What is a (novelty vs. validity vs. freedom-to-operate) patent search?

Different types of patent searches There are 3 main types of patent searches: patentability search (aka novelty search); freedom-to-operate (FTO) search (aka right-to-use or infringement search); and patent validity search. What is a patentability search? The main distinction between these patent searches relate to the difference between what is patentable vs. what infringes.  Also known as a novelty […]

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What is PDX (Electronic Priority Document Exchange)?

When a U.S. national stage patent application or direct filing claims priority to a foreign application, a certified copy of the foreign priority document is required.  The USPTO and certain foreign patent offices – European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), China Patent Office (SIPO which stands for State Intellectual […]

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Can a Provisional Patent Application be filed in a foreign language?

Provisional patent applications with non-English specifications can be filed with the USPTO. In order for a non-provisional application to claim priority to a non-English provisional, an English translation of the provisional needs to be timely filed along with a statement that the translation is accurate. Failure to file the English translation and accompanying statement in a timely […]

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Are Provisional Patent Applications Published or Made Publicly Available?

Provisional patent applications are never published or examined by the USPTO. However, if a non-provisional application is filed within 1 year claiming priority to a provisional application, the provisional application will become publicly available for inspection approximately 18 months from the provisional filing date (i.e., priority date). The one exception is if an applicant requests […]

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What is the Full First Action Interview Pilot Program (FAI)?

What First Action Interview is not Let’s first clarify what the First Action Interview (FAI) program does not do. The FAI program does not apply to design patent applications which require a design Rocket Docket request. The FAI program also does not shorten the time for the first Office Action, also known as First Office […]

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Where I can find flat fee IP attorneys for filing patent and trademark applications at fixed rates?

Flat attorney fees provide greater transparency and certainty for clients seeking to budget IP protection such as patent applications (aka patent prosecution) and trademark applications (aka trademark prosecution). Innovation Capital Law Group publishes a fixed fee schedule for trademark prosecution which includes a total cost from start to finish assuming no rejections. Trademark applications tend to have […]

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Do I need an NDA before talking to an IP attorney about my idea?

It’s a common question I get from startups, inventors, entrepreneurs and basically anyone starting up a new venture who hasn’t already worked with our firm. In most cases, a well drafted non-disclosure agreement (NDA) is a prudent way to protect your idea as you’re talking to service providers. Attorneys, however, are governed by strict rules and codes of […]

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What is PPH (Patent Prosecution Highway)?

What is PPH? PPH stands for Patent Prosecution Highway, which is a cooperative program between the USPTO and participating foreign patent offices to expedite the allowance of patent applications that previously received favorable rulings. Two key acronyms are helpful here: OEE refers to the Office of Earlier Examination and OLE refers to the Office of Later […]

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