An Information Disclosure Statement (also known as an IDS) is a document (IDS form PTO/SB/08a) submitted to USPTO identifying the prior art (e.g., patents, publications, non-patent literature) you're aware of. The purpose of the IDS is to satisfy your duty of candor and good faith in dealing with the USPTO. Failure to submit the IDS may breach this duty and invalidate your … [Read more...]
After filing a patent application
After filing a patent application, the invention is now patent pending which marks the point at which it is safe to start marketing the invention. The process of patent protecting the invention has now formally started. Browse related articles below.
Patent Pending: Everything you wanted to know
Updated: December 28, 2021 Inventors and competitors often misunderstand the significance of patent pending. Inventors will mark their products with “Patent Pending” thinking that no one else can copy their invention. Their understanding would be incorrect. Competitors might see patent pending marked on a product and think that this means the product is already patented. … [Read more...]
Can You Sell A Provisional Patent Application?
Do you have an idea and want to make money by selling the idea to someone else by filing a provisional patent application? You’re not alone, many people wonder about this. Truth is, it’s unlikely but there are better ways of selling an “idea.” Can you sell a provisional patent application? The quick answer is yes, it is possible. But it rarely happens. Selling a provisional … [Read more...]
What is an Office Action?
An office action is a written explanation of an examiner's review of your patent application. In the office action, the examiner will object to the formalities of the application and reject or allow the patent application. This article explains several types of Office Actions and how to respond to them: Filing receipt Notice to file missing parts Restriction … [Read more...]
Pros and cons of filing a continuation-in-part application
Bottom line The pro for filing a continuation-in-part application is lower downstream costs. The cons are a shortened patent term and also your prior arguments and statements made in the parent application/patent can and will be used against you to narrowly interpret the claim language in a patent maturing from the subsequent continuation-in-part application. To discuss … [Read more...]
Enablement easier to satisfy for broader patent claims
With patents, everything starts and ends with the claims which means that the specification, the arguments presented during prosecution and all of the patent applicant’s efforts affect the language of the claims. For example, a patent specification must enable one of ordinary skill in the art to make and use the invention as recited in the claims. Alcon Research Ltd. v. … [Read more...]
Does a restriction requirement disclaim non-elected species?
Below, Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., LTD (Fed. Cir. August 1, 2018) is discussed in terms of whether the scope of design patent protection is affected when electing a species in response to a restriction requirement. However, the context of the parties and how the litigation arose provides insights on how U.S. companies might better protect … [Read more...]
Claim of priority to an earlier filed patent application
What is a claim of priority? A claim of priority is a reference in a later filed patent application back to an earlier filed patent application. What is the benefit? The claim of priority allows the later-filed application to enjoy a priority date as of the filing date of the earlier filed patent application and not the actual filing date of the later filed patent … [Read more...]