What a USPTO patent examiner really thinks

Thinking like a patent examiner We are privileged to have a former USPTO patent examiner, Lyman Smith, as Of Counsel patent attorney to our firm. The following insightful answers come from Lyman’s familiarity with the inner system of the US Patent Office. Keep in mind we are talking about utility nonprovisional patent applications, and not […]

Read More

Patent publication = published patent application

What is a patent publication? A patent publication is a published utility patent application. A patent publication is not a patent. While a published patent application may eventually issue into a patent, the patent publication consists of only the application itself, namely, the drawings and written specification. The patent publication does not provide information about […]

Read More

Should you fight for broader patent claims?

Broader patent claims: when less is more Before we dive into this discussion, let’s make sure we’re all on the same page about what we mean by broader patent claims. When it comes patent claims, broader does not necessarily mean more. In fact, it’s the opposite. Narrow claims state several elements, or claim limitations. Broad […]

Read More

Patent strategy: 5 steps to improve chances of getting a patent

Your patent strategy depends on your goals Patent strategies should be dictated by end goals. So it makes sense to start with a worthy goal, and then work backwards to formulate a patent strategy to achieve that goal. Since every patent application is different, let me generally suggest a goal that would broadly fit the […]

Read More

Does your specification support your claim amendments?

Why must claim amendments find support in the specification? There is a rigid rule in patent prosecution that is strictly enforced: you can only claim what is disclosed in the specification. You cannot claim what is not disclosed [see 35 USC 112(a)]. This means that in responding to an Office Action, you can amend the […]

Read More

What is the Full First Action Interview Pilot Program (FAI)?

What First Action Interview is not Let’s first clarify what the First Action Interview (FAI) program does not do. The FAI program does not apply to design patent applications which require a design Rocket Docket request. The FAI program also does not shorten the time for the first Office Action, also known as First Office […]

Read More

What is PPH (Patent Prosecution Highway)?

What is PPH? PPH stands for Patent Prosecution Highway, which is a cooperative program between the USPTO and participating foreign patent offices to expedite the allowance of patent applications that previously received favorable rulings. Two key acronyms are helpful here: OEE refers to the Office of Earlier Examination and OLE refers to the Office of Later […]

Read More

What is the difference between a provisional vs. nonprovisional patent application?

Provisional vs. nonprovisional applications: Which is reviewed by the USPTO? A nonprovisional patent application is normally considered the regular utility patent application. It’s what you file to get the USPTO to review your utility application and hopefully grant your patent. A provisional patent application, on the other hand, does not get reviewed. If done correctly, however, […]

Read More

How to get international utility patents

When Must a Foreign/International Patent Application be Filed? For utility patent applications, the foreign filing deadline is one year from the priority date. For most US applicants, the priority date is the filing date of the earliest US application, which may be either a provisional or nonprovisional application. What Are My Foreign Filing Options? To […]

Read More