Maiorana, P.C.

Patent Law FAQ - Notice of Allowance

What is a Notice of Allowance?

After filing an amendment or a response, the Patent Office will hopefully mail a Notice of Allowance. This is certainly an exciting event, especially for an individual inventor. But what does this mean? What deadlines does this trigger? What legal fees will I incur moving forward?

There is a 90 day period to respond. This is NOT an extendable deadline. The response is the payment of the issue fee. The cost of the issue fee depends on whether you are a large entity ($1,000), small entity ($500), or micro entity ($250). Whether you qualify for micro entity status depends on your income and the number of patents you have applied for in your lifetime. I discuss that here in connection with a discussion of patent maintenance fees. We have a small attorney fee included for processing the issue fee.

Once the issue fee is paid, the patent will issue in approximately 4 weeks. Patents always issue on Tuesdays. This is a historic precedent that makes it easier for the Patent Office to publish the Official Gazette.

Prior to the patent issuing, a decision needs to be made whether a continuation application should be filed. I discuss that here. The decision is based on whether the quality, usually determined by the overall breadth of the claim, is acceptable. Whether the breadth of the claim is acceptable depends on both whether a broader claim is possible, and whether a broader claim would be worth the extra effort and cost of a continuation application. This is a business decision that needs to be made. We can provide input on what claims are likely possible. In general, we nearly always get broader claims in a follow-up continuation application.

Another issue to consider during the period after the notice of allowance, but before the payment of the issue fee, is whether any minor issues need to be addressed in the specification, claims or drawings. This is a good time to do a final proofreading of these documents. A 312 amendment may be filed to address minor inconsistencies. Along with a review for inconsistencies, an open mind towards whether a follow-up continuation-in-part application would be appropriate if things have developed in the business since the filing of the original application. The due date for a broadening continuation and a continuation-in-part are both the date of issue of the parent application.

In a corporate setting, the financial decision on whether a follow-up application is cost effective is normally made in the legal department, sometimes with consultation with our offices and/or the inventors. In an individual inventor scenario, these decisions ultimately all rest on the inventor.

We are always available to answer questions and provide guidance and/or consultation when making these decisions.

Book an appointment to discuss your Patent Law issues with one of our Patent Attorneys.
  • Chris Maiorana
  • April 2017, updated June 2018
[1]  The USPTO micro entity definition qualifies you to pay half those amounts. There is Gross Income Limit for Micro Entity Status and only the first four applications by an inventor qualify for the discounted micro entity fees. This is a lifetime limitation. The America Invents Act (AIA) introduced the discounted micro entity fees .
Tags: Micro Entity Status Gross Income Limit, America Invents Act (AIA), Notice of Allowance

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