What to do and Expect After You File Your Patent Application. Episode 32

(This episode first aired in 2018. Many things have changed about the submission process since then such as the use of Private PAIR and the First Office Action Prediction)

What to Do Immediately After Filing

So, you’ve finally submitted your patent application to the patent office—now what?

Calendar Your Filing Date

The first thing you should do is put your filing date on your calendar. There are important deadlines you need to be aware of:

• 12-Month Deadline: You have 12 months from your filing date to file in foreign countries if you want to claim priority to your U.S. application.

• Claiming priority is essential because if you file an application in a foreign country without referencing your U.S. application, you could be barred from obtaining a patent there.

• This applies whether you file directly in a foreign country or through a PCT (Patent Cooperation Treaty) application, which covers multiple countries at once.

• 30-Month Deadline: You should also mark the 30-month deadline on your calendar, which applies if you filed a PCT application first. I’ll go into more details about PCT applications in a future episode.

Marking Your Product as “Patent Pending”

If you have an actual product that you’re selling, you should label it as “Patent Pending.”

Some people like to include their patent application number on their product, but most don’t. There are two reasons for this:

1. Confidentiality – Your application won’t be published until about 18 months after filing.

2. Strategic Advantage – If you disclose your application number, competitors may look it up and discover that the only patentable feature is, for example, a new on/off switch. They might then copy everything else about your invention except for that switch. By keeping details vague, competitors might be hesitant to copy any part of your product.

Once your patent is granted, you will be required to disclose the patent number, but during the pending stage, you don’t need to—and probably shouldn’t.

Receiving Your Official Filing Receipt

Although you receive an electronic receipt immediately after filing, the official filing receipt from the patent office will arrive within a few weeks. The patent office does a quick review to check for completeness, including:

• Declaration submitted

• Signed power of attorney (if applicable)

• All required parts of the application data sheet

What to Check in Your Filing Receipt

Once you receive your official filing receipt, review it carefully. It will include:

• Your application number

• Your official filing date

• The assigned patent office art unit

• Fees received

• Applicant’s name

• Assignment status (if applicable)

• Claimed priority to any foreign or domestic applications

• Your entity size (micro, small, or large)

• Any missing parts and deadlines to submit them

Another critical detail is whether a foreign filing license has been granted.

Foreign Filing License

There is a six-month restriction on filing a patent application in a foreign country unless the U.S. Patent Office grants you a foreign filing license.

This rule exists so the U.S. government can review patent applications for issues related to national security, warfare, or nuclear energy.

In my experience, foreign filing licenses are almost always granted, but be sure to check your filing receipt to confirm.

Checking the Status of Your Application with Private PAIR

To track your patent application, log into Private PAIR (Patent Application Information Retrieval).

PAIR has two versions:

1. Public PAIR – Available to anyone, but only shows information for published applications (typically after 18 months).

2. Private PAIR – Requires a digital certificate and login credentials.

How to Use Private PAIR

1. Go to the USPTO website and search for Private PAIR.

2. Log in with your digital certificate and password (if you’re a registered e-filer).

3. Enter your application number to access status updates.

First Office Action Prediction

One useful feature in Private PAIR is the “First Office Action Prediction” tab. Clicking this will estimate how long it will take to receive a response from the patent office based on the backlog of your specific art group.

Dealing with Patent Examiners

Should You Call the Examiner?

I strongly advise against calling the examiner to ask about your application’s status or to request that it be moved up.

• They won’t move it up for you.

• You don’t want to annoy the examiner. Even if they don’t intentionally hold it against you, a subconscious bias could develop—and you don’t want that.

Be Friendly and Professional

Remember the saying: “You can catch more flies with honey than with vinegar.”

Patent examiners are people too. Being courteous and professional can go a long way in how your application is handled.

Discussing Your Invention After Filing

Now that your application has been filed, you can discuss your invention without requiring a non-disclosure agreement (NDA).

However, keep in mind:

• You should still be cautious. Just because you can discuss it doesn’t mean you should.

• Don’t disclose improvements you’re considering—only discuss what’s already in the filed application.

Before filing, discussing your invention publicly could risk your patent rights. Now that it’s filed, statutory bars no longer apply to the information already in the application. I’m Adam Diament, and until next time, keep on inventing!