October 22, 2024 • 20 mins
In this episode of Patent Pending Made Simple, Jaime and Samar tell you what a notice of allowance is, how it should be treated, and what you need to do after receiving one.
Summary
In this episode, the hosts discuss what to do after receiving a notice of allowance on a patent application. They explain a notice of allowance and how long it typically takes to receive one. They emphasize the importance of reviewing the notice of allowance and any examiner's amendments and paying the issue fee. They also discuss the duty of disclosure, the need to file an information disclosure statement (IDS), and a request for continued examination (RCE) if new relevant references are discovered. The hosts also recommend considering filing a continuation application and discussing the timeline for patent issuance. They mention the importance of patent marking and needing maintenance fees to keep the patent in force. The episode concludes with a reminder that the podcast does not provide legal advice.
Takeaways
Review the notice of allowance and any examiner's amendments carefully
Pay the issue fee to move forward with the patent application
Disclose any new relevant references through an information disclosure statement (IDS) and a request for continued examination (RCE)
Consider filing a continuation application to capture different claim scopes
Be aware of the timeline for patent issuance and the need to pay maintenance fees
Mark the product as patented to access certain types of damages
Remember that the podcast does not provide legal advice
Chapters
00:00 Introduction and Overview
00:20 Explanation of Notice of Allowance
01:33 Timeline for Receiving a Notice of Allowance
03:27 What to Do After Receiving a Notice of Allowance
04:43 Duty of Disclosure and Information Disclosure Statement (IDS)
06:06 Importance of Meeting Duty of Disclosure
07:18 Request for Continued Examination (RCE)
08:09 Considerations for Filing a Continuation Application
10:08 Timeline for Patent Issuance
11:22 Importance of Filing a Continuation Application
13:48 Patent Marking and Maintenance Fees
16:22 Conclusion and Disclaimer
Mark as Played
Transcript
Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Samar Shah (00:00):
Hello, and welcome to another episode of patent
pending made simple. I'm yourhost, Samar Shah, and with me on
the other line is Jamie Brophy.Jamie, how are
Jamie Brophy (00:08):
you? Summer. How
Samar Shah (00:10):
are you? I am doing alright. I am glad to be back on
this and recording with you.
Jamie Brophy (00:16):
Yeah. Me too. What are we gonna talk about today?
Samar Shah (00:20):
So today, we're gonna talk about a question that
I get asked quite a bit fromclients or prospective clients,
which is what do you do afteryou receive a notice of
allowance on a patentapplication? So before we jump
into that topic, maybe, Jamie,if you wanna talk to us about
what is a notice of allowanceand when you get it.
Jamie Brophy (00:39):
So, the notice of allowance is after your patent
application goes through thepatent examining process, and
your patent examiner has nowdecided, basically, that your
claims are allowable in view ofall the prior art that they have
reviewed. They would send out anotice of allowance saying your
patent application is now incondition for allowance.
Samar Shah (01:03):
Yep. That's exactly right. And, Jamie, how long does
it typically take for a penapplication to receive a notice
of allowance?
Jamie Brophy (01:09):
Oh my gosh. It varies so much depending on the
art area and how much backlogthat specific area of the patent
office has, but, you know,sometimes the first thing you
get after you apply for yourpatent is a notice of allowance.
If after you filed yourapplication within 1 or 2 years,
(01:30):
you would receive somecommunication from the patent
office. Sometimes that firstcommunication is a notice of
allowance. That does not happenvery often.
I would say in maybe, like, 5%of cases, that happens. So
usually, you have to go back andforth with the patent office a
few times. And each time you goback and forth, each
communication takes, you know, 2or 3 months. So I would say from
(01:52):
the time you file yourapplication until you get a
notice of allowance can beanywhere from a year to, like, 4
years. What do you think?
Samar Shah (02:02):
Yeah. I think that's about right. You know, if you're
gonna get a first actionallowance, which means that if
you get an allowance before youget any rejections, you may get
that within 10 to 18 monthsafter your filing date. With a
regular track application, thereis this thing called a fast
track or an expeditedexamination application where
(02:22):
you may get your notice ofallowance within 1 year of your
filing date. But normally, it'sgonna be 12 to 18 months after
your filing date.
And if you get rejected alongthe way, and most applications
are rejected at least once ortwice before they're allowed,
that notice of allowance maycome 24 to 36 months after your
filing date. So it's a longprocess. And, Jamie, is it a
(02:44):
guarantee that you'll receive anotice of allowance if you file
a patent application?
Jamie Brophy (02:47):
Oh, definitely not. You know, we do our best
when we give patentabilityopinions to let our clients know
of what we think the chances areof this invention getting
allowed or not, but it just itjust depends. It depends on a
lot of things. It depends onyour examiner, how tough they
(03:07):
are. It depends on you know,sometimes the examiners can
uncover references that wehaven't seen yet.
So, yeah, sometimes you applyfor a patent, you go through the
whole process, and then it justdoesn't doesn't work out. So,
yeah, it's definitely notguaranteed.
Samar Shah (03:27):
That's right. It is a big milestone when you get a
notice of allowance. It is anawesome thing, and it doesn't
happen as a de facto result. Sothe I think the first thing that
people should do when they get anotice of allowance is
celebrate. What do you think?
Jamie Brophy (03:41):
Definitely. Yeah. Yeah. It is it is very exciting.
Samar Shah (03:45):
Big deal. Great. Okay. So we've had folks reach
out to our office and and theysay, hey. I've received a notice
of allowance.
What should I do next? Jamie, Idefinitely have some thoughts
about this, but I wanted to letyou kick this off. What would
you tell clients once they'vereceived a notice of allowance?
What should they do?
Jamie Brophy (04:04):
Review the notice of allowance. Sometimes the
examiner has made what what iscalled examiner's amendments,
which means they've made usuallyminor changes to the claims.
It's usually just likegrammatical or spelling errors,
but sometimes they can be moreinvolved than that. Sometimes
the examiner will call us andask us if it's okay to make an
(04:25):
examiner's amendment, sodefinitely review that notice of
allowance. If there's anyexaminer's amendments that have
been made, you know, reviewthose very carefully.
And then, yeah, your next stepwould be to pay the issue fee if
everything looks okay, and thenwe're done. Right, Summer?
Samar Shah (04:43):
Oh, I wish. I will say one more thing. You do have
a duty of disclosure to thepatent office. We may talk about
this in one of our otherepisodes, but a duty of
disclosure is a requirement thatyou disclose everything that you
know that is relevant to theyour patent application. So you
(05:04):
do have to disclose things aboutany references that you may know
of or maybe have become aware ofafter you have filed your patent
application.
So normally the process goessomething like this. You file a
patent application, and when youfile it, you will also submit
what's called an IDS, aninformation disclosure
statement, which discloses allthe references that you knew to
(05:26):
be relevant to your invention atthat time. Now, normally, that
duty is continued all the waythrough your issuance of your
patent application. So so let'ssay you became aware of your
reference or somebody showed yousomething that might be relevant
to the patentability of yourinvention, you would have to
disclose that to the patentoffice. And a lot of people will
(05:47):
forget to do that, and youcertainly wanna do it before you
receive a notice of allowance.
But once you receive a notice ofallowance, you wanna make sure
that you have gone through, youknow, and disclosed anything
that might be relevant that youmight have become aware of since
your last IDS filing orinformation disclosure statement
filing. So let's say one of yourcompetitors made you aware of a
(06:09):
reference, then you'd have todisclose that to the patent
office. And, you know, certainlyafter you receive a notice of
allowance, it's a important timeto think about that if you
haven't done so already. But ifyou have filed international
patent applications or a PCTapplication and those patent
offices have made you aware of areference, You have to think
long and hard about potentiallydisclosing that to the patent
(06:31):
office before you pay your issuefee. What do you think, Jay?
Jamie Brophy (06:34):
Yeah. That's a good point. I'd always thought
about those disclosureshappening during the prosecution
of the application, but, yes,for sure. When you get that
notice of allowance, that's agood time to look back and make
sure that you have disclosedeverything you need to disclose.
Samar Shah (06:51):
Yeah. And, you know, if you haven't, you have some
pretty tough choices to make atthis point. One is that you have
to really think long and hardabout whether this is actually
relevant to the examination andprosecution of your patent
application. And if it isn't,then you can proceed to paying
the fees. But if it is relevant,you have to file what's called
(07:14):
an RCE or a request forcontinued examination, and you
have to reopen prosecution ofyour patent application.
So, you have to remove yourapplication out of allowance and
back into an examination state.And basically, you have to tell
the patent examiner, thank youfor the allowance, but we have
become aware of this referencethat we think is relevant and
(07:36):
pertinent to patentability ofthis invention, and we'd want
you to take a look at it andexamine my application in view
of this new reference that wehave, become aware of. And
that's a pretty tough thing todo because now you are somewhat
snatching defeat from the jawsof victory. Jamie, have you have
you had to advise clients aboutthis?
Jamie Brophy (07:59):
Not that I can recall. Yeah. No. I don't think
I've had to no. I can't think ofany offhand.
How about you?
Samar Shah (08:09):
Yeah. No. That's you know, I think if you're doing a
good job of staying abreast ofwhat you have learned in the
prosecution of yourinternational filings. And if
you've done a good job ofcommunicating this requirement
to your client kinda throughoutthe prosecution process, you
don't have to, which is a goodthing, but it does happen. So
(08:30):
I've had clients where they'rein litigation and they became
aware of a reference the daybefore the notice of allowance
was issued or the day after anotice of allowance was issued.
Those are some pretty toughthings to do because a patent
obviously is very important tothe client, but we just became
aware of it. And now we have todisclose it to the patent office
and we have to potentially getthe application rejected when it
(08:53):
was it was already allowed. Soit does happen and it's a tough
thing, to deal with when it doeshappen, but it is an absolute
must. I would much rather get anapplication pulled out of an
allowance and get it rejectedand get it examined by the
patent office and get the patentoffice to, you know, review all
relevant references, it willeventually make my patent that
(09:15):
does issue much stronger. But ifit issues, without you
disclosing all the relevantreferences, then there is a
cloud that hangs over thatapplication or that patent
forever, and it is potentially,you know, definitely grounds for
invalidating the patent down theroad.
So it's a pretty seriousrequirement. You need to meet
your duty of disclosure beforethe issuance of the
Jamie Brophy (09:36):
patent application. Yeah. Definitely.
Good point. You want your patentto be in as good of a shape as
it can possibly be, especiallyif you think it might be subject
to any kind of litigation.
You want it to be as clean aspossible.
Samar Shah (09:51):
Right. That's right. And if you do become aware of
those types of references,Jamie, is an IDS kind of the
right vehicle that you wouldrecommend to clients at that
point?
Jamie Brophy (10:02):
Yes. Yeah. During the prosecution of the
application, yes.
Samar Shah (10:08):
Yeah. Yeah. And in fact, you would wanna submit
that reference in an IDS, butyou also want to file an RCE,
something that essentially letsthe patent office reexamine the
patent application. It's calleda request for continued
examination. In that way, theexaminer will have a chance to
review the reference and takeanother pass at at your claims
(10:29):
with this new information.
Jamie Brophy (10:31):
Yeah. So when you receive the notice of allowance,
prosecution on the applicationis essentially closed. So if you
have anything else to submit,you would need to reopen
prosecution, which is whatyou're talking about with the
request for continuedexamination, and, boy, that
would be painful. But, yeah,absolutely necessary if you're
(10:51):
aware of anything.
Samar Shah (10:54):
Yeah. That's right. That's right. So, yeah,
something to keep in mind. Let'ssee.
What else is there to talk aboutfrom, from, things you must do
before you pay your issue fees?What else do you typically
recommend, Jamie?
Jamie Brophy (11:10):
I think I think that's it. You know? Just review
everything. Make sure everythingis in good shape. Yeah.
I think that that's all I canthink of. Is there anything else
you recommend to your clients?
Samar Shah (11:22):
Yeah. The other thing that I tell clients to
think about is a continuationapplication. A continuation
application is basically thesame application that you
previously filed, but with adifferent set of claims. So
often, I'll talk to my clientsabout continuations, about
whether they want another patenton the same invention, but maybe
with a different scope, maybe abroader claim scope or a
(11:45):
narrower claim scope or a claimscope that is more appropriate
based on, you know, theprosecution of the patent
application. This is a good timeto start thinking about your
continuation application becauseyour ability to file a
continuation will end foreveronce the patent is issued.
So a notice of allowance willstart the clock on on getting
(12:05):
the patent issued. So once youpay the fees, the patent will
issue. And once it does issue,you will forever forfeit the
right to file a continuationapplication. So you must must
start thinking about this andyou must or, you know, I
encourage my clients to file acontinuation if they're gonna do
before they pay the fees or atthe same time that you pay the
fees.
Jamie Brophy (12:24):
Yeah. Absolutely. We do this a lot. You know, I
think it's good practice to justfile a continuation, you know,
in case you decide that you dowant a different different claim
scope, then you have, you know,something pending that you can
always amend the claims to, youknow, whatever you want. The
other benefit of a continuationis we already know the prior art
(12:46):
that the examiner's gonna cite.
We've already seen everything.So we have a pretty good idea
of, you know, what we think isgonna be allowable in the
continuation. So those aregenerally a lot easier to to
prosecute. But, yeah, I thinkit's a good a good practice to
just file that continuation andthen, you know, leave your
options open.
Samar Shah (13:09):
Mhmm. Yeah. I agree. Yeah. Continuations are often
strategic.
Right? So if you havecompetitors on the horizon or a
very creative competitor who iscarefully trying to duck your
patent claims, then,continuation may be the right
vehicle for capturing some ofthose infringement. Or if the
(13:30):
market has shifted in some wayor if the invention has changed
in some way, a continuation mayallow you to get get those
claims and and kinda right sizeyour your protection to whatever
the market condition or theproduct conditions are as of
that date.
Jamie Brophy (13:45):
Yep. Absolutely.
Samar Shah (13:48):
And, Jamie, what is that timeline typically from the
time you receive a notice ofallowance to the time that the
patent issues typically?
Jamie Brophy (13:55):
I think it's generally, like, 2 to 3 months.
You have a certain amount oftime to pay your issue fee. And
then once you pay your issuefee, I think it's 2 to 3 months,
right, after until your patentissues?
Samar Shah (14:09):
Yeah. So this is changing quite a bit. So the
typical process is you get thenotice of allowance. You have 3
months from that date to payyour issue fee. Once you pay the
issue fee, you're right.
It did take a while for thepatent to issue because it had
to go through a publicationprocess, and the patent office
would have to print the patentto send to you, which is pretty
(14:30):
exciting. But I think as of afew weeks ago, maybe a month
ago, the patent office has saidthat they're going to stop
publishing patent application orissued patents. So we don't
really know how long it's gonnatake them to to for the patent
to issue now that they don'thave to go through all this,
like, printing process and allthat stuff. It used to be it'd
take 4 to 6 weeks to get thatpatent issued once you paid the
(14:53):
fees, but but it it could takeas much as 2 or 3 weeks since
the rule changes have occurred.We've had one patent that has
issued Jamie since the new rulescame into effect, and that one
is still taking about 4 about 5weeks to issue.
So it's still taking quite sometime, but I would bet that that
time is gonna shorten quite abit once the patent office has
(15:15):
had an opportunity to kind ofreally implement the rules.
Jamie Brophy (15:17):
Yeah. Interesting. I I wasn't aware of that. So
they're not gonna be sending outthe red ribbon copies anymore?
Samar Shah (15:24):
Nope. They are not. That is, if you got one, then
that might be one of the lastones
Jamie Brophy (15:29):
that you have. Wow. Crazy. Okay. So, yeah,
then, that makes it even moreimportant to file that
continuation.
Like, as you're paying the issuefee, you know, before you pay
the issue fee or right after youpay the issue fee, that that
timeline is getting shorter. Sothat's good to know.
Samar Shah (15:49):
Yeah. That's right. It is. As soon as you pay the
issue fee, at least in my mind,the clock starts ticking, and
I'm usually pretty agitateduntil that continuation is filed
if the client wants to file 1. II agree.
Best practices would be to justfile it with your issue fee.
Save yourself from someheartache down Right. Down the
road potentially.
Jamie Brophy (16:09):
Absolutely. Okay. So we've talked about the duty
to disclose, continuations,paying the issue fee. Is that
it? Is that everything?
Samar Shah (16:22):
I think so. I mean, I would say you're not out of
the woods once you receive yournotice of allowance. You're not
out of the woods until thepatent actually issues, which
may be 3 to 6 months from yournotice of allowance date. So you
can go and celebrate a littlebit, but you can really
celebrate once that patentactually issues.
Jamie Brophy (16:41):
Yeah. But then after the patent issues, you
have your patent in your hotlittle hands. Is there anything
else you have to do?
Samar Shah (16:52):
Yeah. So there are some patent marking statutes out
there. Right? So if you wantcertain types of damages, then
you're required to mark yourproduct as patented. And there
are some requirements aboutputting the patent numbers and
the product names in differentplaces, for example, on the
product or on the packaging oron your website.
So there are all sorts of otherthings that you wanna start
(17:14):
thinking about as a way to makesure that you can access damages
that are afforded to you underthe patent law. But as far as
the patent process goes at thatpoint, you are done. You know,
there there is a chance thatsomebody may challenge the
patent. There is this thingcalled a post grant review,
which is available to litigantsup to 1 year after your issuance
date. There's an IPR process.
(17:36):
There is a federal courtlitigation process. So you have
to think about all those thingsand eventualities down the road
if you are in a dispute withsomebody. And you also had to
think about marking up yourproduct with the patent number
in some way, but that's aboutit. I think you're done with the
patent process. You're kind ofin the pre litigation process at
that point.
You have an asset, and the wholepoint of that asset is to
(17:58):
exclude others from practicingyour invention. So you had to
start thinking about thosethings once you get that
issuance.
Jamie Brophy (18:04):
Yeah. Great advice. Absolutely. So can you
also talk a little bit about howlong the patent is good for and
maintenance fees? Do do theyhave to pay maintenance fees
along the way during the life ofthe patent?
Samar Shah (18:18):
Yeah. Good question. So a design patent, I'm sure
we'll talk about this at somepoint, is good for 15 years from
your application filing date. Soit's not based on the issue
date, but the filing date. Andyou don't have to pay any
maintenance fees on the designpatent application or on the
design patent once it issues.
With a utility patentapplication or a utility patent,
(18:38):
it's good for 20 years from yourfiling date. And it's not from
your provisional filing date,it's from your non provisional
filing date. And you do have topay, maintenance fees on it.
It's every 3 and a half to 5 anda half years depending on the
cycle that you're in. But, yeah,that's a deadline that you don't
wanna miss because if you missit, your patent will become
(18:58):
abandoned and there's verylittle you can do to revive it
at that point.
So have your attorney or havesomebody stay on top of your
maintenance fees deadlines, Butyou will have to pay those in
order to continue to have yourpatent. Otherwise, it will
become abandoned.
Jamie Brophy (19:13):
Yep. Yep. I think we covered a lot of a lot of
good information. Do you haveanything else to add, Summer?
Samar Shah (19:21):
No. I think this is it. Yeah. Do enjoy receiving
that notice of allowance. It's abig deal, but be sure to check
your IDSs and your referencesand your continuation decisions
before you celebrate too much.
Jamie Brophy (19:33):
Yes. Absolutely. Okay. Great info. I'll talk to
you next time, Summer.
Yeah.
Samar Shah (19:41):
Thanks, Jamie. Alright.
Jamie Brophy (19:42):
Thank you.
Samar Shah (19:44):
Yep. Take care, everyone. Thank you for joining
us on the Patent Pending MadeSimple podcast. I hope you
enjoyed our show. If you'd liketo receive updates, view the
show notes or access a directlink to any resource, go to the
episodes page on patent pendingmade simple dot com.
To help others find our podcast,please like, share, and
(20:05):
subscribe. Thanks again fortuning in. I look forward to
having you with us next time onPatent Pending Made Simple. This
podcast has been hosted byOutlier Patent Attorneys and is
not intended to nor does itcreate the attorney client
privilege between our hosts,guests, or any listener for any
reason. The content of thispodcast should not be
interpreted as legal advice.
(20:25):
All thoughts and opinionsexpressed herein are only those
from which they came.
Hello, and welcome to another episode of patent
pending made simple. I'm yourhost, Samar Shah, and with me on
the other line is Jamie Brophy.Jamie, how are
Jamie Brophy (00:08):
you? Summer. How
Samar Shah (00:10):
are you? I am doing alright. I am glad to be back on
this and recording with you.
Jamie Brophy (00:16):
Yeah. Me too. What are we gonna talk about today?
Samar Shah (00:20):
So today, we're gonna talk about a question that
I get asked quite a bit fromclients or prospective clients,
which is what do you do afteryou receive a notice of
allowance on a patentapplication? So before we jump
into that topic, maybe, Jamie,if you wanna talk to us about
what is a notice of allowanceand when you get it.
Jamie Brophy (00:39):
So, the notice of allowance is after your patent
application goes through thepatent examining process, and
your patent examiner has nowdecided, basically, that your
claims are allowable in view ofall the prior art that they have
reviewed. They would send out anotice of allowance saying your
patent application is now incondition for allowance.
Samar Shah (01:03):
Yep. That's exactly right. And, Jamie, how long does
it typically take for a penapplication to receive a notice
of allowance?
Jamie Brophy (01:09):
Oh my gosh. It varies so much depending on the
art area and how much backlogthat specific area of the patent
office has, but, you know,sometimes the first thing you
get after you apply for yourpatent is a notice of allowance.
If after you filed yourapplication within 1 or 2 years,
(01:30):
you would receive somecommunication from the patent
office. Sometimes that firstcommunication is a notice of
allowance. That does not happenvery often.
I would say in maybe, like, 5%of cases, that happens. So
usually, you have to go back andforth with the patent office a
few times. And each time you goback and forth, each
communication takes, you know, 2or 3 months. So I would say from
(01:52):
the time you file yourapplication until you get a
notice of allowance can beanywhere from a year to, like, 4
years. What do you think?
Samar Shah (02:02):
Yeah. I think that's about right. You know, if you're
gonna get a first actionallowance, which means that if
you get an allowance before youget any rejections, you may get
that within 10 to 18 monthsafter your filing date. With a
regular track application, thereis this thing called a fast
track or an expeditedexamination application where
(02:22):
you may get your notice ofallowance within 1 year of your
filing date. But normally, it'sgonna be 12 to 18 months after
your filing date.
And if you get rejected alongthe way, and most applications
are rejected at least once ortwice before they're allowed,
that notice of allowance maycome 24 to 36 months after your
filing date. So it's a longprocess. And, Jamie, is it a
(02:44):
guarantee that you'll receive anotice of allowance if you file
a patent application?
Jamie Brophy (02:47):
Oh, definitely not. You know, we do our best
when we give patentabilityopinions to let our clients know
of what we think the chances areof this invention getting
allowed or not, but it just itjust depends. It depends on a
lot of things. It depends onyour examiner, how tough they
(03:07):
are. It depends on you know,sometimes the examiners can
uncover references that wehaven't seen yet.
So, yeah, sometimes you applyfor a patent, you go through the
whole process, and then it justdoesn't doesn't work out. So,
yeah, it's definitely notguaranteed.
Samar Shah (03:27):
That's right. It is a big milestone when you get a
notice of allowance. It is anawesome thing, and it doesn't
happen as a de facto result. Sothe I think the first thing that
people should do when they get anotice of allowance is
celebrate. What do you think?
Jamie Brophy (03:41):
Definitely. Yeah. Yeah. It is it is very exciting.
Samar Shah (03:45):
Big deal. Great. Okay. So we've had folks reach
out to our office and and theysay, hey. I've received a notice
of allowance.
What should I do next? Jamie, Idefinitely have some thoughts
about this, but I wanted to letyou kick this off. What would
you tell clients once they'vereceived a notice of allowance?
What should they do?
Jamie Brophy (04:04):
Review the notice of allowance. Sometimes the
examiner has made what what iscalled examiner's amendments,
which means they've made usuallyminor changes to the claims.
It's usually just likegrammatical or spelling errors,
but sometimes they can be moreinvolved than that. Sometimes
the examiner will call us andask us if it's okay to make an
(04:25):
examiner's amendment, sodefinitely review that notice of
allowance. If there's anyexaminer's amendments that have
been made, you know, reviewthose very carefully.
And then, yeah, your next stepwould be to pay the issue fee if
everything looks okay, and thenwe're done. Right, Summer?
Samar Shah (04:43):
Oh, I wish. I will say one more thing. You do have
a duty of disclosure to thepatent office. We may talk about
this in one of our otherepisodes, but a duty of
disclosure is a requirement thatyou disclose everything that you
know that is relevant to theyour patent application. So you
(05:04):
do have to disclose things aboutany references that you may know
of or maybe have become aware ofafter you have filed your patent
application.
So normally the process goessomething like this. You file a
patent application, and when youfile it, you will also submit
what's called an IDS, aninformation disclosure
statement, which discloses allthe references that you knew to
(05:26):
be relevant to your invention atthat time. Now, normally, that
duty is continued all the waythrough your issuance of your
patent application. So so let'ssay you became aware of your
reference or somebody showed yousomething that might be relevant
to the patentability of yourinvention, you would have to
disclose that to the patentoffice. And a lot of people will
(05:47):
forget to do that, and youcertainly wanna do it before you
receive a notice of allowance.
But once you receive a notice ofallowance, you wanna make sure
that you have gone through, youknow, and disclosed anything
that might be relevant that youmight have become aware of since
your last IDS filing orinformation disclosure statement
filing. So let's say one of yourcompetitors made you aware of a
(06:09):
reference, then you'd have todisclose that to the patent
office. And, you know, certainlyafter you receive a notice of
allowance, it's a important timeto think about that if you
haven't done so already. But ifyou have filed international
patent applications or a PCTapplication and those patent
offices have made you aware of areference, You have to think
long and hard about potentiallydisclosing that to the patent
(06:31):
office before you pay your issuefee. What do you think, Jay?
Jamie Brophy (06:34):
Yeah. That's a good point. I'd always thought
about those disclosureshappening during the prosecution
of the application, but, yes,for sure. When you get that
notice of allowance, that's agood time to look back and make
sure that you have disclosedeverything you need to disclose.
Samar Shah (06:51):
Yeah. And, you know, if you haven't, you have some
pretty tough choices to make atthis point. One is that you have
to really think long and hardabout whether this is actually
relevant to the examination andprosecution of your patent
application. And if it isn't,then you can proceed to paying
the fees. But if it is relevant,you have to file what's called
(07:14):
an RCE or a request forcontinued examination, and you
have to reopen prosecution ofyour patent application.
So, you have to remove yourapplication out of allowance and
back into an examination state.And basically, you have to tell
the patent examiner, thank youfor the allowance, but we have
become aware of this referencethat we think is relevant and
(07:36):
pertinent to patentability ofthis invention, and we'd want
you to take a look at it andexamine my application in view
of this new reference that wehave, become aware of. And
that's a pretty tough thing todo because now you are somewhat
snatching defeat from the jawsof victory. Jamie, have you have
you had to advise clients aboutthis?
Jamie Brophy (07:59):
Not that I can recall. Yeah. No. I don't think
I've had to no. I can't think ofany offhand.
How about you?
Samar Shah (08:09):
Yeah. No. That's you know, I think if you're doing a
good job of staying abreast ofwhat you have learned in the
prosecution of yourinternational filings. And if
you've done a good job ofcommunicating this requirement
to your client kinda throughoutthe prosecution process, you
don't have to, which is a goodthing, but it does happen. So
(08:30):
I've had clients where they'rein litigation and they became
aware of a reference the daybefore the notice of allowance
was issued or the day after anotice of allowance was issued.
Those are some pretty toughthings to do because a patent
obviously is very important tothe client, but we just became
aware of it. And now we have todisclose it to the patent office
and we have to potentially getthe application rejected when it
(08:53):
was it was already allowed. Soit does happen and it's a tough
thing, to deal with when it doeshappen, but it is an absolute
must. I would much rather get anapplication pulled out of an
allowance and get it rejectedand get it examined by the
patent office and get the patentoffice to, you know, review all
relevant references, it willeventually make my patent that
(09:15):
does issue much stronger. But ifit issues, without you
disclosing all the relevantreferences, then there is a
cloud that hangs over thatapplication or that patent
forever, and it is potentially,you know, definitely grounds for
invalidating the patent down theroad.
So it's a pretty seriousrequirement. You need to meet
your duty of disclosure beforethe issuance of the
Jamie Brophy (09:36):
patent application. Yeah. Definitely.
Good point. You want your patentto be in as good of a shape as
it can possibly be, especiallyif you think it might be subject
to any kind of litigation.
You want it to be as clean aspossible.
Samar Shah (09:51):
Right. That's right. And if you do become aware of
those types of references,Jamie, is an IDS kind of the
right vehicle that you wouldrecommend to clients at that
point?
Jamie Brophy (10:02):
Yes. Yeah. During the prosecution of the
application, yes.
Samar Shah (10:08):
Yeah. Yeah. And in fact, you would wanna submit
that reference in an IDS, butyou also want to file an RCE,
something that essentially letsthe patent office reexamine the
patent application. It's calleda request for continued
examination. In that way, theexaminer will have a chance to
review the reference and takeanother pass at at your claims
(10:29):
with this new information.
Jamie Brophy (10:31):
Yeah. So when you receive the notice of allowance,
prosecution on the applicationis essentially closed. So if you
have anything else to submit,you would need to reopen
prosecution, which is whatyou're talking about with the
request for continuedexamination, and, boy, that
would be painful. But, yeah,absolutely necessary if you're
(10:51):
aware of anything.
Samar Shah (10:54):
Yeah. That's right. That's right. So, yeah,
something to keep in mind. Let'ssee.
What else is there to talk aboutfrom, from, things you must do
before you pay your issue fees?What else do you typically
recommend, Jamie?
Jamie Brophy (11:10):
I think I think that's it. You know? Just review
everything. Make sure everythingis in good shape. Yeah.
I think that that's all I canthink of. Is there anything else
you recommend to your clients?
Samar Shah (11:22):
Yeah. The other thing that I tell clients to
think about is a continuationapplication. A continuation
application is basically thesame application that you
previously filed, but with adifferent set of claims. So
often, I'll talk to my clientsabout continuations, about
whether they want another patenton the same invention, but maybe
with a different scope, maybe abroader claim scope or a
(11:45):
narrower claim scope or a claimscope that is more appropriate
based on, you know, theprosecution of the patent
application. This is a good timeto start thinking about your
continuation application becauseyour ability to file a
continuation will end foreveronce the patent is issued.
So a notice of allowance willstart the clock on on getting
(12:05):
the patent issued. So once youpay the fees, the patent will
issue. And once it does issue,you will forever forfeit the
right to file a continuationapplication. So you must must
start thinking about this andyou must or, you know, I
encourage my clients to file acontinuation if they're gonna do
before they pay the fees or atthe same time that you pay the
fees.
Jamie Brophy (12:24):
Yeah. Absolutely. We do this a lot. You know, I
think it's good practice to justfile a continuation, you know,
in case you decide that you dowant a different different claim
scope, then you have, you know,something pending that you can
always amend the claims to, youknow, whatever you want. The
other benefit of a continuationis we already know the prior art
(12:46):
that the examiner's gonna cite.
We've already seen everything.So we have a pretty good idea
of, you know, what we think isgonna be allowable in the
continuation. So those aregenerally a lot easier to to
prosecute. But, yeah, I thinkit's a good a good practice to
just file that continuation andthen, you know, leave your
options open.
Samar Shah (13:09):
Mhmm. Yeah. I agree. Yeah. Continuations are often
strategic.
Right? So if you havecompetitors on the horizon or a
very creative competitor who iscarefully trying to duck your
patent claims, then,continuation may be the right
vehicle for capturing some ofthose infringement. Or if the
(13:30):
market has shifted in some wayor if the invention has changed
in some way, a continuation mayallow you to get get those
claims and and kinda right sizeyour your protection to whatever
the market condition or theproduct conditions are as of
that date.
Jamie Brophy (13:45):
Yep. Absolutely.
Samar Shah (13:48):
And, Jamie, what is that timeline typically from the
time you receive a notice ofallowance to the time that the
patent issues typically?
Jamie Brophy (13:55):
I think it's generally, like, 2 to 3 months.
You have a certain amount oftime to pay your issue fee. And
then once you pay your issuefee, I think it's 2 to 3 months,
right, after until your patentissues?
Samar Shah (14:09):
Yeah. So this is changing quite a bit. So the
typical process is you get thenotice of allowance. You have 3
months from that date to payyour issue fee. Once you pay the
issue fee, you're right.
It did take a while for thepatent to issue because it had
to go through a publicationprocess, and the patent office
would have to print the patentto send to you, which is pretty
(14:30):
exciting. But I think as of afew weeks ago, maybe a month
ago, the patent office has saidthat they're going to stop
publishing patent application orissued patents. So we don't
really know how long it's gonnatake them to to for the patent
to issue now that they don'thave to go through all this,
like, printing process and allthat stuff. It used to be it'd
take 4 to 6 weeks to get thatpatent issued once you paid the
(14:53):
fees, but but it it could takeas much as 2 or 3 weeks since
the rule changes have occurred.We've had one patent that has
issued Jamie since the new rulescame into effect, and that one
is still taking about 4 about 5weeks to issue.
So it's still taking quite sometime, but I would bet that that
time is gonna shorten quite abit once the patent office has
(15:15):
had an opportunity to kind ofreally implement the rules.
Jamie Brophy (15:17):
Yeah. Interesting. I I wasn't aware of that. So
they're not gonna be sending outthe red ribbon copies anymore?
Samar Shah (15:24):
Nope. They are not. That is, if you got one, then
that might be one of the lastones
Jamie Brophy (15:29):
that you have. Wow. Crazy. Okay. So, yeah,
then, that makes it even moreimportant to file that
continuation.
Like, as you're paying the issuefee, you know, before you pay
the issue fee or right after youpay the issue fee, that that
timeline is getting shorter. Sothat's good to know.
Samar Shah (15:49):
Yeah. That's right. It is. As soon as you pay the
issue fee, at least in my mind,the clock starts ticking, and
I'm usually pretty agitateduntil that continuation is filed
if the client wants to file 1. II agree.
Best practices would be to justfile it with your issue fee.
Save yourself from someheartache down Right. Down the
road potentially.
Jamie Brophy (16:09):
Absolutely. Okay. So we've talked about the duty
to disclose, continuations,paying the issue fee. Is that
it? Is that everything?
Samar Shah (16:22):
I think so. I mean, I would say you're not out of
the woods once you receive yournotice of allowance. You're not
out of the woods until thepatent actually issues, which
may be 3 to 6 months from yournotice of allowance date. So you
can go and celebrate a littlebit, but you can really
celebrate once that patentactually issues.
Jamie Brophy (16:41):
Yeah. But then after the patent issues, you
have your patent in your hotlittle hands. Is there anything
else you have to do?
Samar Shah (16:52):
Yeah. So there are some patent marking statutes out
there. Right? So if you wantcertain types of damages, then
you're required to mark yourproduct as patented. And there
are some requirements aboutputting the patent numbers and
the product names in differentplaces, for example, on the
product or on the packaging oron your website.
So there are all sorts of otherthings that you wanna start
(17:14):
thinking about as a way to makesure that you can access damages
that are afforded to you underthe patent law. But as far as
the patent process goes at thatpoint, you are done. You know,
there there is a chance thatsomebody may challenge the
patent. There is this thingcalled a post grant review,
which is available to litigantsup to 1 year after your issuance
date. There's an IPR process.
(17:36):
There is a federal courtlitigation process. So you have
to think about all those thingsand eventualities down the road
if you are in a dispute withsomebody. And you also had to
think about marking up yourproduct with the patent number
in some way, but that's aboutit. I think you're done with the
patent process. You're kind ofin the pre litigation process at
that point.
You have an asset, and the wholepoint of that asset is to
(17:58):
exclude others from practicingyour invention. So you had to
start thinking about thosethings once you get that
issuance.
Jamie Brophy (18:04):
Yeah. Great advice. Absolutely. So can you
also talk a little bit about howlong the patent is good for and
maintenance fees? Do do theyhave to pay maintenance fees
along the way during the life ofthe patent?
Samar Shah (18:18):
Yeah. Good question. So a design patent, I'm sure
we'll talk about this at somepoint, is good for 15 years from
your application filing date. Soit's not based on the issue
date, but the filing date. Andyou don't have to pay any
maintenance fees on the designpatent application or on the
design patent once it issues.
With a utility patentapplication or a utility patent,
(18:38):
it's good for 20 years from yourfiling date. And it's not from
your provisional filing date,it's from your non provisional
filing date. And you do have topay, maintenance fees on it.
It's every 3 and a half to 5 anda half years depending on the
cycle that you're in. But, yeah,that's a deadline that you don't
wanna miss because if you missit, your patent will become
(18:58):
abandoned and there's verylittle you can do to revive it
at that point.
So have your attorney or havesomebody stay on top of your
maintenance fees deadlines, Butyou will have to pay those in
order to continue to have yourpatent. Otherwise, it will
become abandoned.
Jamie Brophy (19:13):
Yep. Yep. I think we covered a lot of a lot of
good information. Do you haveanything else to add, Summer?
Samar Shah (19:21):
No. I think this is it. Yeah. Do enjoy receiving
that notice of allowance. It's abig deal, but be sure to check
your IDSs and your referencesand your continuation decisions
before you celebrate too much.
Jamie Brophy (19:33):
Yes. Absolutely. Okay. Great info. I'll talk to
you next time, Summer.
Yeah.
Samar Shah (19:41):
Thanks, Jamie. Alright.
Jamie Brophy (19:42):
Thank you.
Samar Shah (19:44):
Yep. Take care, everyone. Thank you for joining
us on the Patent Pending MadeSimple podcast. I hope you
enjoyed our show. If you'd liketo receive updates, view the
show notes or access a directlink to any resource, go to the
episodes page on patent pendingmade simple dot com.
To help others find our podcast,please like, share, and
(20:05):
subscribe. Thanks again fortuning in. I look forward to
having you with us next time onPatent Pending Made Simple. This
podcast has been hosted byOutlier Patent Attorneys and is
not intended to nor does itcreate the attorney client
privilege between our hosts,guests, or any listener for any
reason. The content of thispodcast should not be
interpreted as legal advice.
(20:25):
All thoughts and opinionsexpressed herein are only those
from which they came.
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