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 is a trademark refusal?

What are the different types of trademark refusals? As much as you try to avoid it, you may receive a refusal to register your mark by the USPTO. Not all trademark refusals are the same. Some are based on similarities to prior registrations or pending applications. Other refusals may be based on descriptive qualities in […]

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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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How can a design mark be distinguishable and registrable over a word mark?

How will a design mark application be compared to a word mark registration? To register a trademark containing numbers and/or letters, a trademark application may typically be filed for the word mark (standard characters) or the design mark (e.g., logo). As discussed in this post on their differences, a word mark application covers the wording […]

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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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The Art of Persuasion: How to persuade IP examiners

Why is persuasion necessary? If you’re going to be an IP attorney, you must be able to persuade. There is no way around it. Whether you’re focused on IP litigation or prosecution, the skill of persuasion is critical. Here’s the problem. Persuasion involves people skills and a proper balance of listening and speaking. When it […]

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How to analyze prior art in Office Action

Prior art cited in patent Office Action When prior art is cited in an Office Action to reject your claims, the typical reaction of applicants is a generalization of how their invention is different. That may be true. A persuasive Office Action response, however, will require a deeper analysis of the prior art. So you […]

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What are your chances of getting a patent?

What are your chances of getting a utility patent? Utility patents are much harder to obtain than design patents. That’s no surprise. What might not be obvious is that the probability of obtaining a utility patent is a function of time – as more time passes, the chances of getting a utility patent increase. Based […]

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What is an Ex parte Quayle Action?

What is an Ex parte Quayle Office Action? An Ex parte Quayle Office Action, or “Quayle Action” for short, is issued when there are minor issues to be resolved in a patent application that is otherwise in condition for allowance. Prosecution on the merits is closed, meaning that substantive examination has concluded. There are no […]

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