What is a supplemental amendment?

When is a supplemental amendment appropriate? As suggested by its name, a supplemental amendment is an additional reply to a patent Office Action. Supplemental replies should be filed only under the following circumstances: (A) Cancellation of a claim(s);(B) Adoption of the examiner suggestion(s);(C) Placement of the application in condition for allowance;(D) Reply to an Office […]

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To file an RCE or not?

When does an RCE matter? RCE stands for Request for Continued Examination. To file an RCE or not to file – this is a question that often arises in the context of responding to a final Office Action (FOA) in a utility patent application. An RCE would not be involved in design patent applications or […]

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How to read a utility patent

How to read a utility patent Utility patents can be confusing to understand. You have the claims which read like a foreign language, and the description which typically discloses details that are more specific than the patent owner would prefer. How do we make sense of these various parts of a utility patent? Let me […]

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How to write a patent abstract

What is a patent abstract? A patent abstract is a short section of a utility patent that concisely summarizes the invention. Preferably located after the claims, the abstract should commence on a separate sheet under the heading “Abstract” or “Abstract of the Disclosure.” The purpose of the abstract is not to disclose all the details […]

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What is a Patent Examiner’s Amendment?

What is a Patent Examiner’s Amendment? I love Examiner’s Amendments. Not only is the patent examiner willing to allow a patent application, the examiner is taking the initiative to amend the application in order to get it allowed. Agreeing to an Examiner’s Amendment is more expeditious than filing your own amendment because you save the […]

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How to revive abandoned patent application

Can an abandoned patent application be revived? Under certain circumstances, yes. An abandoned patent application may be revived depending upon the following key factors: reason for abandonment; and length of time it took for the applicant to seek revival. What is abandonment? A patent application typically becomes abandoned due to the applicant’s failure to take […]

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Does your specification support your claim amendments?

Why must claim amendments find support in the specification? There is a rigid rule in patent prosecution that is strictly enforced: you can only claim what is disclosed in the specification. You cannot claim what is not disclosed [see 35 USC 112(a)]. This means that in responding to an Office Action, you can amend the […]

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How much does a patent Office Action response cost?

Office Action cost range: from simple to complex responses The cost estimate of responding to an Office Action in a utility patent application will depend upon the complexity of the issues raised by the patent examiner. What is a simple Office Action response? A simple Office Action requires a reply without arguments. Simple Office Action […]

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Should you get a second opinion on your patent application?

What should you ask for in a second opinion? So you have a nagging feeling that something is not right with your pending patent application, but you are not sure what it might be or how to even find out. The point of this post is provide some helpful guidelines on what questions to ask […]

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