Patent Cooperation Treaty

 By: Joel Douglas, Eric Merenstein
The Patent Cooperation Treaty (PCT) is an international patent law treaty with over 150 contracting states. The PCT provides a procedure that enables at least one applicant to apply for patent protection for an invention in one or more of the contracting states on the basis of a single PCT patent application covering the invention...

A Quick-Look Introduction to the USPTO’s New Patent Public Search System

by James Cottone
On February 1, 2022 the United States Patent and Trademark Office announced the launching of their new Patent Public Search tool, a system designed to “provide more convenient, remote, and robust full-text searching of all U.S. patents and published patent applications.” The new system builds on the capabilities of their four existing search tools, namely the Public-Examiner’s Automated...

Roles of Patents in Innovation (Abridged)

By Dan Krueger
Let me begin by dividing the patent pool into three segments: (1) patents that you alone can use; (2) patents you can use but not exclude others from using (e.g., public domain or nonexclusive license); and (3) patents you can't use. Roles in Innovation for Patents You Alone Can Use I. Providing a barrier to competition Patents are intended to create...

Never File a Continuation-in-Part

By Ed Ryan
While Continuations and Divisionals are common, Continuations-in-Part (CIPs) are an oft-forgotten, oft-misunderstood third option for continuing a patent family. Mixing features of Continuations and new filings, they present a temptation to practitioners who feel trapped by an inadequate disclosure and to inventors who have continued developing their invention after filing. However, CIPs have little to offer beyond what...

Avoiding a First-Action Final Office Action – May 14, 2018

By Ed Ryan There is a natural rhythm to patent prosecution, from non-final, to amendment, to final, to RCE, but that rhythm can be disrupted by an aggressive patent examiner. While the patent practitioner generally expects a new non-final Office Action after filing an RCE or continuing application, a first-action Final Office Action can sometimes result. This cuts off many of...

Are Patents Beneficial?

By Dan Krueger So, let's say you're at a family gathering and one of your acquaintances, upon finding out that you're a patent prosecutor, looks at you thoughtfully and says "Is it a good thing for ideas to be owned? Why is the government even in the business of granting monopolies?" How would you answer? To anybody who's been practicing for at least...