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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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 […]

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What to do before utility patent application is published

Utility nonprovisional patent applications are typically published around 18 months from the priority date. This event usually comes and goes without much fanfare. Before your patent application is published, applicants should consider at least two questions: Have any improvements or modifications been made? Do you want to protect those changes in foreign countries? Applicants who […]

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CIP vs. New Stand-Alone Patent Application: What are tradeoffs?

CIP or new patent application? When it comes to new subject matter that is related to a pending utility patent application, should you file a CIP (continuation-in-part) or new patent application without a priority claim? It’s not an easy decision, and each option comes with its own pros and cons. Option 1: New Stand-Alone Patent […]

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CIP vs. Continuation: Which should you file?

CIP or Continuation: What are the differences? Both types of applications fall under the category of a continuing application. A continuing application is a separately filed application that is linked to a previously filed pending non-provisional application. By definition, the continuing application will have at least some of the original subject matter contained in the […]

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