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Adam Diament, J.D., Ph.D.
REGISTERED U.S. PATENT ATTORNEY
Partner | Nolan Heimann LLP
Articles &
Podcast Transcripts
Read 150+ original articles on patent, trademarks, and intellectual property written by Adam Diament.
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Should I File a Notice of Appeal and Pre-Appeal Brief Conference? Episode 63
Overview of Appeal Options In the last couple of episodes, I talked about various ways to respond to a final office action. The first of...
Adam Diament
Mar 20, 20254 min read


Should I File a Request for Continued Examination for My Patent Application? Episode 62
(This episode first aired in 2019. Some details, like costs, may have changed.) What Is a Request for Continued Examination (RCE)? In the...
Adam Diament
Mar 20, 20253 min read


Eight Options for Responding to a Final Office Action. Episode 61
(This episode first aired in 2019. Some options for responding to a Final Office Action may have changed.) Dealing with a Final Office...
Adam Diament
Mar 20, 20254 min read


How to Handle a Double Patenting Rejection. Episode 60
What Is Double Patenting? In this episode, I’m going to talk about something called double patenting . It may sound complicated, but for...
Adam Diament
Mar 20, 20254 min read


Do I Need to File a Continuation-in-Part Patent Application? Episode 59
Overview of Continuing Patent Applications The last three episodes covered continuing patent applications. The first episode was a...
Adam Diament
Mar 20, 20254 min read


Do I Need to File a Continuation Application? Episode 58
Overview of Continuation Applications The last couple of episodes have been about continuing applications. The first episode covered...
Adam Diament
Mar 20, 20253 min read


Do I Need to File a Divisional Patent Application? Episode 57
Continuing Patent Applications Overview In the last episode, I gave a broad overview of the different types of continuing patent...
Adam Diament
Mar 20, 20253 min read


What are Continuing Patent Applications. Episode 56
Overview of Continuing Patent Applications This episode is about continuing patent applications. There are different kinds of continuing...
Adam Diament
Mar 20, 20253 min read


How to Respond to an Election of Species Requirement. Episode 55
Election of Species vs. Restriction Requirements In the last episode, I talked about restriction requirements. A restriction requirement...
Adam Diament
Mar 19, 20254 min read


How to Respond to a Restriction Requirement. Episode 54
Office Actions and Restriction Requirements In previous episodes, I talked about amending parts of your application, usually in response...
Adam Diament
Mar 19, 20255 min read


How to Amend the Patent Application Specification. Episode 53
What is the Patent Specification? Now, I’m going to talk about the last area where amendments may be needed—the specification....
Adam Diament
Mar 19, 20253 min read


How to Amend Patent Application Drawings. Episode 52
Why Amend Drawings? In the last couple of episodes, I talked about how to amend your claims. In this episode, I’m going to discuss how to...
Adam Diament
Mar 19, 20254 min read


How to Mark Up Your Amended Claims. Episode 51
Claim Amendments and Markups We’re diving into the wonderful world of claim amendments. In the last episode, I discussed how to label...
Adam Diament
Mar 19, 20253 min read


Amending Your Claims - Claim Status Identifiers. Episode 50
Overview of Claims As a brief overview, I have covered claims in previous episodes. If we were to analogize intellectual property to real...
Adam Diament
Mar 19, 20254 min read


Using Secondary Considerations for Responding to Obviousness Rejections. Episode 49
Overview of Obviousness Rejection Responses This is the third episode covering responses to obviousness rejections. In the first episode,...
Adam Diament
Mar 19, 20254 min read


The All Elements Test Response to Obviousness. Episode 48
Understanding Obviousness Rejections In the last episode, I provided a broad overview of what you’re likely to see in an obviousness...
Adam Diament
Mar 19, 20254 min read


How to Respond to Obviousness Rejections - An Introduction. Episode 47
The Challenge of Obviousness Rejections I have been dreading this episode for a long time, and the reason is that responding to...
Adam Diament
Mar 19, 20254 min read


How to Respond to A Novelty or Anticipation Patent Application Rejection
Understanding Anticipation in Patent Law So far, I’ve covered what a patent rejection is, what an objection is, what an office action...
Adam Diament
Mar 19, 20255 min read


How to Prepare a Response to an Office Action. Episode 45
Understanding the Office Action Response Format In the last episode, I talked about how to read an office action and the strategy for...
Adam Diament
Mar 19, 20253 min read


Options for Responding to Your First Office Action. Episode 44
Overview of Response Options This is going to be a relatively short episode because I’m just going to go over the three main things you...
Adam Diament
Mar 19, 20253 min read


How to Read an Office Action. Episode 43
(This episode first aired in 2018. Some of the information, such as costs, have changed.) Understanding Office Actions In the last two...
Adam Diament
Mar 19, 20255 min read


Introduction to the Different Types of Patent Objections. Episode 42
Previous Episode on Rejections In the last episode, I discussed common patent rejections. In this episode, I will go over some common...
Adam Diament
Mar 19, 20253 min read


Introduction to Types of Patent Rejections. Episode 41
Understanding Patent Rejections and Objections So far in this podcast, I’ve covered drafting, filing, and receiving an allowance for a...
Adam Diament
Mar 19, 20253 min read


What are Patent Maintenance Fees and Why Do I Need to Pay Them? Episode 40
(This episode first aired in 2018. The costs to maintain have changed. Review the USPTO website for up to date costs). Patent Maintenance...
Adam Diament
Mar 18, 20253 min read
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