Patenting for Inventors

Learn what divisional patent applications are and when you should file one.  Divisional patent applications are useful when the patent examiner has previously required you to split up your originally filed application because you claimed too many inventions.  Instead of losing out on one of your inventions, you can file a divisional patent application.

If you are considering filing patent applications related to an application that you already filed, then you might be interested in a continuing patent application. There are different types and you should know the differences. In this episode I do a general overview of the different types of continuing applications: divisionals, continuations, continuation-in-parts, reissues, and continued prosec...

Learn how to respond to an election of species requirement from the patent office.  An examiner will not examine your invention if you are claiming too many variations of the same thing.  In this episode learn how to respond to such a requirement.

Learn what a patent application restriction requirement is.  A patent application is only allowed to have one invention, so what are you to do if the examiner says that your patent application actually contains more than one invention. You'll have to file a response to the restriction requirement and in this episode I go through how to do that.

Learn how to amend the patent application specification and the requirements of what to do if you have to do a substitute specification and how to mark up your application with strikethroughs, underlines, and double brackets.

In this episode I go through how to amend patent drawings.

In this episode I go through the mechanics of how to mark up any claims that you have amended.  Know how to properly use underlining, strikethroughs, and double brackets to tell the examiner what exactly has changed and what has remained the same since the last set of claims.

When you amend claims, you can't just send a new set of claims to the patent examiner and ask for a reconsideration, you have to identify and mark up your claims in a specific way. In this episode I discuss how to identify claims that have undergone some kind of change from the original claims.

In this episode I go through how to respond to obviousness rejections by using secondary considerations.  Secondary considerations for non-obviousness include reasons for patentability, including: commercial success, long felt but unsolved need, failure of others, skepticism by experts, praise by others, teaching away, copying by others, synergistic effects, inoperative combination, and lack of su...

If the the Patent Office sends you an rejection based on obviousness, how should you respond? If the combination of previous products still don't have all the the features of your invention, then you might want to consider using the All Limitations/Elements Test in your response. Listen to find out how!

In this episode I introduce obviousness rejection responses. Your application can be rejected for lack of utility, lack of novelty, and obviousness.  If the examiner says that your invention is obvious, how are you supposed to respond?  This will be the first of likely many episodes of how to respond to these kinds of rejections. 

In this episode I go through how to respond to what is called a Section 102, novelty, or anticipation rejection. All of these terms mean that the examiner believes that your invention already exists in the public, so you can't get a patent on it.  Is all hope lost? Not necessarily! Listen to this episode to find out how to respond to such a rejection.

In this episode I go over the basics of how to prepare a response to an Office Action, such as the formatting, introduction, and conclusion.

In this episode I go over the three general options you have for responding to an Office Action, which are: abandon, amend, or argue.

In this episode I go over the basics of how to read an Office Action, and the steps you should take when you receive an Office Action.

In this episode I go through what patent objections are, how they differ from patent rejections and I talk about the different types of objections and how to overcome them.

In this episode I go over the basics of the different types of patent rejections. The main rejections you will see are called: 101 (subject matter), 102 (anticipation), 103 (obviousness), and 112 (specification and distinctly claiming subject matter) rejections. Learn what they and then in later episodes I'll cover how to handle them.

In this episode I go over the details of paying patent maintenance fees.  Your patent will generally last 20 years from your filing date, but you have to pay fees at the 3.5, 7.5 and 11.5 year marks from your date of grant. I go over these details and others in this episode.

In this episode I go over what to do when you get a Notice of Allowance and Issue Notification for your patent.

In this episode I go over the pros and cons of filing a U.S. or PCT application first. Factors to consider might be what countries you want to file in, costs, information you will get, and whether you have multiple inventions in your application.

In this episode I go through to how get patents in non-PCT countries. Most industrialized nations are part of the Patent Cooperation Treaty, so you can use a single PCT application to enter into the national stage application of most countries throughout the world and generally have 30 months to do so from your earliest filed application.  But some countries have not joined that treaty so you need...

In this episode I go over the PCT application timelines and deadlines. Most important are the 12 month and 30 month deadlines, but there are also events at 19 and 22 months that you should be aware of as well as some other events that happen at certain times. If you're at all interested in getting patent protection in foreign countries then you have to know you deadlines!

In this episode I go through all the details of how to file a PCT (international) patent application at the USPTO Receiving Office.  I focus on how to fill out the document called the Request and how to upload your documents to the Patent Office.

In this episode I go over some of the main differences between U.S. and PCT (international) applications, including formatting differences, reference number differences, and claim drafting differences. If you want to take your U.S. application and make it ready for PCT filing, then you should know these differences.

In this episode I go over what a PCT (international) patent application is and why you might want to file one.  If you are interested in getting patent protection anywhere outside the United States, there's a good chance you'll want to file a PCT application.