Patent Attorney and Founder
If you submitted your patent application close to a year ago, or even longer, and have patiently waited and responded to one or more office actions, you are likely ready to be done with the patent filing process. Applying for patent protection can, at times, seem like a never-ending process. When you finally receive a notice of allowance (NOA) from the USPTO, it can be tempting to pay the required fee immediately and put a quick end to your patent journey — but doing so could mean you are short-changing yourself.
Make no mistake, receiving an NOA is what you’ve been hoping for all along. Essentially a patent allowance notification, the NOA lets you know that your invention is eligible for patent protection. However, the NOA is not quite the end of the process: There are some additional steps to consider before you celebrate your success.
Step 1: Understand Fee Requirements
Your notice of allowance USPTO mailing will include details about required fees and whether revised or final drawings are needed. You have three months from the date the patent allowance was issued to pay these fees and submit any final information. Within approximately 4-6 weeks from the time you pay your fee, you should obtain patent rights and protection! You can expect to receive an official patent number and date, and a hard ribbon copy of the patent.
It is important to keep an eye on the three-month filing deadline. If you fail to pay the fees by the due date, you are essentially abandoning all the work you did to get to this point. In certain situations, it may make sense to pay the patent fee right away. For example, if you have investors who made their investment in your business contingent on you obtaining a patent and you need the capital, paying the fee promptly may make sense.
However, there are several reasons to exercise patience and consider holding off on making that payment, as discussed more below.
Step 2: Consult With Your Patent Attorney
When you receive a notice of allowance patent mailing from the USPTO, you have one more chance to submit improvements or variations not originally covered in your filings.
Consulting with your patent attorney at this point is critical, so you can determine whether it makes sense to make any additional filings for your patent portfolio. You have the right to file continuations, divisionals or continuations-in-part (collectively referred to as “child patents”) for your patent — but only while the application is still pending. If you pay the patent fee without exploring your need for the additional protection these filings can provide, you may be giving up legal rights.
Continuation applications allow you to extend your patent protection to include new claims. This can be particularly valuable in situations where your competition is actively designing around your patent application. You can also use filings to broaden the scope of your existing claims to make it even more difficult for others to try to avoid patent infringement claims by designing around your patent.
Step 3: File Child Patents
If you have made improvements to your design, or if you have identified situations where your competition could work around your patent, it may make sense to file one or more child patent applications. Your attorney will work to complete these filings quickly, and while your application is still pending (before you pay the fee detailed on your notice of allowance.)
The different types of child patents are:
- Design Patent: The basis of a new design application comes from the specification and more so the drawings of the original/parent filing
- Continuation: Additional independent claims are sought from the same core specification as the parent application
- Continuation In-Part: At least some of the new claims sought require additional specification to substantiate the new claims
- Divisional Application: An unelected invention/species that was previously restricted may now be elected
- International Application: While these applications can be complex, you can still file to protect your invention around the world
In Conclusion
Before you rush to pay the notice of allowance fee, schedule a consultation with your patent lawyer and explore whether additional child patent applications are warranted. In doing so, you can be more confident in the patent protection you have been patiently waiting to receive.
Bold Patents works with inventors and entrepreneurs across the country to help them secure intellectual property protection. Our skilled legal team and staff can help you understand what type of protection will best meet your needs, and we’ll help you through the process of securing patents or other IP rights. You can expect personalized guidance, legal advice and assistance, all delivered through a remote service model with transparent pricing. Whether you need assistance responding to a USPTO office action or want to start the patent process from the beginning, Bold Patents can help.