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Tag: patent prosecution

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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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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The Dangers of “Stuffing” Your Patent Applications with Undeveloped Ideas

Many companies build an IP portfolio around particular products, and the portfolio evolves over time as new refinements and improvements to the original concept are developed.  This sometimes raises the question of whether various different inventions should be consolidated into a single application or split into separate applications.  One benefit to consolidation is that it…

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Do You Need A Patent Search?

Patent applicants who are new to the patenting process often ask whether they need to do a patentability search prior to filing a patent application.  The answer is it depends.  Except in the case of applicants who are seeking to have the examination process expedited, the U.S. Patent & Trademark Office (“PTO”) does not require…

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Do You Know What You’re Looking for? – Clarifying Your Patenting Goals

Before you begin spending money on the patenting process, it is important to clarify what you hope to achieve with patents.  Too many times, we have encountered clients who dove into the process without a clear understanding of what they hoped to achieve, only to be disappointed at the results and the expense of getting…

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Have You Checked Your Pending Patent Applications Lately?

When is the last time you took a look at the claims of your patent applications that are still pending?  Was it when you filed the applications?  How long ago was that?  If you are waiting for a first office action from the U.S. Patent & Trademark Office, it may have been over two years…

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