What to do before utility patent application is published

Utility nonprovisional patent applications are typically published around 18 months from the priority date. This event usually comes and goes without much fanfare. Before your patent application is published, applicants should consider at least two questions:

  1. Have any improvements or modifications been made?
  2. Do you want to protect those changes in foreign countries?

Applicants who have developed improvements or modifications to the patent-pending concept would be prudent to take certain steps before publication, especially if international patent rights are desired.

Any improvements or modifications to the patent-pending invention?

In the product development phase, it is fairly common for a concept to go through changes and improvements. Unless inventors had anticipated this, the original specification most likely will not cover these changes. You will need to file either a continuation-in-part (CIP) or a new standalone patent application, which may be a provisional or nonprovisional application. In either case, the new subject matter will not be entitled to the priority date of the original filing.

Why does a later filing date matter?

Your own published patent application can potentially become prior art against your subsequent patent application for a related invention. By planning ahead, you can avoid your patent publication being used against you as prior art. Time is of the essence, and deadlines vary depending upon whether you seek US patents or foreign patents for the improvements.

Protecting improvements in the US before your patent application is published

The US patent system gives inventors a 1-year grace period from the earliest date of public disclosure to apply for US patents. A patent publication would be considered a public disclosure made by the inventor. Accordingly, applicants for US patents have up to one year from the publication date to file a new US patent application without their patent publication being used as prior art against them.

When your pending patent is published, the patent application file history will be accessible to the public. Third parties will be able to review not only what you originally filed, but the ongoing back-and-forth prosecution between you and the examiner. Filing a subsequent US application for your improvements prior to the publication date of your pending application also gives you an advantage of securing an earlier filing date before third parties can see your first nonprovisional application.

After the 1-year grace period, an applicant may still file a continuing application in the US with priority claims linking all related previously filed applications. This priority claim will give the applicant some flexibility in drafting claims in such a way so as to secure an earlier priority date to precede potential prior art.

Protecting improvements internationally before your patent is published

Unlike the US, most foreign countries do not have such a lenient grace period. So if you wish to protect any improvements in non-US countries, you should definitely file a new application for the improvements prior to the date when your patent application will be published. This will enable you to file subsequent foreign applications with a priority claim back to your pre-publication filing date.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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