Getting a Notice of Allowance and Your Patent Granted. Episode 39

Returning to U.S. Applications

We’re finally back to discussing U.S. patent applications.

In the last six episodes, I talked about PCT applications and other foreign application issues. It was important to cover those topics because when filing a U.S. patent application, you should be aware of foreign deadlines and considerations.

The last episode related to U.S. applications was Episode 32, which covered what to do and expect after filing your U.S. application. In this episode, I’ll discuss notices of allowance and what happens when your patent is granted.

What Is a Notice of Allowance?

A notice of allowance is issued after a patent examiner reviews your application and determines that:

1. There are no errors.

2. All your claims are new, useful, and non-obvious.

In reality, it is highly unlikely that you will receive a notice of allowance immediately. Patent examiners almost always find something to reject.

• The rejection might be minor, such as a typo or an incorrect drawing.

• It could also be substantial, such as the examiner finding prior art that makes your invention obvious or unpatentable.

I will go over the different types of rejections and objections in future episodes. But for now, let’s assume the best-case scenario—that the examiner issues a notice of allowance.

What Happens When You Receive a Notice of Allowance?

When you receive a notice of allowance, you will also receive Form PTOL-85, which includes the following:

• The issue fee that you must pay:

• $1,000 for a large entity

• $500 for a small entity

• $250 for a micro entity

• (Fees are slightly lower for design patents.)

• Verification of your entity status:

• If your entity status has changed since you filed, you must pay the appropriate fee.

• The option to update your correspondence address.

• A section for listing names to be printed on the front page of the patent:

• You can list patent attorney names, a law firm name, or an assignee name (if you assigned the invention).

How to Pay the Issue Fee

You can pay the issue fee using:

• Check

• Credit card (easiest method)

• Other approved payment methods

Once you print and sign the form, you can:

• Upload it online through the USPTO system.

• Send it by mail to the USPTO.

• Fax it to the USPTO.

Important Deadline: Paying the Issue Fee

You have three months from the date of the notice of allowance to pay the issue fee.

This deadline CANNOT be extended.

If you fail to pay on time, your entire patent application will be abandoned, and all your hard work will be wasted. So, pay the fee as soon as possible! You can revive an abandoned patent application if you miss this deadline, but it is expensive and not guaranteed.

What Happens After You Pay the Issue Fee?

Step 1: Issue Notification

• Usually sent within five weeks after you pay the issue fee.

• Includes your patent number and the issue date.

• Patents are always issued on a Tuesday.

Step 2: Patent Issuance

• Typically issued about three weeks after receiving the issue notification.

• You don’t have to do anything once you receive the issue notification—your patent will issue automatically.

Why You Should Track Your Patent Issue Date

Even though you don’t need to take action after receiving your issue notification, you should mark down your patent issue date.

The issue date is the final deadline to file continuing applications.

I haven’t covered continuing applications yet, but I will in future episodes.

A continuing application allows you to:

• Protect additional versions of your invention.

• Prevent the USPTO from using your own patent against you in future applications.

• Broaden your claims to prevent competitors from designing around them.

Once your patent issues, you CANNOT file a continuing application.

How Long Does Your Patent Last?

Most utility patents last 20 years from the filing date.

However, you must pay maintenance fees at specific intervals to keep your patent active.

I will cover maintenance fees in the next episode.

Final Thoughts

Receiving a notice of allowance is an exciting step toward getting your patent granted.

• Pay your issue fee on time.

• Track your patent issue date.

• Consider whether you need to file continuing applications before your patent issues.

I'm Adam Diament, and until next time, keep on inventing!