Posts Tagged: patent prosecution


“Time is money” rings especially true for those pursuing patents at the USPTO. Anyone who has previously dealt with this organization can attest to the fact that it is slow moving and extremely costly. Being that this single government …

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Perhaps the most shocking difference between Track One applications and standard applications is allowance rate. Standard applications have an allowance rate of 70%; however, Track One applications are approved 89% of the time. Put another way, a Track One application is 19 …

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The availability of information to gain insights based on what is happening to others who are similarly situated means decision makers can leverage the experiences of many when determining how best to proceed. For example, in the patent world …

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This was the SAWS program; an oversight procedure for bringing information to the attention of management. It was designed, by intention, to cast a broad and sweeping net. It was designed to permit resources to be brought to bear …

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Patent owners must modify their strategies during prosecution to make their patents and portfolios less susceptible to post grant challenges. This strategy must take into account the cost of filing a petition by a challenger. Patent owners must obtain …

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Knowing when to give up on a patent application is one of the most critical questions facing for any patent applicant… When faced with the decision regarding whether to file an RCE or file an Appeal, the desire to …

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When reading patents it is not at all unusual for a patent to be issued a number of years after the original patent application was filed, but it isn't every day that you see a patent issue more than 12 …

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As is evident from Figure 2, a significant problem affecting USPTO performance has been identified as the Request for Continued Examination (RCE) Backlog, which grow dramatically from 2009 into 2013. The intricacies of RCE practice go beyond the scope of this article, …

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The first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (FOAM). At this point you are now truly beginning what most would …

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On the method claims, the test, derived from Prometheus, is whether the claims add enough to a natural principle/law of nature/ natural phenomenon to make them go beyond claiming just the natural principle/law of natural/natural phenomenon …

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There is no way to know for sure whether the applicant could have achieved an allowance had they hung in, but it would have been helpful to know that the examiner was very experienced and likely had decision making …

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For patent prosecutors and their clients, restriction requirements represent a significant cost increase as splitting one patent application into several new applications results in the multiplication of fees and, often, loss of protection due to expense limitations. The issuance …

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