What is a patent reexamination?

What is an ex parte (1-sided) patent reexamination request? If you have hundreds of thousands of dollars to fight a patent, you can pursue litigation-like options such as Post Grant Review (PGR) or Inter Partes Review (IPR). If not, an ex parte reexamination request may arguably be the most affordable way to challenge a patent. […]

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What is a PCT prior art search report (written opinion)?

What is a PCT prior art search report? Patent examiners review PCT applications in the same way that the USPTO examines utility nonprovisional patent applications. In particular, examiners review PCT claims by searching for relevant prior art to determine novelty, nonobviousness and usefulness (utility). The examiner will then summarize findings in a PCT prior art […]

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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 PCT patent search of prior art?

Will you get a prior art search in your PCT patent application? Yes, a prior art patent search is typically made in each PCT application. The results of this PCT international search are summarized in an initial document called an International Search Report (ISR). This first prior art search, also known as the “main international […]

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Can others file the same patent in a different country?

Same patent by others in different country? If an earlier applicant obtains a patent first in their own country, can others subsequently patent the same invention in a different country? The simple answer “should” be no. The reality, however, is more complicated. What happens in the real patent world does not always follow what should […]

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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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Patent publication = published patent application

What is a patent publication? A patent publication is a published utility patent application. A patent publication is not a patent. While a published patent application may eventually issue into a patent, the patent publication consists of only the application itself, namely, the drawings and written specification. The patent publication does not provide information about […]

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How does the USPTO get prior art?

How do USPTO patent examiners get prior art? When examining patent applications, USPTO examiners get relevant prior art through two primary means: the patent examiner searches the prior art; and relevant prior art is submitted for the examiner’s consideration. The active approach of the examiner searching prior art is straightforward and no different than what […]

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What is prior art?

Drawing the line between old and new The term “prior art” is frequently used in the patent world to refer to what already exists. It’s the old stuff that can’t be patented again. Prior art may consist of documents, things and processes that have been sold or used in the past. When it comes to the […]

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What is a novelty rejection under Section 102?

What is a novel invention? Patent novelty refers to the uniqueness of an invention, but it’s actually much more specific. An invention is novel if no single prior art reference discloses all the components that form the claimed invention. So, the two critical pieces of information that must be analyzed to determine novelty are: patent claims; […]

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