Introduction Utility patents and design patents each provide valuable forms of intellectual property protection, but they protect fundamentally different aspects of an invention and offer different scopes of coverage, filing strategies, costs, and durations of protection. Understanding these distinctions is…
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When a Patent Attorney Says “Do Not Get a Patent”
One of the most surprising things clients hear during an initial consultation is this: sometimes the best legal advice is not to pursue a patent. Although patents can be powerful business assets, they are not always the most effective tool…
Missed the 12-Month Patent Deadline? Why PCT Planning Matters
For companies pursuing international patent protection, the 12-month priority deadline following a patent application filing date is one of the most critical dates in the patent process. While missing this deadline may not always be fatal, the consequences can vary…
The Importance of Applicant-Initiated Interviews in Accelerating Patent Acquisition
Applicant-initiated interviews represent one of the most underutilized yet highly effective mechanisms for expediting patent prosecution before the United States Patent and Trademark Office. While the traditional back-and-forth of office actions and written responses remains the default path, it is…
What Is the Difference Between a Design Patent and a Utility Patent?
One of the most frequent questions I receive from clients and inventors is whether they should pursue a “design patent” or a “regular patent.” The question is understandable because the terminology can be confusing. In practice, what most people refer…
Three Critical Considerations When Responding to §102 Patent Office Actions
When responding to a rejection under 35 U.S.C. § 102, it is essential to proceed with a deliberate and structured strategy, as the examiner is asserting that the claimed invention is anticipated by a single prior art reference; accordingly, three…
Federal Circuit Affirms § 101 Patent Ineligibility in Information Exchange Patent Application: Key Takeaways from In re McFadden
The United States Court of Appeals for the Federal Circuit recently issued a nonprecedential decision in In re McFadden, affirming the Patent Trial and Appeal Board’s rejection of a patent application directed to an “information exchange” system. While nonprecedential, the…
Ex Parte Reexamination Core Change – Patent Owner Gets a Pre-SNQ Shot
The United States Patent and Trademark Office has implemented a significant procedural change to ex parte reexamination practice that warrants close attention from both patent owners and litigation counsel. Patent owners are now permitted to submit a “pre-order paper” addressing…
Ex Parte Reexamination Requests: What Experienced Practitioners Watch For Before Filing
Overview Ex parte reexamination is often viewed as a cost-efficient alternative to inter partes review. That is correct, but it is also where many otherwise strong validity positions fail at the threshold. The reason is straightforward: the United States Patent…
Responding to USPTO Trademark Application Suspension Notices: Strategic Considerations for Applicants
When a trademark application is suspended by the United States Patent and Trademark Office (“USPTO”), the applicant should understand both the basis for the suspension and whether a response at that stage is advisable. This articles outlines the principal legal…