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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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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What to do when your patent application is allowed

What is the Notice of Allowance and Fees Due? When your patent application has been allowed, the USPTO will send a Notice of Allowance setting forth a 3-month deadline to pay the issue fee. This document will also include a Notice of Allowability starting on a separate page which will include the Reasons for Allowance. […]

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How to amend patent claims: marked-up amended claims

When are marked-up claims not required? Patent claims must be amended in a very certain manner. The USPTO has strict marking rules on how amended claims must be shown with respect to prior versions. The format of amended claims are generally called “marked-up” claims. There is no need to show marked-up claims in the following […]

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What is an Advisory Action (AA)?

What is an Advisory Action? An Advisory Action may be issued only in the context of responding to a Final Office Action. It usually comes up when an applicant files an after-final response (i.e., without a Request for Continued Examination). Why do examiners issue Advisory Actions? If such an after-final response does not place the […]

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What is a nonprovisional patent application?

What is a nonprovisional patent application? A nonprovisional patent application is what you file to get a utility patent.¬†You would think that a simpler name could’ve been created, but the “nonprovisional” adjective distinguishes this utility application from another utility filing called a provisional patent application. If a granted utility patent is the finish line, then […]

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What is a provisional patent application (PPA)?

What is a provisional patent application? A utility patent, and not a design patent, is the end goal of a provisional patent application. As implied by its name, filing a “provisional” application alone will not get you a utility patent. It is a temporary placeholder that requires you to follow up with a timely non-provisional […]

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What is an independent claim?

Why do independent claims matter? If you are applying for a utility patent, it is absolutely critical that you understand how independent claims work. In order for a product or service to be covered by a utility patent, at least one independent claim must be infringed. And infringement means that each element of the independent […]

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