All ideas can be protected by a patent except for abstract ideas, laws of nature, and natural phenomena. Nevertheless, many of these ideas, although they can be patented, won't be patented. The invention must be novel and nonobvious on the merits to be patented. The distinction I’m making is between eligibility for patent protection versus patented. You need to understand … [Read more...]
What is the Patent Prosecution Highway or PPH?
The Patent Prosecution Highway expedites the allowance of a patent application. When a claim of a patent application in the United States is allowed, a PPH request can be filed for a patent application filed in a foreign patent office. The PPH request allows the examiner of the foreign patent office to allow the case based on the allowance given by the U.S. examiner. The … [Read more...]
What is an examiner’s amendment?
An examiner's amendment is an office action where the examiner amends the patent application upon authorization of the applicant. Normally, the applicant is responsible for amending the application to overcome any objections and rejections from the examiner. However, in this case, the examiner is amending the application. Why would the examiner make an examiner’s … [Read more...]
What is an Ex parte Quayle Action?
An Ex parte Quayle Action is an action where the claims have been allowed but the patent application is objected to for certain technicalities (i.e., minor formalities). The Ex parte Quayle Action officially closes prosecution and requires the applicant to fix the technicalities. A response must be filed within 2 months of the mail date of the office action and may be filed … [Read more...]
What is a Notice to File Missing Parts?
A Notice to File Missing Parts is an office action identifying part(s) of the patent application that was not initially filed but should have been filed. A complete patent application was not filed. Those parts must now be filed to complete the patent application. Otherwise, examination on the merits of the invention will be delayed. A response including the identified … [Read more...]
Office Actions: Rejections versus Objections
A rejection means that the examiner will not allow the claimed invention based on its merit. The examiner is rejecting the claims as being ineligible for patent protection, not novel or not new, obvious, or indefinite. An objection means that the technicalities or formalities of the patent application are incorrect. They need to be fixed before the patent application can … [Read more...]
What is a final office action v. the non-final office action?
A final office action means the examiner has rejected the patent application and does not need to consider any further claim amendments and arguments. The examination has ended and the patent application will be abandoned. Please note that a final office action is never final. The examination can always be continued by filing a request for continued examination (RCE), a … [Read more...]
What is a filing receipt for a patent application?
A filing receipt is a document from the Patent Office which lists basic and critical information about your patent application. Basic information includes, for example, the filing date and the serial number of your patent application. Critical information (highlighted in green below) includes information related to, for example, any claim of priority and foreign filing … [Read more...]