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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello, and welcome to another episode of patent pending made simple. I'm your host, Samar Shah, and with me on the other line is Jamie Brophy. Jamie, how are
Jamie Brophy:you? Summer. How
Samar Shah:are you? I am doing alright. I am glad to be back on this and recording with you.
Jamie Brophy:Yeah. Me too. What are we gonna talk about today?
Samar Shah:So today, we're gonna talk about a question that I get asked quite a bit from clients or prospective clients, which is what do you do after you receive a notice of allowance on a patent application? So before we jump into that topic, maybe, Jamie, if you wanna talk to us about what is a notice of allowance and when you get it.
Jamie Brophy:So, the notice of allowance is after your patent application goes through the patent examining process, and your patent examiner has now decided, basically, that your claims are allowable in view of all the prior art that they have reviewed. They would send out a notice of allowance saying your patent application is now in condition for allowance.
Samar Shah:Yep. That's exactly right. And, Jamie, how long does it typically take for a pen application to receive a notice of allowance?
Jamie Brophy:Oh my gosh. It varies so much depending on the art area and how much backlog that specific area of the patent office has, but, you know, sometimes the first thing you get after you apply for your patent is a notice of allowance. If after you filed your application within 1 or 2 years, you would receive some communication from the patent office. Sometimes that first communication is a notice of allowance. That does not happen very often.
Jamie Brophy:I would say in maybe, like, 5% of cases, that happens. So usually, you have to go back and forth with the patent office a few times. And each time you go back and forth, each communication takes, you know, 2 or 3 months. So I would say from the time you file your application until you get a notice of allowance can be anywhere from a year to, like, 4 years. What do you think?
Samar Shah:Yeah. I think that's about right. You know, if you're gonna get a first action allowance, which means that if you get an allowance before you get any rejections, you may get that within 10 to 18 months after your filing date. With a regular track application, there is this thing called a fast track or an expedited examination application where you may get your notice of allowance within 1 year of your filing date. But normally, it's gonna be 12 to 18 months after your filing date.
Samar Shah:And if you get rejected along the way, and most applications are rejected at least once or twice before they're allowed, that notice of allowance may come 24 to 36 months after your filing date. So it's a long process. And, Jamie, is it a guarantee that you'll receive a notice of allowance if you file a patent application?
Jamie Brophy:Oh, definitely not. You know, we do our best when we give patentability opinions to let our clients know of what we think the chances are of this invention getting allowed or not, but it just it just depends. It depends on a lot of things. It depends on your examiner, how tough they are. It depends on you know, sometimes the examiners can uncover references that we haven't seen yet.
Jamie Brophy:So, yeah, sometimes you apply for a patent, you go through the whole process, and then it just doesn't doesn't work out. So, yeah, it's definitely not guaranteed.
Samar Shah:That's right. It is a big milestone when you get a notice of allowance. It is an awesome thing, and it doesn't happen as a de facto result. So the I think the first thing that people should do when they get a notice of allowance is celebrate. What do you think?
Jamie Brophy:Definitely. Yeah. Yeah. It is it is very exciting.
Samar Shah:Big deal. Great. Okay. So we've had folks reach out to our office and and they say, hey. I've received a notice of allowance.
Samar Shah:What should I do next? Jamie, I definitely have some thoughts about this, but I wanted to let you kick this off. What would you tell clients once they've received a notice of allowance? What should they do?
Jamie Brophy:Review the notice of allowance. Sometimes the examiner has made what what is called examiner's amendments, which means they've made usually minor changes to the claims. It's usually just like grammatical or spelling errors, but sometimes they can be more involved than that. Sometimes the examiner will call us and ask us if it's okay to make an examiner's amendment, so definitely review that notice of allowance. If there's any examiner's amendments that have been made, you know, review those very carefully.
Jamie Brophy:And then, yeah, your next step would be to pay the issue fee if everything looks okay, and then we're done. Right, Summer?
Samar Shah:Oh, I wish. I will say one more thing. You do have a duty of disclosure to the patent office. We may talk about this in one of our other episodes, but a duty of disclosure is a requirement that you disclose everything that you know that is relevant to the your patent application. So you do have to disclose things about any references that you may know of or maybe have become aware of after you have filed your patent application.
Samar Shah:So normally the process goes something like this. You file a patent application, and when you file it, you will also submit what's called an IDS, an information disclosure statement, which discloses all the references that you knew to be relevant to your invention at that time. Now, normally, that duty is continued all the way through your issuance of your patent application. So so let's say you became aware of your reference or somebody showed you something that might be relevant to the patentability of your invention, you would have to disclose that to the patent office. And a lot of people will forget to do that, and you certainly wanna do it before you receive a notice of allowance.
Samar Shah:But once you receive a notice of allowance, you wanna make sure that you have gone through, you know, and disclosed anything that might be relevant that you might have become aware of since your last IDS filing or information disclosure statement filing. So let's say one of your competitors made you aware of a reference, then you'd have to disclose that to the patent office. And, you know, certainly after you receive a notice of allowance, it's a important time to think about that if you haven't done so already. But if you have filed international patent applications or a PCT application and those patent offices have made you aware of a reference, You have to think long and hard about potentially disclosing that to the patent office before you pay your issue fee. What do you think, Jay?
Jamie Brophy:Yeah. That's a good point. I'd always thought about those disclosures happening during the prosecution of the application, but, yes, for sure. When you get that notice of allowance, that's a good time to look back and make sure that you have disclosed everything you need to disclose.
Samar Shah:Yeah. And, you know, if you haven't, you have some pretty tough choices to make at this point. One is that you have to really think long and hard about whether this is actually relevant to the examination and prosecution 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 an RCE or a request for continued examination, and you have to reopen prosecution of your patent application.
Samar Shah:So, you have to remove your application out of allowance and back into an examination state. And basically, you have to tell the patent examiner, thank you for the allowance, but we have become aware of this reference that we think is relevant and pertinent to patentability of this invention, and we'd want you to take a look at it and examine my application in view of this new reference that we have, become aware of. And that's a pretty tough thing to do because now you are somewhat snatching defeat from the jaws of victory. Jamie, have you have you had to advise clients about this?
Jamie Brophy:Not that I can recall. Yeah. No. I don't think I've had to no. I can't think of any offhand.
Jamie Brophy:How about you?
Samar Shah:Yeah. No. That's you know, I think if you're doing a good job of staying abreast of what you have learned in the prosecution of your international filings. And if you've done a good job of communicating this requirement to your client kinda throughout the prosecution process, you don't have to, which is a good thing, but it does happen. So I've had clients where they're in litigation and they became aware of a reference the day before the notice of allowance was issued or the day after a notice of allowance was issued.
Samar Shah:Those are some pretty tough things to do because a patent obviously is very important to the client, but we just became aware of it. And now we have to disclose it to the patent office and we have to potentially get the application rejected when it was it was already allowed. So it does happen and it's a tough thing, to deal with when it does happen, but it is an absolute must. I would much rather get an application pulled out of an allowance and get it rejected and get it examined by the patent office and get the patent office to, you know, review all relevant references, it will eventually make my patent that does issue much stronger. But if it issues, without you disclosing all the relevant references, then there is a cloud that hangs over that application or that patent forever, and it is potentially, you know, definitely grounds for invalidating the patent down the road.
Samar Shah:So it's a pretty serious requirement. You need to meet your duty of disclosure before the issuance of the
Jamie Brophy:patent application. Yeah. Definitely. Good point. You want your patent to be in as good of a shape as it can possibly be, especially if you think it might be subject to any kind of litigation.
Jamie Brophy:You want it to be as clean as possible.
Samar Shah: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 would recommend to clients at that point?
Jamie Brophy:Yes. Yeah. During the prosecution of the application, yes.
Samar Shah:Yeah. Yeah. And in fact, you would wanna submit that reference in an IDS, but you also want to file an RCE, something that essentially lets the patent office reexamine the patent application. It's called a request for continued examination. In that way, the examiner will have a chance to review the reference and take another pass at at your claims with this new information.
Jamie Brophy:Yeah. So when you receive the notice of allowance, prosecution on the application is essentially closed. So if you have anything else to submit, you would need to reopen prosecution, which is what you're talking about with the request for continued examination, and, boy, that would be painful. But, yeah, absolutely necessary if you're aware of anything.
Samar Shah:Yeah. That's right. That's right. So, yeah, something to keep in mind. Let's see.
Samar Shah:What else is there to talk about from, from, things you must do before you pay your issue fees? What else do you typically recommend, Jamie?
Jamie Brophy:I think I think that's it. You know? Just review everything. Make sure everything is in good shape. Yeah.
Jamie Brophy:I think that that's all I can think of. Is there anything else you recommend to your clients?
Samar Shah:Yeah. The other thing that I tell clients to think about is a continuation application. A continuation application is basically the same application that you previously filed, but with a different set of claims. So often, I'll talk to my clients about continuations, about whether they want another patent on the same invention, but maybe with a different scope, maybe a broader claim scope or a narrower claim scope or a claim scope that is more appropriate based on, you know, the prosecution of the patent application. This is a good time to start thinking about your continuation application because your ability to file a continuation will end forever once the patent is issued.
Samar Shah:So a notice of allowance will start the clock on on getting the patent issued. So once you pay the fees, the patent will issue. And once it does issue, you will forever forfeit the right to file a continuation application. So you must must start thinking about this and you must or, you know, I encourage my clients to file a continuation if they're gonna do before they pay the fees or at the same time that you pay the fees.
Jamie Brophy:Yeah. Absolutely. We do this a lot. You know, I think it's good practice to just file a continuation, you know, in case you decide that you do want a different different claim scope, then you have, you know, something pending that you can always amend the claims to, you know, whatever you want. The other benefit of a continuation is we already know the prior art that the examiner's gonna cite.
Jamie Brophy:We've already seen everything. So we have a pretty good idea of, you know, what we think is gonna be allowable in the continuation. So those are generally a lot easier to to prosecute. But, yeah, I think it's a good a good practice to just file that continuation and then, you know, leave your options open.
Samar Shah:Mhmm. Yeah. I agree. Yeah. Continuations are often strategic.
Samar Shah:Right? So if you have competitors on the horizon or a very creative competitor who is carefully trying to duck your patent claims, then, continuation may be the right vehicle for capturing some of those infringement. Or if the market has shifted in some way or if the invention has changed in some way, a continuation may allow you to get get those claims and and kinda right size your your protection to whatever the market condition or the product conditions are as of that date.
Jamie Brophy:Yep. Absolutely.
Samar Shah:And, Jamie, what is that timeline typically from the time you receive a notice of allowance to the time that the patent issues typically?
Jamie Brophy:I think it's generally, like, 2 to 3 months. You have a certain amount of time to pay your issue fee. And then once you pay your issue fee, I think it's 2 to 3 months, right, after until your patent issues?
Samar Shah:Yeah. So this is changing quite a bit. So the typical process is you get the notice of allowance. You have 3 months from that date to pay your issue fee. Once you pay the issue fee, you're right.
Samar Shah:It did take a while for the patent to issue because it had to go through a publication process, and the patent office would have to print the patent to send to you, which is pretty exciting. But I think as of a few weeks ago, maybe a month ago, the patent office has said that they're going to stop publishing patent application or issued patents. So we don't really know how long it's gonna take them to to for the patent to issue now that they don't have to go through all this, like, printing process and all that stuff. It used to be it'd take 4 to 6 weeks to get that patent issued once you paid the fees, but but it it could take as much as 2 or 3 weeks since the rule changes have occurred. We've had one patent that has issued Jamie since the new rules came into effect, and that one is still taking about 4 about 5 weeks to issue.
Samar Shah:So it's still taking quite some time, but I would bet that that time is gonna shorten quite a bit once the patent office has had an opportunity to kind of really implement the rules.
Jamie Brophy:Yeah. Interesting. I I wasn't aware of that. So they're not gonna be sending out the red ribbon copies anymore?
Samar Shah:Nope. They are not. That is, if you got one, then that might be one of the last ones
Jamie Brophy:that you have. Wow. Crazy. Okay. So, yeah, then, that makes it even more important to file that continuation.
Jamie Brophy:Like, as you're paying the issue fee, you know, before you pay the issue fee or right after you pay the issue fee, that that timeline is getting shorter. So that's good to know.
Samar Shah: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 agitated until that continuation is filed if the client wants to file 1. I I agree.
Samar Shah:Best practices would be to just file it with your issue fee. Save yourself from some heartache down Right. Down the road potentially.
Jamie Brophy:Absolutely. Okay. So we've talked about the duty to disclose, continuations, paying the issue fee. Is that it? Is that everything?
Samar Shah:I think so. I mean, I would say you're not out of the woods once you receive your notice of allowance. You're not out of the woods until the patent actually issues, which may be 3 to 6 months from your notice of allowance date. So you can go and celebrate a little bit, but you can really celebrate once that patent actually issues.
Jamie Brophy:Yeah. But then after the patent issues, you have your patent in your hot little hands. Is there anything else you have to do?
Samar Shah:Yeah. So there are some patent marking statutes out there. Right? So if you want certain types of damages, then you're required to mark your product as patented. And there are some requirements about putting the patent numbers and the product names in different places, for example, on the product or on the packaging or on your website.
Samar Shah:So there are all sorts of other things that you wanna start thinking about as a way to make sure that you can access damages that are afforded to you under the patent law. But as far as the patent process goes at that point, you are done. You know, there there is a chance that somebody may challenge the patent. There is this thing called a post grant review, which is available to litigants up to 1 year after your issuance date. There's an IPR process.
Samar Shah:There is a federal court litigation process. So you have to think about all those things and eventualities down the road if you are in a dispute with somebody. And you also had to think about marking up your product with the patent number in some way, but that's about it. I think you're done with the patent process. You're kind of in the pre litigation process at that point.
Samar Shah:You have an asset, and the whole point of that asset is to exclude others from practicing your invention. So you had to start thinking about those things once you get that issuance.
Jamie Brophy:Yeah. Great advice. Absolutely. So can you also talk a little bit about how long the patent is good for and maintenance fees? Do do they have to pay maintenance fees along the way during the life of the patent?
Samar Shah:Yeah. Good question. So a design patent, I'm sure we'll talk about this at some point, is good for 15 years from your application filing date. So it's not based on the issue date, but the filing date. And you don't have to pay any maintenance fees on the design patent application or on the design patent once it issues.
Samar Shah:With a utility patent application or a utility patent, it's good for 20 years from your filing date. And it's not from your provisional filing date, it's from your non provisional filing date. And you do have to pay, maintenance fees on it. It's every 3 and a half to 5 and a 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 miss it, your patent will become abandoned and there's very little you can do to revive it at that point.
Samar Shah:So have your attorney or have somebody stay on top of your maintenance fees deadlines, But you will have to pay those in order to continue to have your patent. Otherwise, it will become abandoned.
Jamie Brophy:Yep. Yep. I think we covered a lot of a lot of good information. Do you have anything else to add, Summer?
Samar Shah:No. I think this is it. Yeah. Do enjoy receiving that notice of allowance. It's a big deal, but be sure to check your IDSs and your references and your continuation decisions before you celebrate too much.
Jamie Brophy:Yes. Absolutely. Okay. Great info. I'll talk to you next time, Summer.
Jamie Brophy:Yeah.
Samar Shah:Thanks, Jamie. Alright.
Jamie Brophy:Thank you.
Samar Shah:Yep. Take care, everyone. Thank you for joining us on the Patent Pending Made Simple podcast. I hope you enjoyed our show. If you'd like to receive updates, view the show notes or access a direct link to any resource, go to the episodes page on patent pending made simple dot com.
Samar Shah:To help others find our podcast, please like, share, and subscribe. Thanks again for tuning in. I look forward to having you with us next time on Patent Pending Made Simple. This podcast has been hosted by Outlier Patent Attorneys and is not intended to nor does it create the attorney client privilege between our hosts, guests, or any listener for any reason. The content of this podcast should not be interpreted as legal advice.
Samar Shah:All thoughts and opinions expressed herein are only those from which they came.