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August 2017 Archives

Responding to Statutory Double Patenting Rejections

Andrew - Blog Picture - Capture.PNGWhen was the last time you received a rejection of patent claims from the U.S. Patent Office that left you scratching your head... so much so, that you had to look up some law to figure out how to handle it? Recently, I had to respond to a statutory double patenting rejection. Notably, a statutory rejection is not the simple non-statutory double patenting rejection that you can address by submitting a standard terminal disclaimer form in which you promise you will not exercise the claims past the lifetime of the patent that is the subject of the rejection. Here is an example that reflects the situation I recently confronted:

Best Practice Tip: Who Should Be Named as the "Applicant" for Incoming Foreign-Originated Applications?

WW Blog.PNG35 USC 119(a) is the statute that allows one (an individual, entity, etc.) to claim priority to an earlier "priority" application in another country. However, this statute appears to have been written for the pre-AIA regime in which US Applicants were always the Inventors. Because this is no longer the case, applicability to a regime in which we name Assignees as Applicants is a little more complicated.

HBW is Dedicated to Making Patents Our Mission

small logo.JPGHBW is located in the coastal town of Half Moon Bay, CA, approximately thirty minutes south of San Francisco and thirty minutes north of Silicon Valley. HBW is a boutique IP law firm that works with inventors in the Bay Area and around the world to collaboratively delve deep in understanding and protecting cutting edge technologies. HBW loves working in partnership with our exciting clients to strategically enhance ROI and safeguard their market share.