What are claim amendments?

What are patent claim amendments? Claim amendments are a natural part of the utility patent process. A typical utility nonprovisional patent application will receive at least one Office Action rejecting the claims. It is highly likely that your Office Action response will contain a combination of claim amendments and arguments in order to overcome the […]

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What are allowable claims?

What are allowed or allowable claims in a utility patent application? The goal of filing a utility patent application is to get an allowance of claims with reasonably broad scope. If you have received a Notice of Allowance or Office Action identifying certain allowable claims, then congratulations. That is no small feat. But, the patent […]

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Do you need a prototype before filing a patent?

Do you need a prototype before a patent is filed? No, you do not need to build a working prototype before filing a patent application. However, it helps to think through all the details of what it would take to build your product. Describing your invention in writing with as much detail as possible will […]

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What is nonobvious?

What does “obvious” mean in patent language? The everyday colloquial use of the term “obvious” is so simple that it can be hard to define. Both dictionary.com and Merriam-Webster share a common definition of easily seen or understood. You can say that obviousness refers to something that is evident or recognizable. In the patent world, […]

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How to patent government funded inventions

What is an invention funded by the federal government? Certain rules pertain to any private companies or persons seeking to patent a federally funded invention. We will dive into certain basic rules further below. At the outset, let’s clarify which government funded inventions are subject to these rules. Under the Bayh-Dole Act which is codified […]

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What is a patent rejection?

Has your utility patent application been rejected? If so, welcome to the club. Approximately 90% of utility patent applications will get rejected. Utility applications often receive multiple patent rejections. So do not be disappointed. Rejections are the norm for utility patents. This article will help clarify a patent rejection so that you can form an […]

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What is a utility divisional application?

When is a divisional application appropriate? The option to file a divisional application arises if an Examiner thinks that your patent application contains multiple inventions and thus issues a Restriction Requirement compelling you to pick one. A response to a Restriction Requirement must include an election of certain claims, thereby leaving non-elected claims to be […]

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What is a Species Restriction?

What is a species restriction? A species restriction differs from the more commonly known Restriction Requirement which arises when an Examiner feels that a patent application has multiple inventions. In a species restriction, the applicant is required to make an “election of species” according to patentably distinct species carved out by the Examiner. Species restrictions […]

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What are hidden or unexpected patent costs?

Expecting unexpected patent costs I still remember the one piece of sage advice given to prepare me for my wedding day: expect the unexpected. Having the expectation that not everything would go as planned helped my bride and me to avoid getting frazzled when the inevitable hiccups occurred. My goal with this article is to […]

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