What are your chances of getting a patent?

What are your chances of getting a utility patent? Utility patents are much harder to obtain than design patents. That’s no surprise. What might not be obvious is that the probability of obtaining a utility patent is a function of time – as more time passes, the chances of getting a utility patent increase. Based […]

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What is an Ex parte Quayle Action?

What is an Ex parte Quayle Office Action? An Ex parte Quayle Office Action, or “Quayle Action” for short, is issued when there are minor issues to be resolved in a patent application that is otherwise in condition for allowance. Prosecution on the merits is closed, meaning that substantive examination has concluded. There are no […]

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What is a supplemental amendment?

When is a supplemental amendment appropriate? As suggested by its name, a supplemental amendment is an additional reply to a patent Office Action. Supplemental replies should be filed only under the following circumstances: (A) Cancellation of a claim(s);(B) Adoption of the examiner suggestion(s);(C) Placement of the application in condition for allowance;(D) Reply to an Office […]

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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 […]

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How much does a patent Office Action response cost?

Office Action cost range: from simple to complex responses The cost estimate of responding to an Office Action in a utility patent application will depend upon the complexity of the issues raised by the patent examiner. What is a simple Office Action response? A simple Office Action requires a reply without arguments. Simple Office Action […]

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How to amend patent claims: marked-up amended claims

When are marked-up claims not required? Patent claims must be amended in a very certain manner. The USPTO has strict marking rules on how amended claims must be shown with respect to prior versions. The format of amended claims are generally called “marked-up” claims. There is no need to show marked-up claims in the following […]

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What is a Patent Office Action?

What is a patent Office Action? After waiting one to two years (or longer) from the filing date of your utility non-provisional patent application, you will eventually receive a letter called an “Office Action” from the patent examiner assigned to your application. As of November 2019, the average wait time for the first Office Action […]

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