice
      Filing a patent application that explains how to make and how to use an invention in sufficient detail that a person skilled in the art could practice the invention. Building a physical embodiment of an invention and testing it under conditions that would indicate to a person skilled in the art that the invention was useful
    • Reexamination
      Examination of the patentability of an invention claimed in an issued U.S. patent at the request of the USPTO, the patent owner or a third party.
    • Reissue
      The issue of a patent that was issued previously in order to correct an error in the patent.
    • Rejection
      The refusal of a patent Examiner to allow a claim based on specific legal grounds.
    • Renewal Fee
      The periodic fee charge by a patent office for maintaining a patent in force.
    • Restriction
      A requirement by an Examiner that an applicant choose which of multiple claimed, distinct inventions disclosed in a patent application that he/she wishes to be examined.
    • Revocation
      Withdrawing the protections associated with a patent grant.
    • Right of Priority
      The right to priority of invention established by filing the first patent application in an appropriate patent office.

    • Search Report
      A report containing a list of citations of prior art references that, in the opinion of the searcher, are material to the patentability of a claimed invention. A search report often presents an opinion of patentability
    • Serial Number
      An identifying number given to each patent application by the USPTO as of the day it is received or made complete.
    • Small Entity
      An independent inventor, a small business or a non-profit organization. The USPTO reduces the amount of certain fees that it charges small entities by 50 percent.
    • Specification
      The description, drawings and claims of a patent application.
    • Statutory Bar
      A bar to patentability established by law.

    • Teaching Away
      The situation in which a prior art reference suggests that a claimed invention is not possible, e.g., would not work.
    • Term
      The period during which a patent can be inforced.
    • Terminal Disclaimer
      A document filed with the USPTO by an applicant, assignee or patent attorney or agent wherein a terminal portion of the normal term of the patent is given up

    • United State Patent and Trademark Office (USPTO)
      The agency of the U.S. Federal Government responsible for administering the country's patent system.
    • Useful
      Having some practical utility; fit for some desirable practical or commercial purpose. One of the three requirements for patentability under U.S. law.
    • Utility Patent
      A patent that covers a technology.

    • Valid
      Sound and justified; meeting the test of patentability.
    • Validity
      The issue of whether a patent is valid.

    • WIPO
      World Intellectual Property Organization, an agency of the United Nations, that acts as a coordinating body for patent systems and procedures, as well as for trademark and copyright matters.
    • Withdrawal
      The permanent abandonment of a PCT patent application either before or after publication. Priority claims as well as elections of States and the Demand may also be withdrawn.
    • Written Description
      A description (disclosure) of an invention that is written in a patent application. A requirement that a patent application clearly convey what the inventor(s) considered his/her/their invention to be to a person skilled in the art.

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    Contract Terms


    • Affiliate
      Two companies are affiliated when one owns less than a majority of the voting stock of the other, or when both are subsidiaries of a third company. A subsidiary is a company of which more than 50% of the voting shares are owned by another corporation, termed the parent company. A subsidiary is always, by definition, an affiliate, but subsidiary is the preferred term when majority control exists.
    • Annual Minimal Royalty
      A yearly defined amount due in royalties, whether or not the licensee has made enough sales to provide such a royalty.
    • Arbitration
      Dispute resolution mechanism designed to help aggrieved parties recover damages. In arbitration, an impartial person or panel hears all sides of the issues as presented by the parties, evaluates the evidence, and decides how the matter should be resolved. Arbitration is final and binding, and is subject to review by a court only on a very limited basis.
    • Assignment
      The method by which a right or contract is transferred from one person to another.

    • Consideration
      In a contract each side must give some consideration to the other. Often referred to as the quid pro quo - see the Latin terms below. Usually this is the price paid by one side and the goods supplied by the other. But it can be anything of value to the other party, and can be negative - e.g., someone promising not to exercise a right of access over somebody else's land in return for a payment would be a valid contract, even if there was no intention of ever using the right anyway.
    • Cross License
      An agreement according to which two or more parties grant a license to each other for the exploitation of the subject-matter claimed in one or more of the patents each owns.[1] Very often, the patents that each party owns covers different essential aspects of a given commercial product. Thus by cross licensing, each party maintains their freedom to bring the commercial product to market.

    • Diligence
      Typically in a university license of patent rights diligence consists of a series of milestones and deadlines for the process of commercializing a technology.
    • Dispute Resolution
      Alternatives to the slow and costly process of litigation, including arbitration, conciliation, mediation, and summary possession proceedings. Some of these processes, such as mediation and arbitration, are being used by court systems to resolve disputes before trial.

    • Effective Date
      Date on which an agreement takes effect.
    • Equity
      Ownership interest in a corporation in the form of common stock or preferred stock. It also refers to total assets minus total liabilities, in which case it is also referred to as shareholder's equity or net worth or book value.
    • Exclusive License
      An agreement that the owner of certain intellectual property will not sue the licensing party for using such intellectual property, and that owner will make such an agreement with only one party.

    • Fees
      In university technology licenses, one-time or multiple compensation amounts in return for the grant of a rights to a patent or other technology.
    • Field of Use
      The technical field or market within which an invention is licensed. The licensee mahy not sell the invention within other markets.
    • Force Majeure
      Exempts the contracting parties from fulfilling their contractual obligations for causes that could not be anticipated and/or are beyond their control. These causes usually include act of God, act of man, act of parliament, and other impersonal events or occurrences.

    • Governing Law
      Sets out the country or state whose laws will govern the contract. Often linked to jurisdiction, which sets where any legal action must take place.

    • Indemnification
      Undertaking given to compensate for (or to provide protection against) injury, loss, incurred penalties, or from a contingent liability.

    • Jurisdiction
      Sets out where any legal action regarding the agreement must take place.


    • Liability
      Responsibility for the consequences of one's acts or omissions, enforceable by civil remedy (damages) or criminal punishment.
    • License Grant
      The rights in any patent or other intellectual property provided to the licensee under the license.
    • Licensed Process
      Shall mean any process that, absent the license granted hereunder, would infringe one or more claims of a patent or which uses a licensed product.
    • Licensed Product
      Shall mean any product that, in whole or in part and absent the license granted hereunder, would infringe one or more claims of a patent; or is manufactured by using a licensed process or that, when used, practices a licensed process.

    • Marking
      The requirement to “mark” in some way patented products in order to receive infringement damages.
    • Mediation
      A form of alternative dispute resolution (ADR) or "appropriate dispute resolution", aims to assist two (or more) disputants in reaching an agreement. The parties themselves determine the conditions of any settlements reached— rather than accepting something imposed by a third party.

    • Notice
      Notice (usually to a defendant in a civil proceeding) delivered in such a way as to give legally sufficient assurance that actual knowledge of the matter has been conveyed to the recipient.

    • Option
      A contract between a potential licensee and a licensor that gives the potential licensee the right—but not the obligation—to licensee a particular asset (the underlying asset) at a later day under either agreed upon terms or to be negotiated terms.

    • Patent Costs
      Costs associated with the prosecution, maintenance, and enforcement of any licensed patent rights.
    • Patent Rights
      The specific intellectual property rights licensed under the agreement. Can include just one patent or the rights to future patents based off of active applications and any foreign counterparts, CIPs, etc.

    • Reporting Period
      The defined period that will be reported on.
    • Retained Rights
      In an exclusive license, any patent or other IP rights retained for use by parties other than the licensee, including the licensor or third parties.
    • Royalty Report
      A report providing background and supporting information for royalties due under a license agreement. Will often include a report of products sold and the calculations of royalties due.
    • Running Royalties
      A proportion of the income from the sale of a product paid to its creator, for example, an inventor, author, or composer.

    • Severability
      A clause in a contract that allows that any portion of the contract deemed to be unenforcable does not affect the validity of the rest of the contract.
    • Sublicensee
      A recipient of license rights from the licensee.
    • Sublicense Income
      Income received by the licensee from sublicensees of any patent or other intellectual property rights.

    • Term
      The length of time the agreement is in force.
    • Termination
      Terms under which an agreement can be ended, including for breach, bankruptcy, or upon notice.
    • Territory
      The region or regions that the grant of rights is available in.

    • Use of Names
      Term giving no or some rights to use and publicize the name or trademarks of a party to the agreement.

    • Warranties
      promises made in a contract, but which are less than a condition. Failure of a warranty results in liability to pay damages (see the financial terms below) but will not be a breach of contract unlike failure of a condition, which does breach the contract.

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