What is subject matter eligibility?

What makes an invention eligible for patent protection? Not every new thing is patentable. A concept might be unique, and yet ineligible for patent protection. Subject matter eligibility refers to whether an invention is qualified for patent protection. You can think of patenting as satisfying at least two conditions: eligibility and uniqueness. If the subject […]

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How Many Patents By Patent Attorney: How to Search

How to Use Patent Public Search (PPUBS) Wouldn’t it be great if you can find how many patents have been obtained by a patent attorney or agent? Using the new tool by the USPTO called Patent Public Search (PPUBS), you can search for patent grants by practitioner name. On the welcome page, you will find […]

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How To File A US Utility Nonprovisional Patent

What is a utility nonprovisional patent application? Unlike design patents, utility patents protect functionality. To get a utility patent, you have to file a utility nonprovisional patent application and ultimately get it allowed. What makes the utility patent process unique and a bit more complicated is the option of filing a preliminary placeholder application called […]

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What is patent prosecution?

What does patent prosecution mean? Patent prosecution refers to the writing, filing and handling of patent applications. It encompasses the patent examination process from initial filing to the grant, including all the back-and-forth responses with the USPTO. Prosecuting a patent application includes the following: Unlike a criminal prosecutor who is constantly involved in trials, patent […]

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What is a straight continuation application?

What does straight continuation mean? Patent attorneys will sometimes use the term “straight continuation” to refer to a specific type of child application that stems from a parent patent application. A straight continuation is simply a child application that does not contain new matter. In contrast, a continuation-in-part (CIP) adds subject matter that was not […]

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Is a method of treatment patentable in the US?

Are methods of treating humans patentable in the US? Yes, a medical method of treatment is patentable in the US. Of course, methods of treating human health issues must meet all conditions of patentability. Patenting a method of medical treatment would still involve hurdles of obviousness and lack of novelty. So it is possible to […]

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Patent rejected: What happens next?

Will your patent be rejected? Almost certainly for a utility patent, and probably not for a design patent. Here are statistics on whether your patent will be rejected. A nonprovisional utility patent application has a roughly 90% probability of at least one rejection. A design patent application has an approximately 86% chance of approval. Basically, […]

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Smarter Office Action Response: File a CIP and skip OA?

What is a smarter way to respond to multiple Office Actions? If you haven’t figured it out already, you’ll soon learn that your utility nonprovisional patent will encounter rejections. Multiple Office Actions are common in utility patent applications. While it’s normal to respond to the first non-final Office Action, what do you do when you […]

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How to Review Office Action Response

How to Review a Draft Office Action Response Roughly 90% of utility patent applications will get rejected at least once. When it comes to utility patent applications, rejections come with the territory. The question is not if you get rejected, but when you get rejected. Expect at least one Office Action in your nonprovisional patent […]

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