Insights

Beginner, intermediate, and expert-level posts, videos, and long-form articles.

Category: Patent Prosecution

The Patent Prosecution Highway Takes a New Direction

By Colin P. Cahoon

In a prior article, we reported on the Patent Prosecution Highway (“PPH”) program developed to promote fast-track patent examination procedures and allow patent offices from around the world to take advantage of work already done by other offices. The PPH was one of the initiatives that was undertaken by the USPTO to help with the always increasing load of patent examinations.

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The USPTO Count System: Using the Count-Carrot to Your Advantage

By Bobby W. Braxton

Everyone knows that there are times that are better than others for obtaining good deals.   One of the best times to buy a new car is at the end of the month when the car salesman is desperately trying to reach his or her quota for the month. Better deals can be had on retail items after the holiday season. Likewise, there are times when it is better to negotiate with the United States Patent and Trademark Office (USPTO) during the prosecution of a patent.

A patent examiner’s perfor

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The Evolving Effect of Working Requirements in Foreign Jurisdictions

By Amanda K. Jenkins

The patent rules of many foreign jurisdictions contain working requirements. A working requirement is the requirement that, after a certain number of years, the patented invention be worked on a commercial scale in the country. The effect of these requirements has evolved in the last few years in many countries due to amendments to their patent laws.

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Strengthening Your Patent Portfolio Through Reexamination

By Zach W. Hilton

In recent years, the United States Patent and Trademark Office (“PTO”) has been plagued with a substantial backlog of pending patent applications awaiting examination. The PTO reports that it now takes a little over two years on average to provide an applicant with a first office action. As a result, the PTO has been under increased pressure to accelerate the examination process.

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Patent Pending: A Label with Bark & Bite

By Bobby W. Braxton

You may have noticed the phrases “patented” or “patent pending” stamped onto various products without understanding the message, power, or responsibility that each phrase carries. “Patent pending” refers to an application wherein patent protection has been sought but a patent has not yet been issued. As it may take several years, depending on the technology, before a patent issues, there can be significant lengths of time during which the owner of an invention may sell a product embodying the invention without the benefit of patent protection.

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Can I Patent My Teddy Bear?

By Colin P. Cahoon

Years ago a non-patent lawyer colleague of mine told me that he had been asked by one of his clients if it was possible to obtain patent protection on the client’s new stuffed animal design.  “There was nothing special about what the stuffed animal did or how it was made.  It just looked like, you know, a variation on a teddy bear.  The client wanted to know if we could get a patent on the look of this fluffy creation, and I said ‘No.’”  I informed my colleague that he needed to call the client back and revise his answer, because he had just given bad advice.

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The PTO’s New Accelerated Examination Program—Heaven Sent or Pandora’s Box?

By Zach W. Hilton

In March, the United States Patent and Trademark Office (“PTO”) celebrated the issuance of the first patent under its new accelerated examination program.  This patent issued from an application filed on September 29, 2006.  Implemented in August 2006, the accelerated examination program allows an applicant to dramatically shorten the time an application spends in the examination process.

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