What is the Collaborative Search Pilot Program (CSP)?

What is CSP? Typically, most folks applying for utility patents desire the path of least resistance, meaning fewer rejections and less prior art cited. So, why would an applicant want an international team of patent examiners to gang up and search prior art in their respective countries? That is what the Collaborative Search Pilot Program […]

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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 […]

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Are many goods or services in a US trademark application OK?

Can you have too many goods or services in a US trademark application? Most foreign countries do not require use of the trademark for registration. So it is common to find a high number of goods or services in Madrid trademark applications that originate outside the US. The lack of a use requirement in foreign […]

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What are the new trademark filing rules for 2020?

What are the new USPTO trademark filing rules in 2020? Starting Feb. 15, 2020, certain mandatory requirements for trademark filings will take effect. These changes to trademark filing rules pertain mostly to communications with the USPTO and specimens of use. The new trademark filing rules will require nearly all new trademark applications to be filed […]

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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 […]

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Madrid Trademark – US Office Action: How to respond [66(a)]

US Office Action in Madrid Protocol Trademark Application Madrid Protocol trademark applications that enter the US through Section 66(a) will often encounter several issues. There may be substantive refusals and non-substantive issues. Substantive rejections may include a likelihood of confusion or merely descriptive refusal, or both. Non-substantive issues typically do not require an extensive response. […]

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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 […]

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What is an Intent-To-Use (ITU) trademark application?

What is an ITU application? An Intent-To-Use trademark application (ITU application) allows an applicant to apply for a trademark that has not yet been used in commerce. Use in commerce refers to the usage of your trademark in connection with selling or offering the relevant goods or services. After the initial filing, the applicant must […]

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