Can you patent that?

Can you patent that? This is one of the most common questions I get from new clients. The question is not so much about whether their invention is patentable in terms of novelty and non-obviousness, but whether the subject matter is even eligible for protection. I’ll try to tackle some of the broad categories of […]

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What is a Preliminary Amendment?

What is a Preliminary Amendment? A Preliminary Amendment is a submission filed prior to the issuance of an Office Action in a patent application. The purpose of the Preliminary Amendment is to revise any of the following: specification, abstract, drawings and/or claims. What circumstances warrant a Preliminary Amendment? In a typical US national stage application, […]

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What is an After-Final Response?

What is an after-final response? An after-final response refers to a reply to a Final Office Action that is filed without a Request for Continued Examination (RCE). After-final responses should be used judiciously depending upon the specific circumstances of a particular patent application. It may help to think of an after-final response as an alternative […]

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What US Applicants Need to Know about PCT Foreign National Stage Entry

How foreign national stage entries differ from US national stage Most foreign IP offices have a two-stage process for filing patent applications: Initial filing of application; Requesting examination. Unlike the USPTO, most foreign patent offices require a request for examination that is independent from the initial filing of the application. Depending upon the country, the […]

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Micro Entity Status: Why We Don’t Do It

What does micro entity status matter? USPTO patent fees are generally proportionate to the size of the applicant. A large entity with over 500 employees must pay the full rate. A small entity pays 50% of the full rate. A micro entity pays only 25% of the full rate (i.e., a 75% discount off the […]

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Why combine multiple inventions into a single patent application?

Straightforward Approach: 1 patent app = 1 invention The 1-to-1 approach is straightforward: a separate patent application is filed for each invention. Where an inventor has two or more related inventions, multiple applications would be filed with each application covering only a single invention. Suppose an applicant has invented two distinct product features (let’s call […]

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Is a Final Office Action really “final”?

How final is a Final Office Action? Don’t freak out if you’ve received a Final Office Action (FOA) in your patent application. It does not mean the end of the road for your patent application. If a Final Office Action has been issued in your patent application, I recommend that you sit down with your […]

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US National Stage: Common Mistakes to Avoid

Avoiding Pitfalls When Entering the US National Stage This is a brief list of common mistakes associated with filing US national stage applications. Prior to entering the US national phase, PCT applicants may want to address these issues if possible to avoid further delay and costs. Title The following words should be avoided altogether in […]

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How to Respond to a Patent Office Action

Responding to a Patent Office Action Since the probability is high that a utility non-provisional patent application will be rejected at least once, you should expect to receive an Office Action. If and when that Office Action is issued, don’t be surprised or disappointed. Recognize that it’s a normal part of the patenting process and […]

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Who are the patent inventors?

Who are the patent inventors? An inventor is an individual person (not a company or organization) who contributes to an invention as defined by the patent claims. In a design patent, the claim consists of the drawings so a design patent inventor would be anyone who contributed to a feature shown in the figures. In […]

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