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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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. If a Final Office Action has been issued, I recommend that you sit down with your patent attorney or agent and […]

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How to Respond to a Patent Office Action

Patent Office Action Response Since the probability is high (approximately 88%) that a utility nonprovisional patent application will be rejected at least once, the issue is not if, but when and how you will need to respond to a patent Office Action. If and when that Office Action is issued, don’t be surprised or disappointed. […]

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Who are the patent inventors?

Who are the patent inventors? An inventor of a patent application 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 […]

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