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Timeline to reply to USPTO trademark office actions reduced to 3 months

October 2022

From 3 December 2022 the time limit to respond to USPTO trademark office actions will be reduced from 6 months to 3 months.

This will only affect office actions mailed on or after 3 December. If more than 3 months is required then a fee can be paid to restore the time limit to 6 months.

Please note that this only applies to pre-registration office actions. The change from 6 months to 3 months will not happen for post registration office actions until 7 October 2023. In addition this new time limit will not apply to US designations out of a Madrid application which will continue to have the full 6 month response period.

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Avoiding Legal Pitfalls: The Notting Hill Bag Company's Costly Mistake

[2025] EWHC 1793 (IPEC) – Natasha Courtenay-Smith and Notting Hill Bag Company Limited v The Notting Hill Shopping Bag Company Limited, Nangialai Takanai, The Notting Hill Shopper Bag Ltd, Ehsanullah …

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Event - 12th September 2025

Wolters Kluwer Breakfast Panel on AI & IP at AIPPI

Sofie McPherson, Patent Director at HGF, will be moderating a special breakfast panel session hosted by Wolters Kluwer at the AIPPI World Congress in Yokohama on 15 September 2025. Session …

Event details

T1465/23 – No Narrowing by Description—EPO Board Terminates Inventive Step Analysis for Arbitrary Modifications Citing G1/24 and G1/19

“The potential patentability of a specific narrow embodiment…cannot render a claim allowable which, due to its breadth, encompasses a multitude of other, non-inventive embodiments” – r. 3.5. Background EP3113515 was …

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Wrestling with G1/24 – How should the claims be interpreted in view of the description?

In G1/24, the Enlarged Board of Appeal (EBA) codified how claims should be interpreted for assessing patentability: in consultation with the description. However, the decision was light on how, in …

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Welcome to HGF Presents - New Video Series

Introducing HGF Presents a new video series delivering practical insights into European Patent Law and practice. Curated by our leading experts in chemistry, life sciences, technology & engineering, each concise …

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Seminar on Incorporating Trade Secrets into your IP Strategy

HGF is hosting a Seminar on Incorporating Trade Secrets into your IP Strategy which will be followed by networking, apero, and snacks. The Seminar will be held on Wednesday, 10th …

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PRESS RELEASE – HGF strengthens European presence with three new Partners in France and Germany

HGF is pleased to announce the arrival of three new partners, further strengthening its European presence. Two partners will be joining the firm’s fast-growing French practice, and one will join …

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Providing Enabling Disclosure for AI inventions at the EPO

  Video overview: The equivalent to the enablement requirement in the US at the EPO is Sufficiency. There is an increasing trend for the sufficiency of AI related patent applications …

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