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Patent Preparation and Prosecution

Patenting Improved Articles That Use Proprietary 3rd Party Materials

Under U.S. law, improved articles of manufacture may be patentable if they are novel and non-obvious. Sometimes, an inventor comes up with a new article that is faster, stronger, more flexible, more rigid, lighter, etc. by using new materials to make the article. If the article has never been made with those materials, and if…

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Have Your Cake and Eat It Too – Obtaining Broad Claims That Define a Device or Apparatus Based on How it Works

Pros and Cons of Apparatus and Method of Use Claims Devices or apparatuses can often be protected by using two kinds of patent claims: apparatus and method of use claims. Each approach has its benefits and drawbacks. In general, apparatus claims expand the class of direct infringers relative to method of use claims but are…

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Are You and Your Patent Attorney Challenging Each Other?

Since we have been living with managed medical care for some time, many people have become accustomed to the idea that they need to act as their own advocate when dealing with medical professionals.  Thus, we have become more comfortable with questioning our doctor’s opinions and the bases for them and with the idea that…

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Expediting Patent Examination

The U.S. Patent & Trademark Office (PTO) has had a variety of procedures to enable applicants to speed up the examination of their applications.  However, they’ve generally been limited in some fashion or had burdensome requirements.  That has changed with the introduction of “Track One Prioritized Examination.” With this program, applicants can get a final…

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Improving Patent Quality – Putting Teeth Into the Enablement Requirement

The U.S. Patent & Trademark Office (PTO) recently requested public comment on how applicants can improve patent quality.  The PTO’s Notice describes possible procedures such as requiring applicants to correlate claim terms to the specification and state whether examples are intended to be limiting or merely illustrative and requiring applicants to provide glossaries of potentially…

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Can You Revive Your Abandoned Patent Application? – Petitions to Revive

Failure to take certain required actions can result in the abandonment of a U.S. patent application or issued patent.  For example, if an office action is not replied to within six months of issuance or if an issue fee is not paid within three months of the issuance of a Notice of Allowance, a patent…

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Filing and Prosecution Strategies for AIA First Inventor to File System

Although the America Invents Act (AIA) was signed into law in September 2011, the “first inventor to file” provisions did not immediately take effect.  However, they will take effect in less than two months.  Are you ready? The shift to a first inventor to file system represents a significant change in U.S. Patent Law that…

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How Long Will it Take Me to Get a Patent?

Clients often want to know how long it will take them to get a patent.  Of course, whether they get one at all will depend on whether their invention is novel and non-obvious as well as how broadly their claims are drafted.  However, those questions aside, there is also the issue of how quickly the…

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Patenting of Games

Growing up in a pre-cable TV world, I played a lot of games such as Monopoly, Clue, Life, Chutes & Ladders, Checkers, Chess and countless others.  With all of the cases coming out about statutory subject matter in the last few years, I wondered under what circumstances games could be patented.  As it turns out,…

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Avoiding Indefiniteness Traps – Specifying Measurement Standards and Providing Examples

U.S. Patent Law requires that patent claims be sufficiently definite such that one of ordinary skill in the art could ascertain their metes and bounds.  Accused infringers may seek to invalidate claims under 35 U.S.C. § 112, ¶ 2 if the claims are not definite.  In considering such issues, the courts typically look at whether…

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