Flat Rate Patent Applications: Who, What, How?

What is a flat rate patent application? Flat rate initial filing A flat rate patent application generally refers to a patent application that is initially drafted and filed for a fixed fee. While I don’t have statistics, it seems that flat rates are more common for design patent applications where the initial preparation of the […]

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What to do after filing a provisional patent application

Next steps after filing a provisional patent application So you’ve filed a provisional patent application. Now what? The next steps depend upon a few factors. Keep in mind the 1-year deadline as you think through these factors. Are you further developing the concept? If your concept is at an early stage of development, you may […]

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Why file a continuation before your patent is granted?

Why file a continuation application before your utility patent is granted? “I don’t know what I don’t know.” This axiom rings true for me especially when it comes to the future. My hunch is that most patent owners cannot foresee all the ways in which competitors will try to design around their patents. Filing a […]

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From Start to Finish: Life Cycle of Utility Patent Application

What is the life cycle of a utility patent application? It may help to think of the life cycle of a utility patent application as having a beginning, middle and end: Beginning: Initial filing of non-provisional patent application (approx. 1-2 months); Middle: Prosecution of patent application (approx. 1-5 years); and End: Grant or abandonment of […]

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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. Think of an after-final response as an alternative to an RCE that […]

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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

Why 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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