When is a patent application allowed?
When your patent application has been allowed, the USPTO will send a Notice of Allowance setting forth a 3-month deadline to pay the issue fee. This document will also include a Notice of Allowability starting on a separate page which will include the Reasons for Allowance. The examiner might also require corrected drawings by checking the appropriate box on the first page of the Notice of Allowability.
When should the issue fee be paid?
There are strategic reasons for the timing of the issue fee payment. If you are unsure about the possibility of filing a continuation application to pursue additional claims, then you may want to hold off on paying the issue fee.
If you are absolutely certain that you do not want to file any continuations, paying the issue fee earlier could avoid or minimize IDS obligations should new prior art turn up in a related case.
How much is the issue fee?
The amount of the USPTO issue fee is $500 for a small entity and $1,000 for a large entity. Expect attorney’s fees for payment of the issue fee in the ballpark of a few hundred dollars.
Our firm charges a flat rate for not only paying the issue fee, but also for sending the original patent certificate to the client once received. We believe sending only one bill is a more efficient way of billing the end stages of the patent application process rather than sending an additional invoice for mailing the patent certificate.
Should you file a continuation before the patent grant date?
This question will require some claim analyses with your patent attorney on a deeper level. Sometimes, you can’t predict how competitors will react to your patent – i.e., how they might try to design around the issued claims. Filing a continuation application as a placeholder – even if you’re currently unsure of how you might amend the claims – preserves your opportunity to fashion new claims to capture the competition while maintaining your priority date.
Having a pending continuing application in place bolsters the value of your IP portfolio and increases opportunities for licensing or potential acquisition. Acquirers typically prefer having pending child applications that enable them to build upon the protection afforded by granted parent patents.
How does US patent allowance affect related international applications?
If you have any foreign counterpart applications with claims similar in scope to the allowed US claims, you might be able to take advantage of the Patent Prosecution Highway (PPH) to streamline the review of your foreign cases. Basically, the foreign patent examiner may be able to rely upon the US patent examiner’s review and thus allow similar claims in the foreign application. Not every country is a member of the PPH so you’ll want to consult your patent practitioner.
Even if a particular foreign country is not a PPH member, the prosecution of your US application may still lead to a more efficient foreign patent prosecution. To the extent the same prior art references are being cited by foreign patent offices, your US patent attorney may be able to use prior arguments and/or claim amendments to overcome the foreign rejections. This reduces the cost of foreign patent attorneys since they will spend less time in responding to the foreign rejection.
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