How to Add New Matter to a PCT Application When Filing in the US

What is a bypass application? A PCT application that designates the US has the effect of a pending US application from the international application filing date [see 35 USC 363]. Therefore, it is possible to file a PCT bypass application, which is basically a continuing application (e.g., continuation, divisional, CIP) based on such a pending […]

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US National Stage Entry Based on PCT Application: What to Know

US National Stage Application: The Basics Let’s begin with the basics of filing a national stage application in the US based on an international PCT application. When is the US National Stage Deadline? The deadline is 30 months from the priority date. If the deadline has already passed, it may still be possible to file […]

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CIP vs. New Stand-Alone Patent Application: What are tradeoffs?

Adding New Matter: Whether or Not to File CIP The issue of how to apply for new subject matter that is new, but somewhat related to a pending patent filing can be somewhat tricky. An applicant has two options, and each has its own pros and cons. Option 1: Stand-Alone Patent Application Pros: Longer Term […]

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What is the first to file patent rule?

What is the first-to-file system? US patent laws no longer recognize who was first to invent, but rather who applied first for a patent. It’s basically a race to the USPTO and whoever files first wins the right to apply for a patent on their invention. To be clear, first-to-file does not mean that whoever […]

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What is a priority date?

What does priority date mean? Priority date refers to the earliest filing date in a family of patent applications. Where only a single patent application is involved, the priority date would obviously be the filing date of the sole application. If an applicant has filed a number of related patent applications, the priority date would […]

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What Should Chinese Applicants Know About US Design Patents?

Reasons for Procuring US Design Patents Chinese design patent owners will already know the benefits of design patent protection in the US. Unlike US utility patents, a typical US design patent may be obtained more quickly and for less money. The allowance rate of US design applications, particularly upon a first review by the patent examiner […]

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What are negative claim limitations?

What is a negative claim limitation? A negative claim limitation is language recited in a patent claim that speaks to the absence of a feature, as opposed to a positive claim limitation that recites the presence of a feature. Negative limitations might be recited with words such as “devoid,” “absence,” “without,” “(whatever)-less,” “not including,” “excluding,” […]

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How to Transfer Ownership of Patents

Who owns the patent? Clients applying for patents for the first time often express a hesitation in identifying inventors, especially when they (the principals of the company) are not the inventors. Those concerns are typically allayed when they understand that a patent assignment can easily transfer ownership of the patent rights to another entity. Why […]

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What is prior art?

Drawing the line between old and new The term “prior art” is frequently used in the patent world to refer to what already exists. It’s the old stuff that can’t be patented again. Prior art may consist of documents, things and processes that have been sold or used in the past. When it comes to the […]

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