Maiorana Patent Law, PA

USPTO - Follow Up Patent Applications

Do I Need a Follow Up Patent Application?

After filing a patent application, it is a good idea to review any advances or improvements or modifications to your actual commercial embodiment that may have occurred after filing the original application. It is true that you get priority back to your initial filing date, discussed here. However, if there are improvements that are not discussed in the original patent application, it is generally a good idea to consider filing a supplemental continuation application (discussed here) or a continuation-in-part application (discussed here).

The time that your patent application is pending at the USPTO, before a first Office Action is mailed, may be a good time to make this type of review. I discuss the overall process after filing a patent application here.

Clients tend to be concerned with how long it takes the United States Patent Office (USPTO) to mail a first office action. We discuss that here. Remember, Patent Term Adjustments (PTA) are available if the Patent Office takes more than 14 months. I have seen on too many occasions that a client has a desire to get an Office Action or some response from the Patent Office. I have even seen a petition to make special get filed (discussed here) to speed things up. In some of these very cases, once an Office Action is mailed, the client discovers that they don't have the funds available to have us prepare a response, and the patent application ultimately goes abandoned.

You should budget accordingly for the follow-up needed to successfully obtain a patent application. While we are generally far above average on getting a patent application allowed after one response (approximately 70% of the time), if we do not get the opportunity to respond, then the chances quickly go down to zero.

Call to set up your initial interview. MI - 586-498-0670 or CA - 408-890-6549.

  • Chris Maiorana
  • September 2017
Topics: Continuation Patent Application, Priority Date, Patent Law, Patent Term Adjustments (PTA), petition to make special

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