Apportionment of Damages – Proposal in the Patent Reform Act of 2009 (and also in the Patent Reform Act of 2007) that would substantially reduce awards to patent owners whose patents were infringed by reducing awards to just the incremental value added by the infringed patent
Appraisal of patent – Using a recognized expert or third party to place a value on a patent
Assert patent – Aggressive enforcement a patent by the owner a patent that does not practice the patent
Assertive licensing – Aggressive and pro-active pursuit of compensation from the users of a patent by a patent owner who does not practice the patent
Carrot license – An agreement to pay a fee to use a patented invention, and the agreement (or “license”) is entered into amicably for all parties
Contingency patent assertion – Pursuit of the payment of royalties from the user(s) of a patent by a patent enforcement firm or law firm on behalf of the patent owner when the patent enforcement firm or law firm only earns a fee for its services if it is successful in securing payment of royalties for its client
Contingency patent enforcement – Actions against the user(s) of a patent by a patent enforcement firm or law firm on behalf of the patent owner with the goal of receiving injunctive relief and/or 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 results for its client
Contingency patent infringement litigation – An agreement between the client and patent enforcement firm or law firm that the firm will be compensated out of the proceeds of the case and not by the patent owner. Some firms will advance litigation expenses and filing fees themselves, while others will require the patent owner to pay those fees.
Contingency patent lawsuit – Patent infringement lawsuit in which the patent owner or inventor does not pay the patent enforcement 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. However, some contingency patent litigation firms may require the patent owner to cover litigation expenses.
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
Damages, expert witness on – Third-party with demonstrated expertise who helps calculate the economic damages suffered by the plaintiff in a lawsuit including lost income and other damages.
Enforce patent – Potentially costly process that involves identifying and contacting alleged patent infringers, and using the threat of patent litigation to convince patent infringers to cease their infringement of the patent(s) and/or pay for their use of the infringed patent(s). Since patent infringement is not a crime, 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 income from use of the patent
First to file – Practice of some European patent agencies to award a patent to the person or organization that first applied for the patent, and not necessarily the party that initially conceived 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 organization that first created the patented invention
Infringe patent – To use a patent without permission of the owner of the patent. However, if a single limitation is missing from the accused device or process, there is no infringement of the patent. This is known as the “all elements rule” of patent infringement. The device or process may have other features besides those that are accused of patent infringement, and the additional features do not negate the fact that the product or process infringes the patent.
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 the device or process without permission of the owner of the patent
Intellectual property – Usually a patent, trademark, service mark or copyright, but any concept, idea or invention that a person or entity can claim to have created. Inventions are protected by patents. Brand 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 attorney, licensing specialist or other intellectual property specialist who has the training and experience necessary to determine when infringement of patents, copyrights and/or trademarks has occurred, and how to enforce intellectual property that has been infringed
Intellectual property infringement – Use of (or profiting from the sale of) intellectual property (a patent, trademark or copyright) by a person, business or other entity that does not own the intellectual property and does not have permission of the owner of the intellectual property to use it
Intellectual property strategy – Mix of tactics such as knowing what competitors’ patent portfolios are worth, identifying potential patent infringers and licensees, proposing strategic alliances and much more.
Intellectual property valuation – Determination of the value of one’s intellectual property or patent portfolio in the absence of a market with many buyers, sellers and freely available information on prices. Intellectual property valuation can utilize one of several intellectual property valuation models, including replacement cost, discounted revenue stream, market value and incremental value.
IP – Common abbreviation for “intellectual property”
License patent – Grant permission to another party to use a patented technology while the patent owner retains ownership of the patent and usually collects royalties from the licensee(s). Patent licenses may be exclusive (granting patent rights to only one licensee) or non-exclusive (granting patent rights to multiple licensees). A patent owner may license patents as a result of a lawsuit (this is known as “stick” licensing) or the licensee may take a license willingly (this is known as “carrot” licensing).
Litigate patent on contingency – Agree to represent the plaintiff in a patent infringement lawsuit on the basis that the litigator is paid from the proceeds of any settlement that results from that lawsuit, either an out-of-court settlement or the settlement awarded by the court at the conclusion of a trial. Some law firms will agree to litigate on a contingency basis that only includes their legal fees, and they require the plaintiff to cover all litigation expenses such as filing fees, research and expert witnesses.
Non-practicing entity – Person, business or other organization that owns a patent and has launched a patent infringement lawsuit, but does practice (use the patented invention to produce a product or service) the patent
NPE – Common 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 an invention. To qualify for 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 Patent Office Bar Exam but is not an attorney admitted to the bar of one of the 50 states or the District of Columbia. Patent agents practice in the Patent Office, preparing patentability opinions and filing and prosecuting 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 (or patent lawyers).
Patent appraisal – Determination of the worth of a patent, with regard to related patents and market share. Patent appraisals are often conducted before the patent is assigned or licensed.
Patent assertion – Synonymous with patent enforcement, it is the process of protecting a patent and ensuring that licensing fees are paid for its use.
Patent assertion on a contingency basis (or “contingent basis”) – Enforcement of a patent by a third-party on behalf of the patent owner under which the third party is paid from the proceeds of any settlement it receives for the patent owner. Firms that assert patents on a contingency basis do not charge the inventor or patent owner for their services up-front and pay all expenses involved with the patent assertion process themselves.
Patent assertion on contingency – Same as above
Patent attorney – Lawyer (or 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 render patent validity or infringement opinions, engage in litigation, and/or draft patent license documents.
Patent case – Legal claim or lawsuit that involves the infringement and/or enforcement of a patent
Patent damages - Economic losses suffered by a patent owner that is suing for patent infringement. Patent damages can include past lost profits and future income as well as other harm done to the patent owner.
Patent enforcement – Also known as patent assertion, the process of ensuring that a patent infringer takes a license under the patent and pays the patent owner for use of the patent. Patent enforcement often involves patent litigation.
Patent enforcement on a contingency basis (or “contingent basis”) – Agreement with the patent owner to represent the patent owner in patent enforcement litigation on the basis that the litigator’s fees will be paid from the proceeds of the litigation; Some law firms will agree to have their legal fees paid out of the settlement, but they require the patent owner to pay for litigation expenses such as research and expert witnesses.
Patent enforcement on contingency – Same as above
Patent expert – Patent attorney (or patent lawyer), patent agent or other person with expertise in intellectual property law or patent enforcement, patent valuation and other patent-related areas
Patent expert witness – Person with recognized expertise in patent infringement, patent enforcement and patent valuation that provides testimony in a court of law for either plaintiffs or defendants in patent infringement litigation. Patent expert witnesses are usually experts in a given field of technology.
Patent experts – Patent attorneys (or patent attorneys), patent agents or other persons with expertise in intellectual property law or patent-related areas.
Patent guru – Slang term for a patent expert with broad experience in patents and high-tech industries
Patent infringement – Use of a patent by a persona, business or other entity that does not own it and does not permission of the owner of the patent to use it. Patent infringement occurs when a device or process meets every limitation of at least one of the patent’s claims. A device or process need not infringe every claim in a patent in order to be considered as infringing the patent.
Patent infringement case – Litigation filed against the infringer of a patent by the patent owner
Patent infringement lawsuit – Lawsuit filed against the infringer of a patent by the patent owner
Patent infringement lawsuit on contingency (or “contingent basis”) – A legal claim of patent infringement in which the law firm or patent enforcement firm agrees to be paid from the proceeds of the lawsuit
Patent infringement litigation – Potentially long and costly process of a judge or jury determining whether the accused device or process infringes on a patent and, possibly, whether the patent-in-suit is valid and enforceable in the first place. Patent infringement litigation can be risky for patent holders, and should not be attempted without competent legal counsel or the assistance of a patent enforcement company.
Patent infringement litigation on a contingency basis (or “contingent basis”) – Representation of the plaintiff in a patent infringement lawsuit on the basis that the litigator or patent enforcement firm will be paid its fees from the settlement received as a result of the litigation. Some law firms agree to be paid their legal fees on a contingency basis, but require that the plaintiff cover litigation expenses such as research and expert witnesses.
Patent infringement litigation on contingency (or “contingent basis”) – Same as above.
Patent infringement suit – More common term for “patent infringement lawsuit,” a legal claim filed against the infringer of a patent by the patent owner
Patent lawsuit – Legal action taken on the part of a patent owner against an alleged infringer of the patent owner’s patent
Patent lawyer – Attorney (or lawyer) 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 lawyers render patent validity or infringement opinions, engage in litigation, and/or draft patent license documents.
Patent licensing – Process of a patent owner issuing a grant to another party for the rights to use the patented invention. A license may be royalty-bearing or non-royalty-bearing, and a royalty-bearing license may be either paid-up in a lump sum or be a running royalty, where the royalty is based on the 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 another party for infringement of the patent.
Patent litigation on a contingency basis (or “contingent basis”) – Agreement to represent a patent owner in a patent infringement lawsuit on the basis that the fees for such representation will be paid from the proceeds of any settlement resulting from that lawsuit. Many law firms agree to be paid their legal fees on a contingency basis, but require the plaintiff to cover litigation expenses such as research and expert witnesses.
Patent litigation on contingency – Same as above.
Patent litigator – Patent attorney (or patent lawyer) who represents s plaintiffs or defendants in patent infringement cases. Patent litigators must possess both technical expertise and extensive trial experience.
Patent portfolio management – Supervision of a person’s or an organization’s patents, deciding which patents to keep and maintain, and determining which patents to enforce and which to donate to universities or other organizations. Comprehensive and knowledgeable portfolio management and portfolio valuation is critical for realizing the full value of a company’s patents.
Patent suit – Common terminology for “patent lawsuit,” the more correct term
Patent troll – Less than flattering term used by defendants in patent infringement cases to describe a plaintiff who does not practice a patent, but pursues litigation against those the patent owner believes is infringing on the patent
Patent valuation – Method of determining the worth of a patent portfolio with regard to similar patents and technologies
Patent violation – Synonymous with patent infringement, which occurs when a device or process meets every limitation of at least one of the patent’s claims
Stick license – An agreement to pay a fee to use a patented invention, and the agreement (or “license”) was not entered into amicably, but was the result of a patent infringement lawsuit or the threat of patent infringement litigation
U. S. Patent and Trademark Office - Agency within the U. S. Department of Commerce that issues patents for inventions and registers trademarks for product identification (www.uspto.gov)
Valuation of a patent – Method of determining the worth of a single patent with regard to similar patents and technologies
Valuation of patent – Determination the worth of a patent, and since it depends on several factors, it is most accurate when done by a third-party patent valuation expert
Value patent – Use a recognized expert or third party to place a dollar worth patent
Violate patent – Synonymous with “infringe patent.” “Infringe” is the more proper term.