Is a Final Office Action really “final”?

How final is a Final Office Action? Don’t freak out if you’ve received a Final Office Action (FOA) in your patent application. It does not mean the end of the road for your patent application. If a Final Office Action has been issued in your patent application, I recommend that you sit down with your […]

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US National Stage: Common Mistakes to Avoid

Avoiding Pitfalls When Entering the US National Stage This is a brief list of common mistakes associated with filing US national stage applications. Prior to entering the US national phase, PCT applicants may want to address these issues if possible to avoid further delay and costs. Title The following words should be avoided altogether in […]

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How to Respond to a Patent Office Action

Responding to a Patent Office Action Since the probability is high that a utility non-provisional patent application will be rejected at least once, you should expect to receive an Office Action. If and when that Office Action is issued, don’t be surprised or disappointed. Recognize that it’s a normal part of the patenting process and […]

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Who are the patent inventors?

Who are the patent inventors? An inventor is an individual person (not a company or organization) who contributes to an invention as defined by the patent claims. In a design patent, the claim consists of the drawings so a design patent inventor would be anyone who contributed to a feature shown in the figures. In […]

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How to Amend PCT Application

Does Your PCT Application Require Any Amendments? Before delving into the complexities of filing amendments to a PCT application, the initial question to consider is whether an amendment is even necessary. For example, if you have a co-pending US application with claims that received a first action allowance, then PCT amendments might be unnecessary. Here […]

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Can an amendment be filed after a Notice of Allowance?

Can a patent application be amended after allowance? Maybe. The amendment of a patent application after allowance is not a matter of right according to 37 CFR 1.132 which states: “No amendment may be made as a matter of right in an application after mailing of the notice of allowance.  Any amendment filed pursuant to […]

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What is Supplemental Examination?

Supplemental examination is a USPTO process to reconsider an issued patent as requested by the patent owner. Who requests and participates in supplemental examination? If USPTO grants a request for supplemental examination filed by the patent owner, the examination process is ex parte, meaning that only the patent owner corresponds with the USPTO. Third parties […]

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How to Add New Matter to a PCT Application When Filing in the US

What is a bypass application? A PCT application that designates the US may be considered a pending US application from the international application filing date [see 35 USC 363]. Therefore, it is possible to file a PCT bypass application, which is basically a continuing application (e.g., continuation, divisional, CIP) based on such a pending US […]

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