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What is included in the claim; as in the scope of a claim.


To reach a decision regarding the patentability of a new invention, it is initially necessary to compare the invention to other inventions. One way to make this comparison is to search “prior art” patents.

Search Copy:

A copy of an international application filed under the Patent Cooperation Treaty maintained by the International Searching Authority.

Serial Number:

A number assigned to a patent application when it is filed. A serial number is usually used together with a two digit series code to distinguish between applications filed at different times.

Skill In The Art:

Where no single prior art patent discloses the functional subject matter or appearance of an invention, a government patent examiner will frequently argue that someone with ordinary skill in the art is already in possession of the cumulative information and knowledge shown in two or more patents, and that person will then know how to combine the knowledge of these several prior art patents so as to make the subject invention “obvious” and therefore unpatentable. In resolving the obviousness issue, the law requires that the invention was non-obvious to an individual with ordinary “skill in the art”at the time the invention was made. Thus, the law creates a hypothetical “skilled mechanic” with the knowledge of the entire pertinent prior art in the world. The question, then, is whether the prior art references, considered individually or collectively, contain sufficient teaching, suggestion or motivation, such that the inventive subject matter would have been obvious to a person “skilled in the art” at the time the invention was made.

Small Entity:

For purposes of small entity determination per MPEP 509.02 – means an independent inventor, a small business concern, or a nonprofit organization eligible for reduced patent fees.


A written description of the invention or discovery and of the manner and process of making and using the same. The specification is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.


The official condition of a patent or application. The status of an application is defined by action and time. The status of a patent is often referred to as new, rejected, amended, Allowed or in Issue, Abandoned, Incomplete, Abandonment for Failure to Pay Issue Fee, lapsed, pending, protected, expired, re-issued and the like. “Status Letters” or inquiries as to the status of applications by persons entitled to the information, can be directed to the USPTO.

Statutory Bar:

Any public disclosure, publication or offer for sale of an invention more than one year before a patent application is filed will serve as a Statutory Bar to obtaining a patent. Any sale of the invention or publication or disclosure of the invention before a United States patent application is filed will destroy the possibility of obtaining foreign patent protection in most foreign countries.

Statutory Disclaimer:

Under 35 USC § 253 (paragraph 1) and 37 CFR 1.321(a), the owner (in part or in entirety) of a patent may relinquish all rights to a complete claim or claims of the owner’s patent.

Statutory Invention Registration:

A (SIR) statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. It is meant for the situation where a person occasionally invents something solely for personal use (not for production or sale) and does not want to go through the effort and expense of obtaining a patent on the invention. At the same time, the inventor wants to prevent someone else from later obtaining a patent on a like invention. In that situation, the inventor can register a statutory invention and have it published. Once published, it cannot be claimed by another person. A published statutory invention registration contains the specification and drawings of a regularly filed nonprovisional application for a patent without examination if the applicant – (1) meets the requirements of 35 USC 112; (2) has complied with the requirements for printing, as set forth in regulations of the Commissioner; (3) waives the right to receive a patent on the invention within such period as may be prescribed by the Commissioner; and (4) pays application, publication, and other processing fees established by the Commissioner. A request for a statutory invention registration (SIR) may be filed at the time of filing a nonprovisional application for patent, or may be filed later during pendency of the nonprovisional application.

Statutory Period:

If an applicant of a patent application fails to reply within the time period provided, the application will become abandoned unless an Office action indicates otherwise. The maximum statutory period for reply to an Office action is 6 months (35 USC 133). Shortened periods are currently used in practically all cases usually 3 months.

Statutory Subject Matter:

The law (35 USC 101) provides that only an invention comprised of statutorily defined subject can be patented. A utility patent can be issued to any person who invents a new, useful, and non-obvious (1) process, (2) machine, (3) manufactured article, (4) composition of matter, or (5) any new and useful improvement to any of these types of inventions.

Submarine Patent:

The term submarine patent is used to describe a patent that is issued after a long delay in the USPTO. At the time it issues or surfaces is a submarine it takes the industry by surprise. This was possible prior to the 18 month publication rule. If an unpublished patent application matures into a patent after a long delay under the old rules it would have extended the term of the patent. But today a patent term is dictated by the filing date in the term extension rules have been implemented to help avoid the issuance of a submarine patent.

Substitute Patent Application:

An application which is in essence a duplicate of a prior (earlier filed) application by the same applicant abandoned before the filing of the substitute (later filed) application; a substitute application does not obtain the benefit of the filing date of the prior application.