IP Glossary

Key terms and concepts for intellectual property. Learn more on Academy by PatSnap.


Definitions


Abandonment

A patent may be abandoned if fees are not paid, or during the application process for failure to reply to a request or notice from the patent office, within a set time period or if the issue fee has not been paid


Abstract

An introductory paragraph in a patent that provides a concise summary of the invention


AIA

America Invents Act. This act, which came fully into effect in 2013, shifted the rights to a patent in the United States from a first-to-invent (FTI) to a first-inventor-to-file (FITF) system for patent applications filed on or after 16th March 2013, bringing it more in line with other jurisdictions. 

As notes from the Congressional Record from the debate on the America Invents Act explain: "This bill would finalize the shift towards a European-style patent system through changing from a 'first-to-invent' to 'first-to-file' system; establishing a new set of 'prior use' rights; and adopting a third European-style 'post-grant' challenge."


Application date

The patent application date is the date upon which the patent office receives a patent application


Assignee

The assignee is the organization or entity that holds the rights conferred by a patent

Authority

A governmental, intergovernmental, or other government-authorized body that is responsible for receiving, examining, issuing, extending or maintaining patents

Backward citation

A citation of an earlier patent in a patent document


C&D Letter

Cease and desist letter.

CIP Application

Continuation-In-Part application. This allows an applicant to add subject matter that was not disclosed in the original patent application to a pending filing. However, unlike the continuation application, the CIP application will receive a new priority date.


CJEU

Court of Justice of the European Union


Claims

The claims explain the extent, or the scope, of the protection conferred by a patent, or the protection sought in a patent application

Continuation Application

This enables inventors to add new claims to a patent application, provided the original application is pending or has not been abandoned, while maintaining the original priority date


Copyleft

A term used often in association with open source software, it is an agreement that allows a piece of work to be used, modified or redistributed provided that the same conditions apply to the newly created work.


Copyright

Rights granted to the creator of a concept or idea within literary, musical or other artistic works

CPC

Co-operative classification - a classification system for patents, jointly developed by the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO).  The CPC is a more specific and detailed version of the International Patent Classification (IPC) system. See our video for more information on using CPC in search queries.


Creative Commons

The Creative Commons organization helps to facilitate the legal public distribution of creative or knowledge-based pieces of work. It offers an alternative to copyright, under which all rights are reserved, with licenses that allow creators to make their work available to the public for limited kinds of uses while preserving their copyright. Find out more

CWS

Committee on WIPO Standards.

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Defensive patent

Refers to the intention of the patent being filed. In this case, the intention of a defensive patent is solely to provide protection against litigation, rather than for commercialization. They are used to prevent competitors patenting the same technology and then using those patents against the operating organization. 


Defensive publication

An IP strategy that involves publicly publishing details of an innovation. Advocated by the USPTO, this strategy means that others cannot obtain a patent on the disclosed invention as it is now considered prior art.


Dependent claim

Patents consist of independent and dependent claims. Independent claims should define all the essential components of an invention as a standalone or a series of standalone statements that describe the invention in its broadest scope. Dependent claims, on the other hand, cannot standalone. They relate back to a specific referenced independent or another dependent claim and will limit the scope of that original claim. Dependent claims are used to provide additional protection. For example, in the event that an independent claim is invalidated, then the independent claim in association with a dependent claim may not be.

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Description

A full explanation of the invention. It will often include background information on the invention, how it is made, and its intended uses.

Design patent

This covers the configuration or shape of an article, or ‘ornamental features.’ Solid lines in the drawings are the claimed features of the shape. Broken lines in the drawings show what the rest of the object might look like.

Divisional application

A divisional patent application (or divisional application) refers to a patent application that contains material from a previous (or parent) patent application. It can occur when the applicant is required to split an application into two or more parts, as the original application is claiming more than one invention.


DRM

Digital Rights Management - This is the application of technological control that restricts access to digitally produced content, in order, for example, to protect copyright.


EPC

European Patent Convention. Signed on 5 October 1973, this is the treaty that founded the uniform legal framework for the granting of European patents. This treaty established the European Patent Organization (EPOrg), which itself comprises two bodies, namely the European Patent Office (EPO) and a supervisory body, the Administrative Council.

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EPO

European Patent Office Find out more

EPOrg

European Patent Organisation. An intergovernmental organisation comprising 38 member states. It was set up on 7 October 1977 as a result of the 1973 European Patent Convention (EPC) signed in Munich. It consists of two bodies, the European Patent Office (EPO) and the Administrative Council.

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EPUE

European patent with unitary effect. More commonly referred to as Unitary Patent.


ETRIA

The European TRIZ Association. Its mission is "to function as a connecting link between industrial companies, institutions, educational organizations and individuals concerned with conceptual questions pertaining to organization and processing of innovation knowledge." One of their main aims is the "promotion of research and development through the organization of innovation knowledge, by integrating conceptual approaches to classification developed by artificial intelligence (AI) and knowledge management communities."

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EUIPO

The European Intellectual Property Office, formerly known as OHIM (the Office for the Harmonization of the Internal Market). It is responsible for managing EU-wide interoperability between procedures, systems, services and tools for EU trademark and design rights. Find out more

F-term

File Forming Term - In Japanese patent law, F-term is a system for classifying Japanese patent documents according to the technical features of the inventions described in them. It is not a replacement for the International Patent Classification (IPC) or other patent classifications, but complements other systems by providing a means for searching documents from different viewpoints.

FDI

Foreign Direct Investment. Describes when a company or individual from one country invests in a business interest in another. Numerous studies have shown that there is a strong relationship between foreign direct investment data and patent data. One WIPO report, for example, states: "Countries with high level of inward foreign-direct investment receive a large number of non-resident patent filings."


FI

File Index - For use in Japan, the File Index is a subdivision of the IPC, with around 190,000 extra items. It can be required, for example, to classify inventions that pertain very specifically to Japan.

File wrapper

In addition to the patent document itself, there are numerous additional documents that are created during the application process that pertain to the patent, such as documents prepared by the examiner, summaries of interviews or other correspondence. The file wrapper is an electronic folder that contains these supporting documents that may, for example, be called on in the event of any legal dispute.

Filing date

The date when a patent application is first accepted at a patent office


FLOSS

Free, libre, open source software - This relates to software that can be freely copied and used, modified and redistributed. The source code can also be freely modified in order to improve software as part of a collective, pooled community effort.

Forward citation

When a patent is referenced by a subsequent application document


FRAND

Reasonable and non-discriminatory terms (RAND), also known as fair, reasonable, and non-discriminatory terms (FRAND). In patent terms, it relates to the granting or licensing of rights to a specifc technology if it is fundamental to a standard within that technology area (such as, for example, GSM or GPRS). The owner of the protected technology is required to provide access to the intellectual property relating to that technology on a fair and reasonable basis, if a standards organization deems it essential to a specific standard.

Front End Innovation

Refers to the starting point of an innovation project where concepts are explored and developed, but before the formal and structured new product development (NPD) begins. Most often, front end refers to activities prior to gate 3 of the Stage-Gate (TM) process.


FTO

As the WIPO describes: “A Freedom to Operate (FTO) analysis invariably begins by searching patent literature for issued or pending patents, and obtaining a legal opinion as to whether a product, process or service may be considered to infringe any patent(s) owned by others.” It may also be called a clearance search or non-infringement search and the search analysis essentially constitutes a risk assessment.

The key distinction between a patentability search and an FTO search is that an FTO search only includes patents. An inventor may have freedom to operate in an area, but this doesn’t mean that he or she can patent there. 


GERD

Gross domestic expenditure on research and development 


GFPC

German Federal Patent Court


GI

Geographical Indication. An identifier, or mark, used on products to show that they originate from a specific geographical region and that they adhere to a certain standard of production (such as traditional methods), or that they possess characteristics associated with that region.


GPTO

German Patent and Trademark Office


Granted

This is when an application becomes a granted patent, meaning that the patent is in force


Horizon 2020

A seven year (2014 to 2020) EU research and innovation programme providing almost €80 billion funding to promote science and industrial leadership while reducing barriers to innovation.  

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IAM

Intellectual Asset Management. A methodology or defined process for protecting and maintaining, or growing the value of a specified body of intellectual properties within an organization.


IB

International Bureau - This refers to the International Bureau of the World Intellectual Property Organization, which can receive international patent applications directly and act as the receiving office (RO), in place of the national or regional office. It is available to any residents of a PCT contracting state.

IEEE

Institute of Electrical and Electronics Engineers - This is the world's largest technical professional organization covering engineering, computing, and technology information. Its goal is to promote innovation in these fields and it has developed a portfolio of around 1,300 standards and projects to facilitate global interoperability of technologies. Find out more

Independent claim

As the EPO desrcibes: "All applications will contain one or more "independent" claims directed to the essential features of the invention." An independent claim therefore, comprises the broadest definition of an invention and is a standalone statement. It may be limited in scope by dependent claims.

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Industrial design

A design process used for products that will be manufactured via mass production methods.

Infringement

Relating to the use of a patented invention without the permission of the patent owner


INID

Internationally agreed Numbers for the Identification of (bibliographic) Data. An INID code refers to the numbers that appear in brackets on the front page of a patent, for example (54) refers to the title of a patent. The numbers enable identification of the various bibliographic elements of a patent, even if the front page is not in Latin script.

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INPADOC

International Patent Documentation - this refers to a publicly accessible database that is maintained by the EPO and is one system used for identifying patent families.

IPA

Intellectual Property Assets. Refers to a body of intellectual properties within an organization, including copyright, geographical indications, industrial designs, patents, and trade secrets, that have been identified as holding value to the business.

IPAB

Intellectual Property Appellate Board. Headquartered in Chennai, the IPAB has the authority to examine issues relating to the revocation of patents in India and the validity of registered trademarks.

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IPC

International Patent Classification - established by the Strasbourg Agreement 1971, this represents a series of identification codes that allow patent offices to classify patents and utility models into specifically defined technology areas.

IPEA

International Preliminary Examining Authority. This refers to any recoginised national patent office or other relevant organization that has been appointed to carry out a preliminary examination as part of an international patent application (see PCT). It will form an initial, non-binding opinion on whether an application describes an invention that is novel, involves an inventive step (to be non-obvious), and is industrially applicable.

IPEC

Intellectual Property Enterprise Court. In the UK, this specialist court is geared towards rapid decisions in IP litigation cases, used primarily by small and medium-sized businesses. It can award up to £500,000 in damages or lost profits. It is part of the Business and Property Court of the High Court of Justice.

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IPER

This is same as IPRP, an international preliminary examination report

IPO (UK)

The Intellectual Property Office in the UK

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IPOS

Intellectual Property Office of Singapore Find out more

IPR (Intellectual Property Rights)

A term that includes trade secrets, utility models, patents, trademarks, geographical indications, industrial designs, layout designs of integrated circuits, copyright and related rights, and new varieties of plants.

IPR (Inter partes review)

In the US, this refers to a procedure carried out through the Patent Trial and Appeal Board (PTAB) and can be used by a third-party to challenge the patentability of one or more claims in a US patent. 

It becomes available only after the period for a challenge via a post grant review (PGR) has passed and is more limited in scope.

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IPRP

International Preliminary Report on Patentability

ISA

International Searching Authority - A body that will search patents and prior art to determine whether an invention is patentable

ISR

International Search Report - The report produced by the ISA (International Searching Authority) on whether an invention is patentable

ITC

(United States) International Trade Commission.

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JPO

Japan Patent Office Find out more

JV

Joint Venture - where businesses agree to share resources or expertise in order to achieve a specific objective

Kind Code

Kind codes are numbers and letters that are added to the end of patent numbers that describe what 'kind' of document is being read. Codes used vary by jurisdiction and a full list is available from the WIPO. Find out more

KIPO

Korean Intellectual Property Office Find out more

KTO

Knowledge transfer office

Locarno Classification

The Locarno Classification, established by the Locarno Agreement (1968), is an international classification used for the purposes of the registration of industrial designs. It comprises a list of terms into which industrial designs are incorporated. These terms to describe goods are called product indications. Find out more

M&A

Mergers and acquisitions. Describes a business transaction in which two legal business entities become a single entity. In the case of an acquisition, this generally involves the parent company buying and taking ownership of the stock, equity or assets of the target company. Meanwhile, in a merger, two organisations join together to form a new business.


Markush Structure

This is a common way of depicting chemical structures in patents, named after Dr Eugene A. Markush. They depict a core structure, but allow symbols to be added that describe potential variants that could be attached to the core structure, without having to define the chemical structure of these variants precisely. It makes them ideal for use in patents, where patent writers do not always want to be explicit about all parts of a structure in order to protect their invention.


NNN Agreement

Used to protect IP in China, this is a 'non-use, non-disclosure, and non-circumvention' agreement. It should be used instead of a US style NDA (non disclosure agreement), as this is not considered sufficient to protect IP in China.

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Novelty

For a concept to be classified as an invention, it must be completely new with no evidence that it has ever been described before. See also 'Prior Art.'


NPE

Non-Practising Entity. Also sometimes known pejoratively as patent trolls, NPEs hold patents for inventions but have no intention of developing or commercialising them.


NPL

Non-patent literature. Refers to literature that is relevant to innovation or the patent prosecution procedure, for example to determine novelty. This could include research papers, publications or scientific journals, among others.


NPO

National Patent Office.


OG

Official Gazette. The official journal of the USPTO. There are two editions, one for patents and one for trademarks. It includes bibliographic information and a representative drawing for each patent granted or trademark published on that issue date. It is published weekly, every Tuesday.

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OHIM

Office for the Harmonization of the Internal Market. This has now been superseded by the European Intellectual Property Office.


Out-licensing

When an organization or entity allows another to use its intellectual property in return for a fee. 


Patent

A legal right conferred by a government, or a governing body, to a patent owner that prohibits all others from using a specified invention for commercial purposes without the prior consent of the owner.

Patent cliff

A severe drop in revenue once the patent for a company’s leading product expires. The sharp revenue decline is a result of competitors being able to start developing and selling the product, often at a much lower price. 


Patent family

A patent family refers to a patent that has filed in several jurisdictions in order to protect a single invention in multiple countries. The original document filed is known as the priority document, and it is then extended to other patent offices. This then becomes the patent family.

Patent fence

A series of patents issued with a view to block any innovators linked to an initial patent (usually a competitor) from further developing any innovation or applying for further follow-on patents around the initial one.


Patent pool

An agreement under which one or more patent owners license their patented technology either to each other, or to third parties. It is often used for technologies that consist of multiple complementary aspects and in situations where all parties mutually benefit from sharing the constituent technologies involved.


Patent prosecution

This refers to the process of negotiating with a patent office during the application stages of obtaining a patent, and subsequent interactions or communications with the patent office following its grant.


Patent thicket

The most generally used definition that is put forward by IP expert Carl Shapiro: "A dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialise new technology." It applies to areas of technology where it is difficult to enter with an invention due to excessive patenting activity. 


Patentability

For an invention to be patentable, it must be novel, involve an inventive step and be capable of industrial application. It should not involve any subject matter that is specifically excluded, such as a mathematical model or biological process.

Any public facing information could hinder plans to patent a particular item. This means that patentability searches will include websites, scientific journals, industry publications, and general media, as well as taking into account patents.

PCT

Patent Co-operation Treaty - The PCT provides a unified international procedure for filing patents in all the participating jurisdictions around the world. Find out more

PGR

Post grant review. Established as part of the America Invents Act (AIA), a third party may challenge a US patent within nine months of issuance, if it has been issued under first-inventor-to-file (FITF). 

It differs from an inter partes review (IPR) as the scope of what can be challenged is wider. It can include subject matter ineligibility, anticipation and obviousness, indefiniteness, lack of enablement, or failure to meet the written description requirement. An inter partes review, on the other hand, is limited to anticipation and obviousness.

As notes from the Congressional Record from the debate on the America Invents Act explain: "This bill would finalize the shift towards a European-style patent system through changing from a ‘‘first-to-invent’’ to ‘‘first-to-file’’ system; establishing a new set of ‘‘prior use’’ rights; and adopting a third European-style ‘‘post-grant’’ challenge."

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Pledge

A pledged patent is one that has been used as a form of collateral for securing a business loan.


PPH

Patent Prosecution Highway. As part of the international PCT application process, this refers to a work sharing initiative between participating patent authorities. It can enable faster processing during the national phase of examination, where patent examiners can make use of the work from the other office or offices.

Prior art

As the European Patent Office explains: "Prior art is any evidence that your invention is already known. Prior art does not need to exist physically or be commercially available. It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention."


Prior user right

If a party can prove it was already using an invention before the same invention is patented by another, then it can continue use of the invention without the need for licensing. Find out more

Priority Date

A priority date is achieved when you are the first to file a specific innovation within a country. The filing date is considered the “priority date”. Once filed you are entitled to claim priority for a period of twelve months. Therefore, when you apply for protection in other member countries during those twelve months, the filing date of your first application is considered to have “priority” over other applications filed after that date.

PTAB

Patent Trial and Appeal Board. Part of the USPTO, this body decides issues of patentability. It conducts trials and hears appeals against examiner decisions in patent applications and re-examination proceedings. 


PTO

Patent and Trademark Office.


Publication Date

The date on which a patent application is published and enters the public domain for the first time.


RAND

See FRAND

RO

Receiving Office - a national patent office or intergovernmental organization which receives and processes international patent applications

SEP

Standard-essential patent - a patent that is considered as essential for the implementation of a specific technology that needs to conform to a uniform standard. Owners of SEPs are obliged to offer the technology to others at a fair and non-discriminatory price.

Silicon Intellectual Property

In the semiconductor industry, this describes a business model in which a semiconductor company licenses its technology, known as 'IP core,' to another party. IP core can refer to technologies such as chip layout design.


SIPO

State Intellectual Property Office, which is also known as the Chinese Patent Office Find out more

SME

Small and medium-sized enterprises. The term is used to distinguish the size of a company, usually, but not always exclusively, based on the number of employees. It is used by many regional and international organizations, such as the EU, the World Bank and the World Trade Organization, among others. However, it is important to note that at a country level, the definitions can vary considerably. Follow the link for more detailed information on country-specific definitions

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Soft IP

A contentious term sometimes used to refer to trademarks, copyright, and domain names, to differentiate from ‘hard IP’, referring to patents.


SPC

Supplementary Protection Certificate. Applies to patents in the EU, Iceland, Liechtenstein and Norway. If granted, it extends protection of certain patent rights from the time when the original patent expires, usually for a maximum of five years. It is used for products (pharmaceutical and plant) that require regulatory approval before they can be sold in a market. The SPC compensates for the time during which a patent is granted but the product cannot be sold.


Specification

The claims and description of a patent together make up its specification

SSO

Standard Setting Organization. An organization that develops, promotes or supports standards in areas such as information and communications technologies, for example WiFi.

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Stage-Gate (TM) Innovation Process

The Stage-Gate (TM) innovation process provides a framework for product development from discovery and ideation through to launch. It describes a sequence of seven activities: discovery, scoping, building a business case, development, testing and validation, launch and post launch review. Between each of these activities there is a sequence of five gates. Gate 1 (between discovery and scoping) is referred to as the idea screen. There is a second screen between scoping and building the business case (Gate 2). Gates 3, 4 and 5 refer to 'Go to development,' 'Go to testing,' and 'Go to launch' respectively. A gate represents a decision point to determine whether a project should continue to the next phase or not. The framework is designed so that theoretically only the strongest ideas with the highest chance of commercial success should make it through each stage.

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Standardised Assignee

Standardised assignee is a single naming convention used to describe the same patent owner, across different patent documents. For example, all patent documents with the assignee names “I.B.M, or IBM Inc., or IBM Consulting, or International Business Machines”, are assigned the standardised owner “IBM”.


STEM

Science, technology, engineering and mathematics


Title

A patent title should convey to the user of patent documents a first impression of the main content of the invention

Trade secret

The WIPO describes a trade secret as 'any confidential business information which provides an enterprise a competitive edge.' Trade secrets encompass manufacturing or industrial secrets and commercial secrets.

Trademark

A design, symbol, word, or phrase that is either legally registered or established by use as the representation of a company or product.

Triple damages

In the US, damages awarded in court can be up to three times higher if it is proven that an invention was copied after its protected status had already been known or made known to the person infringing (wilful infringement). 


TRIPS

The Agreement on Trade-Related Aspects of Intellectual Property Rights. This is an international agreement administered by the World Trade Organization (WTO). It articulates minimum standards for various forms of intellectual property regulation as applied to nationals of other WTO Members. For example, it is the TRIPS Agreement that requires WTO Members to provide protection for a minimum term of 20 years from the filing date of a patent application for any invention.

TRIZ

A Russian acronym: Teoriya Resheniya Izobretatelskikh Zadatch, which translates as 'The theory of inventive problem solving.' It refers to a science-based, rather than a psychology-based approach (such as brainstorming), to innovation. It centres on defining an ideal end state and then analysing the contradictions that prevent a product or solution reaching that end state. Products are the result of compromises based on available resources or materials and the TRIZ methodology provides a framework for resolving the contradictions that lead to these compromises. It was devised by a patent examiner for the Russian Navy, Genrich Altshuller, who had reviewed tens of thousands of patents to try and determine what principles led to an innovative breakthrough, versus an incremental improvement.

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TTAB

Trademark Trial and Appeal Board. A body within the USPTO that hears and decides on cases involving trademarks, including oppositions (whereby a party opposes a mark following its publication in the Official Gazette ) and annulments (whereby a party seeks to cancel an existing registration).

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TTO

Technology Transfer Office - This relates to an office, often within a university or governmental organization and sometimes within companies, that is responsible for identifying commercial partners or applications of a researched technology. Within universities, the office is responsible for the commercialization of innovation as defined by the intellectual property that a university holds.

Unitary Patent

Currently under development, the Unitary Patent (or EPUE) will provide patent protection at a European level in all participating jurisdictions.  Unitary patents would be granted by the European Patent Office (EPO) and be subject to the jurisdiction of the Unified Patent Court (UPC). The system will provide an alternative to national patents.

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UPC

A proposed common patent court open for participation of all member states of the European Union. It will hear cases regarding infringement and revocation proceedings of European patents valid in the territories of the participating states. A court ruling will be directly applicable throughout those territories.

USPTO

United States Patent and Trademark Office Find out more

Utility model

Used in select jurisdictions such as Australia, China, France, Germany, Italy, Japan and South Korea (among others), the idea of a Utility model patent is to cover an incremental improvement to a product, process or machine in those cases where such an improvement does not warrant a full patent.

VC

Venture Capital. Financing provided by investors to start-up organisations or small businesses, to drive growth.


Wilful infringment

When an invention is copied, or continues to be copied after its protected status is already known or made known to the person who is infringing. This can lead to much higher penalties if brought to court. In the US, damages awarded can be up to three times higher, an outcome that is often referred to as triple damages. 


WIPO

World Intellectual Property Organization - a self-funded UN agency with 189 member states and provides a global forum for intellectual property services, policy, information and cooperation. Find out more

WIPO Pearl

A multi-lingual terminology portal giving access to scientific and technical terms derived from patent documents

Withdrawn

This most frequently refers to an application that’s open to public inspection, which has been withdrawn at the request of the applicant.


WTO

World Trade Organization. A multinational organization that presides over the rules of trade between nations. In terms of intellectual property, it was the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) that introduced rules governing intellectual property into the global trading framework for the first time.

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Zone of natural expansion

In trademark law, this is the extent to which a trademark owner has the potential to expand into new territories or geographical regions. It is a concept that attracts criticism from some courts, as the 'zone' can never be objectively described.