What is a PCT patent search of prior art?

Will you get a prior art search in your PCT patent application? Yes, a prior art patent search is typically made in each PCT application. The results of this PCT international search are summarized in an initial document called an International Search Report (ISR). This first prior art search, also known as the “main international […]

Read More

Can others file the same patent in a different country?

Same patent by others in different country? If an earlier applicant obtains a patent first in their own country, can others subsequently patent the same invention in a different country? The simple answer “should” be no. The reality, however, is more complicated. What happens in the real patent world does not always follow what should […]

Read More

How to analyze prior art in Office Action

Prior art cited in patent Office Action When prior art is cited in an Office Action to reject your claims, the typical reaction of applicants is a generalization of how their invention is different. That may be true. A persuasive Office Action response, however, will require a deeper analysis of the prior art. So you […]

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

How does the USPTO get prior art?

How do USPTO patent examiners get prior art? When examining patent applications, USPTO examiners get relevant prior art through two primary means: the patent examiner searches the prior art; and relevant prior art is submitted for the examiner’s consideration. The active approach of the examiner searching prior art is straightforward and no different than what […]

Read More

What is prior art?

Drawing the line between old and new The term “prior art” is frequently used in the patent world to refer to what already exists. It’s the old stuff that can’t be patented again. Prior art may consist of documents, things and processes that have been sold or used in the past. When it comes to the […]

Read More

What is a novelty rejection under Section 102?

What is a novel invention? Patent novelty refers to the uniqueness of an invention, but it’s actually much more specific. An invention is novel if no single prior art reference discloses all the components that form the claimed invention. So, the two critical pieces of information that must be analyzed to determine novelty are: patent claims; […]

Read More

What is an IDS?

What is an Information Disclosure Statement (IDS)? A patent applicant has a duty to disclose to the USPTO all known prior art or other information may be material to the patentability of the applied for invention. To satisfy this duty of candor, the prior art information is submitted to the USPTO in the form of […]

Read More

Can an expired patent still serve as prior art?

Yes, because prior art has nothing to do with whether a prior patent is live or dead. The relevance and content of the teaching are what matters. Therefore, an expired patent is no different from, for example, a white paper in that both contain publicly accessible information that could block a later-filed patent application claiming the […]

Read More

What is intended use claim language?

“Intended use” refers to language in a patent claim that arguably describes a purpose or function of the thing being claimed. It is, therefore, not given any patentable weight by a patent examiner who has deemed a claim limitation to constitute intended use. By regarding certain claim language as intended use, the examiner can generally disregard the […]

Read More