Maiorana, P.C.

Should I Proof My Issued Patent?

Does It Matter if My Issued Patent Has an Error?

After we pay an issue fee, discussed here, we normally get an issue notification that we forward along to our clients. We normally put in a note asking whether you would like us to provide a quote for proofing the text of the issued patent.

A good question is why would the text have any errors? This is more of a process issue with how the Patent Office works with documents. We present the documents in PDF format, then the Patent Office does an OCR (optical character recognition) to the text that we submit. The process is normally pretty good, but there are likely several misspellings in the issued text. Most big clients don't have a concern about this, and would rather not spend money on proofing individual patents. This may or may not be a reasonable approach, but with the overall cost cutting measures around most businesses, we don't give it much thought.

As a practical matter, we can delay at least a couple of weeks after payment of the issue fee to get things in order. It is never a good idea to go to close to a deadline. While natural disasters, such hurricane Irma do occur, other things also occur, such as utility outages, and other disruptions to businesses. So we begin this discussion of a patent continuation during the time after receiving a notice of allowance, but prior to the payment of the issue fee.

However, with smaller clients, it may be interesting to do a check like this. We put the issue out there, and normally don't hear back much.

An interesting issue is why the original specifications are not uploaded in a format that the Patent Office can use directly. With the modernization of the Patent Office systems, this is now an option. We adapt our procedures to consider this. It looks like the Patent Office system is reasonable and takes out any metadata that is uploaded. We are somewhat skeptical with any new system, and want careful analysis of what the down sides would be. The original goal of the Patent Office was to have the basic sign-in system updated several years ago. They missed this deadline and made changes. Then the new deadline was December of 2018. The new system is notoriously unreliable, particularly in the afternoon when both the East coast and West coast attorneys of the United States are all online. They extended the deadline again. The government shutdown didn't help. The Patent Office appointed a new Chief Technical Officer after the shutdown ended. Hopefully this will have a positive affect. In the summer of 2018, the Patent Office had a historically long breakdown of their system. They were NOT able to provide routine services for about a week. As a small nimble, tech savvy IT boutique, we were able to adapt. The process took a lot of extra overhead, but we managed to make it through. Less tech savvy firms would likely have much more difficulty in adapting to such a situation.

Call to set up your initial interview. MI - 586-498-0670 or CA - 408-890-6549.
  • Chris Maiorana
  • June 2019
Topics: United States Patent Office, Continuation Patent Application, Priority Date, Patent Law, Patent Issue Fee
Related: Is there a way to speed-up the U.S. Patent Office?;Did the government shutdown effect the United States Patent Office?;Patent Interference Practice

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