What is a Notice of Allowance in a patent application?
A Notice of Allowance (NOA) is a USPTO document indicating that a patent application has been allowed. The approval of your patent application is basically the finish line of your journey and presumably the goal of every applicant. If you have received the NOA, congratulations! As you approach the end of the journey for this particular patent application, you’ll need to take certain final steps to wrap up your patent. There is, however, one critical thing that should not be overlooked. The failure to consider this all important question can lead to regret down the road.
Next steps to consider after a Notice of Allowance
The most obvious action item is to pay the issue fee by the non-extendable 3-month deadline. You might be asking, “Why not pay this immediately so you don’t have to worry about the deadline?” Good question. It turns out that there are prudent reasons for delaying the issue fee payment.
This is when you need to confer with your patent attorney on timing strategies. Why? Because once the issue fee is paid, your patent application will be on track to a grant that might lead to an irreversible loss of rights.
How can a patent grant lead to an irreversible loss of rights?
It seems counterintuitive. How can a patent grant lead to a loss of rights? The potential loss boils down to future patent rights that you may need one day. Your right to file a continuing application exists only while a patent application is still pending. This pendency is gone once your patent is granted.
So while it may seem obvious to pay the issue fee earlier in order to get your patent granted sooner, it may be wise to hold off on paying the issue fee to buy more time to file a continuation application.
How can you be sure that your patent will not be circumvented?
Competitors invest significant amounts of time and money in studying patents in order to design around them. I know because clients have hired us to avoid patent infringement. In some cases, avoiding infringement is not difficult or complicated. It can be rather simple when you understand the claims. We have also responded to cease-and-desist letters where we clearly laid out our reasons for noninfringement.
Hindsight is perfect. The challenge is that you do not have the benefit of perfect hindsight as you are preparing to pay the issue fee. You’re just glad that your patent will be granted soon, but you have may blinders on that prevent you from seeing how competitors will sidestep your claims.
When will your patent be granted?
Expect your patent to grant about 4-6 weeks after payment of the issue fee. All patents are issued on Tuesdays. So you do have some time to file a continuing application, if necessary, but you need to decide upfront if it makes sense for you.
Having trouble getting a Notice of Allowance in your patent application?
Patent rejections are typically difficult to overcome. Examiners can be stubborn. A successful approach combines both science and psychology. You are dealing with a human being on the other side. To be persuasive, you have to acknowledge the human factor when trying to overcome rejections. That is why we make frequent use of examiner interviews.
Need help getting a patent application approved?
Reach out to US patent attorney Vic Lin via email or call (949) 223-9623 to request a flat rate estimate for responding to your patent Office Action. Let us propose a holistic approach that addresses the human and technical factors in overcoming your rejections.
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