Vic Lin

How to design around patents

What is a design around? A design around refers to a product that has been intentionally designed or modified to avoid patent infringement. The goal of a design around is to reduce the risk of a patent lawsuit or, if sued, to avoid or minimize liability for infringement. In order to design around patents, you […]

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Medical device patents: What to know

Start with prior art It seems that innovation in the medical device field generally enjoys a greater probability of making it to the marketplace. When a particular area of technology has a greater chance of making money, you can expect more patent filings. So expect the prior art of medical device patents to be crowded. […]

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How to protect product parts with design patents

Is patenting replacement parts a smart IP strategy? If there is a market for secondary product parts, it may make sense to file design patent applications to protect the ornamental appearance of each visually unique component. It is not uncommon for an overall product to be protected by multiple design patents covering individual parts. This […]

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How to prevent a trademark opposition

How to reduce the probability of trademark oppositions Neither you nor your IP attorney can predict with absolute certainty how third parties may feel about your particular trademark. Keep in mind we are not talking about the review of your application by the USPTO trademark examining attorney. Even if the examining attorney believes your mark […]

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What is a supplemental amendment?

When is a supplemental amendment appropriate? As suggested by its name, a supplemental amendment is an additional reply to a patent Office Action. Supplemental replies should be filed only under the following circumstances: (A) Cancellation of a claim(s);(B) Adoption of the examiner suggestion(s);(C) Placement of the application in condition for allowance;(D) Reply to an Office […]

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Prior-filed application: How to deal with suspension

What is a prior-filed application? A prior-filed application is a trademark application with an earlier filing date than yours. If the USPTO trademark examining attorney sees a potential likelihood of confusion between your mark and that of the earlier-filed application, the examining attorney will note the prior-pending application in an Office Action [see TMEP 716.02(c)]. […]

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To file an RCE or not?

When does an RCE matter? RCE stands for Request for Continued Examination. To file an RCE or not to file – this is a question that often arises in the context of responding to a final Office Action (FOA) in a utility patent application. An RCE would not be involved in design patent applications or […]

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What product designers and consultants need to know about IP

Being able to sell is more important than being patentable Product designers and consultants are in the business of not only creating new products, but also in helping their clients get their new products to market. What if your newly design product, which might even be patentable, turns out to infringe someone else’s IP? What […]

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Japanese PCT Applicants Entering US National Phase: What you need to know

From Japan PCT to US national phase For Japanese PCT applicants seeking to enter the US national phase, understanding the peculiarities of US patent practice will prove to be helpful. The following guide highlights key issues involved in US patent prosecution. Non-extendable 30-month US national stage deadline The deadline for entering the US national phase […]

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