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

US National Stage Application: The Basics For most applicants outside the US, the US is one of the top national phase PCT countries to be considered. This is practical guideline to help non-US applicants prepare for national stage entry into the US. Let’s begin with the basics of filing a national stage application with the […]

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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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What is a priority date?

What does priority date mean? Priority date refers to the earliest filing date in a family of patent applications. Where only a single patent application is involved, the priority date would obviously be the filing date of the sole application. If an applicant has filed a number of related patent applications, the priority date would […]

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