Welcome to PatentablyDefinedTM.

If you have found your way here, you probably have an interest in transacting business with the USPTO. PatentablyDefined is a blog directed exclusively to this subject. By providing practical information, discussions of prosecution strategies, and examples, PatentablyDefined has become a trusted resource for inventors and patent practitioners alike. So browse this blog and feel free to consider and/or use the information and examples discussed here.

A Few Ways To Get On The Bad Side Of Your Examiner

February 2, 2010

It is almost always in an Applicant’s best interest to maintain the best working relationship possible with an Examiner. After all, a happy Examiner is more likely to be a helpful Examiner. Also, despite the high turnover at the USPTO, you may very well be working with an Examiner again. So, staying on an Examiner’s [...]

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The USPTO Requests Use Of A New Version Of EFS-Web Fillable E-IDS Form

January 30, 2010

Earlier this month, the USPTO announced a new version (2.1.17) of its EFS-Web fillable e-IDS form (Form PTO/SB/08A). This new version permits up to 300 combined citations of U.S. patents and U.S. patent application publications in a single IDS form. The USPTO has requested that practitioners begin using this form starting January 31, 2010. Submission [...]

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The Five Requirements Of Every Petition In The USPTO

December 15, 2009

Introduction Most actions during prosecution of a patent application in the USPTO are eventually subject to quasi-judicial review by an appeal to the Board of Patent Appeals and Interferences. The classic example of an action that is subject to this type of review is an art (§102 and/or §103) rejection of a claim. Other actions, [...]

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Claiming The Benefit Of Foreign Priority And Examples Of How To Do It

December 15, 2009

This post discusses a less common but nonetheless important point that my earlier post on this subject did not – the mechanics of how to claim priority to a foreign patent document, along with a few examples. Generally, the approach for claiming the benefit of foreign priority is similar to claiming domestic priority. There are [...]

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Claiming The Benefit Of Priority, Examples Of How To Do It, And How To Correct A Failure To Make A Claim

November 13, 2009

This post discusses some of the mechanics involved in securing a right of priority to an earlier filed application, provides some examples of acceptable claims of priority, and ways to correct a failure to make the required claim.   BACKGROUND When certain conditions are satisfied, a patent application is entitled to the benefit of the [...]

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