How to amend patent claims: marked-up amended claims

When are marked-up claims not required? Patent claims must be amended in a very certain manner. The USPTO has strict marking rules on how amended claims must be shown with respect to prior versions. The format of amended claims are generally called “marked-up” claims. There is no need to show marked-up claims in the following […]

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What is an Advisory Action (AA)?

What is an Advisory Action? An Advisory Action may be issued only in the context of responding to a Final Office Action. It usually comes up when an applicant files an after-final response (i.e., without a Request for Continued Examination). Why do examiners issue Advisory Actions? If such an after-final response does not place the […]

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What is a nonprovisional patent application?

What is a nonprovisional patent application? A nonprovisional patent application is what you file to get a utility patent.¬†You would think that a simpler name could’ve been created, but the “nonprovisional” adjective distinguishes this utility application from another utility filing called a provisional patent application. If a granted utility patent is the finish line, then […]

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What is a provisional patent application (PPA)?

What is a provisional patent application? A utility patent is the end goal of a provisional patent application. Filing a “provisional” application alone will not get you a utility patent. It is a temporary placeholder that requires you to follow up with a timely non-provisional application. What do you get by filing a provisional application? […]

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How to understand patent claims

Understanding utility patent claims The claims are often the least understood portion of a utility patent, and yet they matter the most. Attempting to understanding utility patent claims can feel like learning a foreign language. There is a lot of funky claim language like “comprising,” “said” and “wherein,” not to mention the hierarchy of independent […]

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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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