News & Analysis as of

Patent Applications United States Patent and Trademark Office

When Final is Not So Final: Strategies for Overcoming Final Rejections

Typically, during prosecution of a U.S. application, a second or subsequent Office Action could be made final by the patent examiner at which time prosecution of the application is essentially closed. For an applicant who...more

Patent Prosecution Data Analytics

Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent...more

To File or Not File Provisional Patent Applications – Part 1: The Pros

Since 1995, the United States has allowed patent applicants to file provisional applications as an alternative to filing non-provisional utility patent applications (often referred to as “regular” or “conventional”...more

Patents 101: The Different Types of Patents

by Revision Legal on

Any business entity or inventor that is considering securing patent rights for a novel and non-obvious invention needs to know a little bit about the different types of patents that are available from the United States Patent...more

Cancer Immunotherapy Pilot Program Set to Expire in June Unless Extended

Last year, President Obama announced the National Cancer Moonshot, an initiative with the goal of making ten years’ worth of advances in cancer research and treatment over the following five years. In support of this...more

Patent Grace Period Laws in the IP5 Patent Offices: Some Similarities But Largely Different

Life science and other high technology companies most frequently file patent applications in five IP offices (IP5), namely: the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese...more

Examining the Examiner Interview

Compact or streamlined prosecution is in vogue in prosecution circles these days. While examiner interviews are a tried and true “old” tool in a prosecutor’s tool box, they are reemerging as a means to facilitate compact or...more

Intellectual Property and E-commerce Shops

by Revision Legal on

If you’re the owner of an e-commerce shop, you deal with intellectual property everyday. Intellectual property refers to the creations of the human mind. This includes symbols, images, names, inventions, and literary and...more

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

by Ward and Smith, P.A. on

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

USPTO eMod Project To Improve E- Filing/Managing Patent Applications

The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a Patent Quality Chat webinar on May 9, 2017 (click here for the webinar slides).  Highlighted features and the...more

New Fed Circuit decision bolsters on-sale bar

by Thompson Coburn LLP on

Patent litigators will tell you that there are many ways to invalidate a patent. One of their favorites is a self-inflicted ground of invalidity known as the “on-sale bar.” Under patent law, if you sell (or offer to sell)...more

Provisional Patent Applications Versus Utility Patent Applications

by Snell & Wilmer on

Provisional applications were introduced in the United States in the Inventor’s Protection Act of 1995. The purpose was to facilitate a quick filing, if necessary, to establish a priority filing date and salvage potential...more

Startups: Patent Filing Is Cheaper Than You Think

by Revision Legal on

Filing a patent application as a startup can seem daunting and infeasible because the cost associated with obtaining a patent is so high. For most startups money is tight, and spending money on something as intangible as...more

Track One: Still the One for Accelerating Patent Examination in the US?

Speed is everything in the business world. The fastest company to market wins a competitive advantage. However, investors are often reluctant to back new products that do not have patent protection, and backlogs at the US...more

Global Patent Prosecution Newsletter - March 2017

The March 2017 inaugural issue of Sterne Kessler's Global Patent Prosecution Newsletter includes information and practical tips for accelerated examination strategies in the United States, Europe, and Asia. Please see...more

Continuation Patent Applications: 10 Reasons You Should Consider Filing

If you’ve filed for patents in any industry – be it biotech, high tech, manufacturing, or another sector altogether – you’ve likely been faced with a decision on whether to file a “continuation” application at the US Patent...more

Reflections on USPTO Design Day 2017: What’s Next?

Each April, the design patent community gathers at the USPTO to discuss design prosecution and protection. This year, on April 25, another sell-out crowd of over 300 people attended the 11th Annual USPTO Design Day, which is...more

Fast Track Examination in the U.S. Patent and Trademark Office

Track One Prioritized Examination - Track One examination allows an applicant to pay for prioritized examination and to receive a final disposition usually in less than one year (compared to two to four years for regular...more

Federal Circuit Denies SHzoom's Bid to Make Trading Technologies Decision Precedential, But the Case is Still Good Law

by Fenwick & West LLP on

On Wednesday, the Federal Circuit, in a per curiam order, denied SHzoom's motion to make the Trading Technologies opinion precedential. The order of course gave no reasons for the decision. Nonetheless, the underlying...more

Five things academic scientists should know when pursuing their first patent application – Part II of V

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner. The online form allows...more

Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner. The online form allows...more

To Seek Design Protection or Not, That is the Question!

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection.  This blog...more

Foreign Filing License in a Jiffy

Foreign filing licenses are pretty routine: file an application and (assuming the application is not marked by a security screener) with the filing receipt or another USPTO official notice, there will be an indication that a...more

Global Dossier Expanded To More Patent Applications Around the World

The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide. The public including applicants, patent holders,...more

AliceStorm Update February 2017

by Fenwick & West LLP on

As many of my readers noticed, I didn't publish any of my own blogs in January and February. As it turned out, I suffered from a peculiar form of seasonal affective disorder (SAD), what I would call SMIAD: Subject Matter...more

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