NOTICE OF ALLOWANCE & PATENT PROTECTION

Once the examiner has reviewed a patent application and found that it has one or more allowable independent claims, he or she will issue a Notice of Allowance. This requires the applicant to pay the publication fee—if it has not been paid already—and an issuance fee. Once that is paid, the patent office will print the patent and provide the inventor with a ‘ribbon copy,’ a certified copy of the patent featuring the patent office sea and ribbon, signed by a certifying patent officer.

Maintaining your patent

At this point, the patent can be enforced against potential infringers. However, the patent must be kept valid in order to keep patent protections in place. To do this, maintenance fees must be paid four years, eight years and twelve years after the patent office grants the patent. Federal regulations set the time periods when these maintenance fees can be paid without having to pay a surcharge. Those periods, referred to as the ‘window period,’ are the 6-month periods immediately preceding each of the three due dates, which are defined by law.

This means that the three window periods occur—in relation to the initial granting of the patent—(1^st) 3 to 3 1/2 years, (2^nd) 7 to 7 1/2 years, and (3^rd) 11 to 11 1/2 years after the initial approval. A maintenance fee paid on the last day of a window period can be paid without surcharge. The last day of a window period is the same day of the month the patent was granted 3 years and 6 months, 7 years and 6 months, or 11 years and 6 months after grant of the patent. Thus, if your patent was granted on January 1^st, 2020, the end of the first window period would occur on July 1^st, 2023.

Patent maintenance fee grace periods

If you are slow in paying your maintenance fees, there is still a ‘grace period’ in which you can pay the fees, with a surcharge, and avoid having your patent expire. These periods, referred to generally as the grace period,’ are the 6-month periods immediately following each due date (the last day of the window period when you can pay your maintenance fee without a surcharge). Counting from the day your patent is first approved, each grace period occurs (1^st) 3 1/2 years and through the day of the 4th anniversary of the grant of the patent, (2^nd) 7 1/2 years and through the day of the 8th anniversary of the grant of the patent and, (3^rd) 11 1/2 years and through the day of the 12th anniversary of the grant of the patent.

For instance, if your patent was granted on January 1^st, 2020, the first grace period would tend from July 2^nd, 2023, to January 1^st, 2024. As long as each of these three maintenance fees is paid no later than the 4^th, 8^th, and 12^th anniversaries of the initial granting of the patent, your patent will not expire.

These fees cannot be paid in advance, as the Patent Office raises the fees on a regular basis. Remembering to pay these fees can be difficult, especially over such a long period of time. Typically, we charge $200 per maintenance fee submission, plus the cost of the fee.

Filing a continuing application

Before paying your issue fee, You should determine if you need to file another patent application with your existing priority date.  There are a few reasons why you would want to do this:

• You would like to license your product – in many cases prospective licensees will want different claims than we were able to patent for you. Filing a continuation application gives a licensee the opportunity to obtain claims that it finds most valuable.
• You did not patent your entire invention – in this situation there were features of your invention that were left out of claims for strategic reasons or were restricted out of your invention by the patent examiner during prosecution. Filing either a continuation or a divisional application gives you the opportunity to patent something that was not patented during prosecution.
• You have invented an improvement from what you originally filed – you need to patent your improvement within a year of the first time you used it in public. This requires a new application entirely, but we may be able to use some parts of your previous application.
• Some combination of the second and third reasons – you did not patent everything that you could have patented and you have some new material as well. In this case we would file a continuation-in-part application.

Patents are negative rights, and strongest when they can be pooled together.  A patent gives you the right to exclude others from making, using, selling, or importing your claimed invention.  It does not give you the right to make, use, sell or import the product.  That right depends on whether components of your device are protected by other patents.  Another party owns a patent may prevent you from utilizing your own invention. In addition, government laws, such as antitrust laws and regulations of the Food and Drug Administration (FDA), may restrict the ways in which you can utilize your invention. So, contacting a registered patent lawyer and having them handle this can save a lot of time and heartache.