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?

Amending a Patent Application After Allowance 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 this section must be filed […]

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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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US National Stage Entry Based on PCT Application: What to Know

US National Stage Application: The Basics Let’s begin with the basics of filing a national stage application in the US based on an international PCT application. When is the US National Stage Deadline? The deadline to enter the US national phase is 30 months from the priority date. If the deadline has already passed, it […]

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CIP vs. New Stand-Alone Patent Application: What are tradeoffs?

Adding New Matter: Whether or Not to File CIP The issue of how to apply for new subject matter that is new, but somewhat related to a pending patent filing can be somewhat tricky. An applicant has two options, and each has its own pros and cons. Option 1: Stand-Alone Patent Application Pros: Longer Term […]

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What is the first to file patent rule?

What is the first-to-file system? US patent laws no longer recognize who was first to invent, but rather who applied first for a patent. It’s basically a race to the USPTO and whoever files first wins the right to apply for a patent on their invention. To be clear, first-to-file does not mean that whoever […]

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