Drafting and Prosecuting Patents with davinci: A Quick Glossary of Terms

The davinci AI Patent Copilot system outperforms other artificial intelligence options for patent attorneys in several ways. Compliance with industry-leading security standards and machine learning capabilities tailored to the patent profession have encouraged many patent attorneys and agents to pick our platform over several competitors. This quick glossary of patent drafting and prosecution terms will provide a closer look at the ways that davinci can transform the productivity of your patent practice right now.

Abstract - a short, concise description of the technical advance included in the specification that is written to aid readers in understanding the nature of that advance.

With davinci, you can use your invention disclosure, prior art and inventor interviews as inputs to generate an abstract in one click.

Beauregard Claim - A type of format for patent claims covering computer programs that claim the program as a computer-readable medium storing instructions for carrying out a process. Named after the patent applicant in the Federal Circuit’s decision in In re Beauregard (1995).

An AI-powered patent drafting software solution like davinci can suggest multiple ways to format your claims tailored to the invention you want to protect.

Canceled - The status of a claim that is removed from a patent application while it remains in prosecution or pre-registration at the national patent agency. Claims that are canceled during patent prosecution can be quickly removed from other AI-drafted patent applications via software prior to filing.

Claim - The legal definition of an invention that is covered by an issued patent while it remains in force.

With davinci's AI Patent Copilot, relevant claim suggestions can be made in seconds, saving patent attorneys the time it takes to draft each patent claim from nothing and providing a great starting point for expanding the scope of their claims.

“Composed of” - A common term used in patent claim language to restrict a particular claim to the essential elements that are described in that claim. Allegedly infringing products that include additional elements to achieve the claimed invention often do not fall within the scope of such claims in an infringement analysis. T

he patent drafting tools available through davinci utilize machine learning techniques to choose the right scope of protection for a claimed invention without risking validity through the use of overbroad terms.

“Comprising” - A common term used in patent claim language that is typically construed to have a more open-ended definition, which can be interpreted so that accused products with additional elements fall within the scope of the claim.

davinci’s AI patent drafting techniques work with attorneys to better understand when a broader scope of protection is available after analyzing prior art references.

Continuation Application - A patent application that claims the benefit of priority to an earlier-filed patent application while including additional claims covering different aspects of the invention disclosed in the patent’s specification.

A well-designed patent drafting application like davinci can quickly develop continuation applications based on information that has already been collected from a single patent family.

Dependent Claim - A patent claim that incorporates all the limitations of an independent claim that precedes it and to which it is tied by claim language that often reads “the invention of claim 1, wherein the invention is…”

With davinci, patent attorneys can quickly obtain a list of dependent claims that can extend protections that fall within the scope of independent claims already in the patent application.

Divisional Application - A patent application claiming priority to a parent patent application and claiming a distinct invention that carves out independent subject matter from the parent application, often filed to overcome a restriction requirement issued by the patent office.

davinci’s AI patent prosecution tools help patent attorneys quickly respond to restriction requirements by creating divisional applications that cover the distinct invention identified by the patent office’s restriction requirement.

Embodiment - A specific physical implementation of the invention claimed in the patent application. A patent’s specification often includes multiple embodiments, which serve to illustrate the full scope of a particular invention.

A patent drafting software solution like davinci can suggest a range of embodiments for a particular invention that gives patent attorneys a great deal of flexibility when building a patent specification.

Independent Claim - A patent claim setting out the limitations that define a complete invention in legal terms. Such claims are unattached to limitations included in the rest of the patent, and are often the basis for one or several dependent claims.

The artificial intelligence tools available through davinci can quickly suggest a series of independent claims that adequately protect the novel and non-obvious aspects of an invention disclosure.

Invention Disclosure - A confidential document prepared by inventors, often using a standardized form when employed by a corporation, that details the purported invention that has been developed and any known prior art related to the invention. Such disclosures are critical sources of information used when drafting a patent application.

With davinci’s security features, including zero data retention, patent attorneys can be confident that their confidential inputs like invention disclosures will not create a publication issue that could impact validity like other AI platforms.

Limitation - An element of a patent claim that distinguishes the invention as different from the prior art and serves as a boundary that limits the scope of technologies that the inventor can claim as an infringing use. Limitations can be functional, defining functional characteristics rather than physical components; conditional, defining a condition that must be met prior to performing a claimed step or function; or negative, defining the absence of a feature present in the prior art.

Patent drafting with davinci gives you access to software tools that can accurately identify the proper boundary of limitations that should be included in your patent application to properly claim the novelty of your invention.

Markush Claim - A type of format for patent claims typically used to claim chemical inventions by reciting a list of alternatives that have functional or structural equivalency while each achieving the inventive aspect of the claimed subject matter. Named for the patent applicant in In re Markush (1924), this format is often used to claim inventions in pharmaceuticals, metallurgy, ceramics and mechanical process steps.

With davinci, artificial intelligence tools provide accurate analysis of inputs describing an invention to properly draft claims in formats that are appropriate for the field of the invention being protected.

Means Plus Function Claim - A type of format for patent claims that allows a patentee to claim a specified function accomplished by a particular means without describing a structure, material or acts supporting the function. The claimed function is limited by the structure or steps of the claimed means as they are described in the specification.

An AI-powered patent drafting solution like davinci will help you identify several ways to format your patent claims based on the disclosures included in your specification.

Oath/Declaration - A legal disclosure required in patent applications stating the identity of the inventor(s), the citizenship status of such individual(s), acknowledging the legal duty to disclose all prior art material to patentability of the claimed invention, and confirming that the specification and claims have been reviewed prior to filing.

Davinci ensures that the full range of formalities required by a filing office is included in your patent application prior to filing.

Office Action - A piece of formal correspondence sent by a patent examiner that explains whether a patent application’s claims will be allowed, or whether the claims as written have a patentability issue when compared with the prior art. Patent applicants must respond to office actions raising patentability issues in order for patent prosecution to proceed at the agency.

With davinci’s office actions tool, patent attorneys can complete thorough responses to office actions in a speedy fashion that overcome patentability issues that are raised during prosecution.

Patent Drafting - The process of drafting an entire patent application, including the specification and claims, from an invention disclosure statement, inventor interviews and any other resources that a patent attorney can use to draft a patent application that claims the invention in the broadest terms possible.

With davinci, patent attorneys save an incredible amount of time on the patent drafting process, allowing them to focus more on high-value work that leads to additional billable hours.

Preamble - The opening clause of a patent claim that describes the type of invention that is bound by the limitations following the preamble and making up the rest of the patent claim. The preamble is typically not a limitation unless it recites essential steps or structures rather than a general description of the invention.

With davinci, claim preambles are quickly generated for each independent and dependent claim, saving the time and effort required to perform repetitive work.

Prior Art - Information typically contained within a scientific or technical publication that is available to the public before the priority date of a claimed invention. Prior art is analyzed by patent examiners during patent prosecution in order to determine if the claimed invention is novel and non-obvious to a person of ordinary skill in the art.

As a patent prosecution assistant, davinci helps patent attorneys develop patentability arguments for overcoming prior art challenges that are raised by the patent granting office.

Priority Date - The earliest filing date for a patent application from which an entire patent family derives the date that serves as a cutoff for assessing prior art references that could potentially invalidate the patent claims due to obviousness or for lack of novelty. In most countries, the priority date serves as the starting date for the period during which a patent is in force and may be asserted against infringers.

davinci’s AI patent prosecution tools aids patent attorneys in separating prior art references from other publications that do not predate the patent application’s filing and thus present no patentability issue.

Provisional Application - A form of patent application that includes a specification describing the invention to be protected, but includes no claims, prior art disclosures or other formalities of a typical patent application. Provisional applications must be filed within 12 months of an invention’s public disclosure, and a non-provisional application including formalities must be filed within 12 months of the provisional application’s filing date.

With davinci, a non-provisional application with full claims and other formalities can be readily generated from an earlier provisional application already filed at the patent office.

Specification - A written description included in the patent application that fully describes the technical advantages and uses of an invention in such a way that supports the patent’s claims. The specification must enable a person skilled in the art of the invention to make and use the invention as claimed without undue experimentation.

Patent drafting software tools like davinci can instantly generate patent specifications, cutting hours of work out of perhaps the most time-consuming aspect of drafting a patent application.

Terminal Disclaimer - A legal statement included in a patent that causes that patent to expire on the same date as a different patent claiming the same invention but expiring at an earlier date. A terminal disclaimer is typically filed to overcome patent examiner rejections filed for non-statutory double patenting.

Withdrawn Claim - A patent claim that is removed from a patent application following a restriction requirement from the granting agency that asks the patent applicant to narrow the subject matter being claimed. Such claims may be amended and later rejoined to the patent application.

An AI-powered patent drafting tool like davinci can suggest a range of claim amendments that allow patent attorneys to restore withdrawn claims rather than remove them following an office action.

If you have any remaining questions about how our AI Patent Copilot can enhance your workflow, don't hesitate to reach out to our experts here!