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 brief exemplary list of common mistakes associated with filing US national stage applications will be useful to PCT applicants planning on entering the US. Title The following words should be avoided altogether in the title: “new” ‘improved,” “improvement of,” “improvement in” The first words of the […]

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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 is the patent inventor? 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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When is it too late to apply for a patent?

Foreign Patent Protection What is the Absolute Novelty Bar? If you have publicly disclosed your invention prior to filing a patent application, then you will be barred from patenting that invention in most foreign countries. This rule,  known as the absolute novelty bar, requires that you avoid public disclosures of your invention prior to filing […]

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How to Amend PCT Application

Does Your PCT Application Require Any Amendments? Before delving into the complexities of filing PCT amendments, the initial question to consider is whether an amendment is even necessary. For example, if you have a co-pending US application with claims that received a first action allowance, then a PCT might be unnecessary. Here are some helpful […]

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Can an amendment be filed after a Notice of Allowance?

Amending a Patent Application After Allowance The amendment of a patent application after allowance is not a matter of right according to 37 CFR 1.132 which states, “No amendment may be made as a matter of right in an application after mailing of the notice of allowance.  Any amendment filed pursuant to this section must be filed […]

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What is Supplemental Examination?

Supplemental examination is a USPTO process to reconsider an issued patent as requested by the patent owner. Who requests and participates in supplemental examination? If USPTO grants a request for supplemental examination filed by the patent owner, the examination process is ex parte, meaning that only the patent owner corresponds with the USPTO. Third parties […]

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