WSID — One last step to a patent? [Part 2]

[This post is the fifth in the series, “What Should I Do (WSID)?” In this series, I will discuss various scenarios involving intellectual property and business.]

“I just received a Notice of Allowance from the USPTO! What should I do?”

Receiving a Notice of Allowance from the USPTO may seem like the end of a long journey that may have taken several years, from the initial conception of your innovative idea to now. It’s time to pay the final fees to the USPTO, maybe order a commemorative plaque, and celebrate your accomplishments, right?

Not so fast. In this article, we’re going to look at some of the mechanical aspects of dealing with an allowed patent application. In a parallel article, I’ll discuss the IP strategy considerations for deciding what to do after a Notice of Allowance.

Buckle up — we’re going to get technical here.

In order to maximize the value of your issued patent, there are several possible next steps:

  1. File a Request for Continued Examination (RCE)
  2. File a Continuation (CON) or Divisional (DIV)
  3. File a Continuation-in-Part (CIP)
  4. Abandon the application, or
  5. Pay the issue fee and let the patent issue

Each of the above possibilities requires careful consideration of your specific situation. I’ll discuss four of the major factors below.

1. Review the allowed application

If you were paying for any ad copy or website change or software code, you’d check for accuracy, right? Patents are no different.

Ask your patent professional for the clean, final version of the patent application as it was allowed, and read it through carefully. Are there any obvious mistakes in the application as-allowed? If so, minor typographical errors, such as misspelled words and errors that cropped up through Optical Character Recognition (OCR) processing, can be corrected before the patent is issued. [As an aside, minor errors can still be corrected after the patent has issued by filing a request for a Certificate of Correction, which will become an addendum to the issued patent.]

If there are more major errors, such as mistakes in the conceptual descriptions, previously omitted explanations, or bad mathematical formulas, correcting them may be much more complicated. The USPTO has strict rules against the addition of what would be considered new materials into the application after filing and, depending on the severity of the omissions or mistakes, you’ll have limited options for remedy. If the changes you’d like to make are extensive, then talk with your patent professional about your options.

2. Understand your application’s file history — Duty of Disclosure

One thing that can kill your issued patent is if you have not been forthright with the patent office. That’s right, off you’ve been hiding something from the USPTO during the examination of your patent application, any resulting issued patent could be worth $0.00 or less.

There is a concept in patent law called “duty of disclosure." This concept essentially means that anyone who is involved in the prosecution of your patent application must submit to any potentially relevant documents to the USPTO examiner for consideration. For example, if you or your attorney comes across a patent or publication that is arguably related to your patent application in some way, you are obligated to notify the USPTO examiner on your case. An especially obvious case is if you have another related patent application pending at a foreign patent office and you have received any correspondence regarding the related foreign patent application — make sure that your US patent counsel has cited the correspondence with the USPTO. If you don’t disclose such documents to the USPTO, there may be severe consequences, including invalidation of your patent even if it issues.

The time period during which the duty of disclosure is in effect is from the filing date through the issue date (or abandonment date) of your patent application. That means you STILL have to make sure you don’t have in your possession any references of any relevance to your application that you have not yet cited. If you do, here’s your last chance to get them to your USPTO examiner. While such last minute filings may delay the issuance date of your patent, it’s much better than paying for the issuance of a potentially invalid patent.

3. Understand your application’s prosecution history

The big question here is: Did you leave anything on the table?

You and your patent counsel have made various decisions during the prosecution of your patent application, such as: 1) selecting a certain group of claims to prioritize; 2) amending your claims; and 3) making arguments to support your claims. If you pay the issue fee and allow your application to issue into a patent, did you get as much protection as you could from your initial filing? Or are there more coverage for your innovation you could get from your patent application filing?

For published patent applications, the complete file history can be found through the USPTO website service called Patent Application Information Retrieval portal or Public PAIR. You should keep in mind that information on Public PAIR is available to anyone, including your competitors, which is one reason you should carefully review any document filed with the USPTO. You can, however, use the public availability of this information to your advantage by monitoring the status of your competitors’ patent applications, for instance.

Getting back to the topic at hand, as an example, if you selected a few claims out of the several that were initially filed, you likely had to file a Response to a Restriction Requirement to do so. Consequently, the claims that you did not select may still be available to you to file in a new Divisional (DIV) application. A DIV is essentially a carbon copy of your original patent application, including the claims that you did NOT select in your original patent application, with the same priority date as your original patent application.

A DIV is useful when, for instance, you prioritized the mechanical aspect of your innovation in your original patent application, so you had chosen to not initially pursue the process aspect off your innovation at the outset. If you had filed claims to both the mechanical and process aspects of your innovation in the original filing, the Restriction Requirement you’d previously received will have a little bit of detail regarding the examiner’s thoughts about the claim groupings.

The prosecution process of your original patent application may also have given you ideas for new claims you COULD have filed based on your original disclosure. If these new claims are supported by the originally patent application, then you can file these new claims in a Continuation (CON) application, which will be entitled to the same priority date as your original patent application.

Additionally, you may have gotten additional improvements or variations to your initial innovation that may warrant an additional patent filing. If these new ideas are closely related to your initial idea, then the new concepts may be filed as a Continuation-in-Part (CIP) application based off of the original filing. Because you are adding new material to your original innovative concept, the CIP will get a new filing date. Still, a CIP will establish a clear relationship between your original concept and your new improvements, which may be desirable in certain contexts. Talk with your patent professional about the pros and cons of a CIP.

A special situation is if you received your Notice of Allowance without any other objections from the USPTO, which is referred to as a “First Action Allowance.” For example, there are times when you may have received a Notice of Allowance as the first notice from the USPTO, without any argument from the examiner. The good news is, you’ll likely obtain a patent with a clean prosecution history. The bad news is, you may have described your invention too narrowly in the claims as filed. A “First Action Allowance” also may be perceived as resulting in a patent that has not been sufficiently battle-tested, such that patent is viewed as being weaker than another patent that has overcome more rigorous objections from the USPTO. Do consult your patent counsel if this situation occurs.

One more thing to consider is if you already have any other related applications, such as a foreign counterpart to your US application, or a previously filed DIV, CON or CIP. As I’d mentioned in the Duty of Disclosure section, you need to cite with the USPTO any correspondence you may have received from a patent office regarding a related patent application. You can also use information you’ve learned from the other applications to tweak your US patent prosecution strategy. As an example, if you receive feedback from the European Patent Office that your patent application does not satisfy the Unity of Invention requirement, then you can anticipate that you may be receiving a Restriction Requirement from the USPTO and plan your next steps accordingly — for instance, if you are planning on manufacturing your device in the US and distributing in Europe, you may choose to prioritize the manufacturing process claims in your US patent prosecution, while focusing on the device claims in Europe.

There may be other factors, such as arguments you and your patent counsel made to the patent examiner that may not have been considered, or information about your competitors that you’ve learned since you initially filed your patent application that may affect how this allowed application now fits into your overall IP strategy. Even after receiving a Notice of Allowance, you can still tweak your patent prosecution history by filing amendments along with a Request for Continued Examination (RCE). An RCE essentially restarts your patent prosecution anew, with the examiner looking at your case with a fresh perspective.

For example, you may have learned that your closest competitor is planning to launch a new product line that is similar to an example embodiment you described in your patent application although you didn’t file claims specifically covering that embodiment. In that case, you may want to use the opportunity to tweak your claims such that your competitor’s product would be covered by your amended claims. Now, keep in mind that in many cases it may be more advantageous for you to let your patent application issue into a patent (i.e., get a patent in hand), then file a CON to cover your competitor’s new product line.

4. Let it go — Abandoning your patent application

Patent prosecution is expensive in terms of both time and money. You’ve probably already sunk quite a bit of money and effort into this allowed application.

However, there may be additional financial issues to consider. For instance, you may have figured out your allowed patent application doesn’t cover your competitor’s products such that it may not be worth as much to you as you’d thought. Or, you may not have the financial means to both pay the issue fee and to file a new CON, which would make more sense in your overall IP strategy.

So, a final action to keep in mind is to simply not pay the issue fee and let this allowed patent application to become abandoned. The patent prosecution costs and effort would then become sunk cost, and you’ll go on with your business life. Definitely talk it over with your patent counsel whether abandonment would make sense in your specific situation.

Now that you know your different courses of action that are possible at this juncture, let’s dive into the more philosophical issue of how your allowed patent application fits into your overall IP strategy. That’s the topic of the parallel post this week.

About the author and disclaimer: Yoriko Morita has been working with clients, large and small, to define, protect, and monetize intellectual property for 20 years. She currently helps clients with such IP-related questions, as well as developing integrated business/technology/patent strategies, through her company, Patents Integrated. The contents of this article are intended to be informational only, not legal advice. The reading of this article does not establish an agent-client privilege between you and Patents Integrated, and Patents Integrated is not responsible for any damages arising from your use of the information in this article under any circumstance. Your use of the information in this article is at your own risk, and you should seek the advice of a licensed legal professional regarding your own specific situation.

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