Vic Lin

Does your specification support your claim amendments?

Why must claim amendments find support in the specification? There is a rigid rule in patent prosecution that is strictly enforced: you can only claim what is disclosed in the specification. You cannot claim what is not disclosed [see 35 USC 112(a)]. This means that in responding to an Office Action, you can amend the […]

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How much does a patent Office Action response cost?

Office Action cost range: from simple to complex responses The cost estimate of responding to an Office Action in a utility patent application will depend upon the simplicity or complexity of the issues raised by the patent examiner. What is a simple Office Action response? A simple Office Action response is a reply that omits […]

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Should you get a second opinion on your patent application?

What should you ask for in a second opinion? So you have a nagging feeling that something is not right with your pending patent application, but you are not sure what it might be or how to even find out. The point of this post is provide some helpful guidelines on what questions to ask […]

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How to transfer trademark ownership

How to transfer trademark ownership: What is a trademark assignment? A trademark assignment is a document signed by the original owner (“assignor) transferring ownership of the trademark to a new owner (“assignee”). In most cases, only the assignor needs to sign the trademark assignment. The USPTO provides a helpful online resource on trademark assignments. What […]

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How to control international patent costs

How much do international utility patents cost? If you are thinking of pursuing utility patents in foreign countries, one big factor is the cost. Simply put, foreign utility patents cost A LOT, and “A LOT” likely means much more than you want to spend. You have to deal with not only the foreign patent office, […]

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What USPTO patent fees can be deferred?

What are the standard USPTO filing fees for initially filing a utility non-provisional patent application? There are three essential USPTO patent fees that must ultimately be paid when filing a utility non-provisional application: Basic Filing Fee Utility Search Fee Utility Examination Fee Deferral of USPTO patent fees may be desired by certain applicants seeking, for […]

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Amazon infringement notice: How to respond

Does the Amazon infringement notice identify a patent, trademark or copyright? At the outset, you should carefully study the Amazon infringement notice to determine which IP rights are being asserted against your product listing. An accurate understanding of the asserted IP rights will lead to clues as to which features might be triggering the notice […]

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What should a Startup IP Checklist include?

What is the point of a startup IP checklist? Checklists are wonderful. A helpful startup IP checklist keeps founders focused on the more important tasks and serve as reminders of any incomplete items. Intellectual property may seem daunting for startups. My goal with the following IP checklist is to keep it simple by focusing on […]

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What is a trademark registration basis?

Trademark registration basis There are only two bases for a registering a trademark in the US: use in US commerce [Section 1(a) – see TMEP Section 900]; foreign registration [Section 44(e) – see TMEP Section 1004]. A US trademark application cannot mature into a registration without at least one valid registration basis. Since a Section […]

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What is a trademark consent agreement?

What is a trademark consent agreement? A trademark consent agreement is a written agreement between two trademark owners stating that their respective marks are not confusingly similar. Also known as a trademark coexistence agreement, the discussion of coexistence often arises in the context of settling a trademark dispute (such as a TTAB trademark opposition or […]

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