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 to Respond to a Patent Office Action

Responding to a Patent Office Action Since the probability is high that a utility non-provisional patent application will be rejected at least once, you should expect to receive an Office Action. If and when that Office Action is issued, don’t be surprised or disappointed. Recognize that it’s a normal part of the patenting process and […]

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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. What does an Office Action mean? A patent Office Action is a document […]

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