What is the average wait time for an examiner to begin review your utility patent application? Experienced utility patent filers know something that might be a shock to first time applicants. The utility patent wait time for a first review of your application can be unbearably long. Known as “first Office Action pendency,” just how […]
Category: Patent Applications
What are your options after an unfavorable patent appeal decision?
Unfavorable Patent Appeal Decision An ex parte patent appeal decision by the PTAB that affirms an examiner’s rejections can seem like the end of the road, but you do have some options. You can go the litigation route by filing a civil lawsuit in federal district court or appealing to the Court of Appeals for […]
What is new matter?
What is the meaning of new matter in patent applications? New matter in a patent application typically refers to something recited in the claims that is not supported by the specification. It can also refer to a description that an applicant tries to add to the specification that goes beyond the scope of the original […]
Are multiple dependent claims allowed by the USPTO?
What is a multiple dependent claim? A multiple dependent claim is a dependent claim that refers to more than one claim. The USPTO will not object to proper multiple dependent claims. Unfortunately, most specifications originating from foreign countries contain multiple dependent claims that would be improper under US patent rules. For foreign associates and applicants […]
Can you change a patent application after filing?
Can you change a patent application after it has been filed? Do ideas simply stop churning in your head after a patent application has been filed? Anyone creative enough to file a patent application would likely continue to think and improve upon their innovation. When your brain has been in a constant mode of creation, […]
What is the difference between claims and the description of the invention?
Claims vs. Description of the Invention A utility patent is not a simple thing to understand. In a typical utility patent, you’ll see a bunch of drawings labeled as Figures and paragraphs of text. Somewhere in the text is a description with numerals referring back to the figures. Towards the end of the document, a […]
What is a preferred embodiment?
What are preferred embodiments? In any other context besides patents, “preferred embodiment” would sound quite strange. Yet, the term is used so commonly and frequently in utility patents that the inexperienced reader might be tempted to gloss it without understanding its meaning. Why does a specification have to repeat it 75 times? What exactly is […]
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 […]
How to review a draft patent application and provide useful comments
What kinds of comments are useful in revising a draft patent application? So your patent attorney has send you a first draft of your utility patent application for your review. You’re not sure what to do, so you read my helpful tips on how to review a draft patent application. If the description and the […]
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 […]