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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What are Section 112 indefinite rejections?

Office Actions rejecting claims as being indefinite Patent claims must follow certain rigid rules in terms of format and language. For this reason, claims will often read like a foreign language because the grammar and structure seem a bit off. The good news is that, in most cases, indefiniteness under Section 112 may be resolved by […]

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What are excess claims fees and multiple dependent fees?

What are excess claims? Excess claims come into play only in a non-provisional application. There are no excess claims fees in filing a provisional or PCT application. The USPTO initial filing fees for a utility non-provisional application include the basic filing fee, search fee and examination fee. These standard initial filing fees allow an applicant […]

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What is a patentability search (novelty search)?

Why do a patentability search? The purpose of a patentability search is to find out if your invention may be patentable by searching relevant prior art. A patentability search does not consider infringement, so a patentable invention is not necessarily safe from infringement. If you’re concerned about infringement, consider a freedom-to-operate (FTO) search. The main questions answered […]

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Is software patentable?

Yes, software can be patentable, but the road to a granted patent may be long, frustrating and expensive. What makes software patentable? Just like any other type of invention, software must be novel and non-obvious. The extra hurdle that software and business method applications must overcome is the requirement of patent eligibility. A software invention must […]

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Why conduct patent examiner interviews?

What is a patent examiner interview? A simple truth is often overlooked in the back-and-forth written communications with the USPTO: patent examiners are human. An examiner interview is a conversation between your attorney and the USPTO examiner reviewing your application. While the interview might take place in person, the discussion typically occurs over the telephone or […]

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How does a patent extension of time work?

What types of patent filings may be extended? Responses to Office Actions may typically be extended. In most cases, an applicant may have up to six months from the date of an Office Action to file a response. Deadlines for filing an application, such as filing a non-provisional application claiming priority to a provisional or foreign […]

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IDS Deadlines and Fees: When to file and how much?

Whether any USPTO fees are required for submitting an Information Disclosure Statement (IDS) depends upon the timing of the submission relative to two key dates: the status of the US application; and when the applicant first found out about the new prior art references. Here are key IDS dates to keep in mind. Within Three […]

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What is an obvious invention (Section 103 rejection)?

How is non-obvious different from novel? You may have heard that an invention has to be both novel and non-obvious in order to be patentable. While the two terms may seem similar, non-obviousness has a different meaning than novelty, which we’ve discussed here. When a patent examiner is unable to find a single prior art reference […]

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What is a novelty rejection under Section 102?

What is a novel invention? Patent novelty refers to the uniqueness of an invention, but it’s actually much more specific. An invention is novel if no single prior art reference discloses all the components that form the claimed invention. So, the two critical pieces of information that must be analyzed to determine novelty are: patent claims; […]

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