Filing your patent application secures patent pendency, but running out of money can put your invention at risk. Maintaining pendency is essential to safeguarding your idea, so what can you do if funds run low? The answer lies in delaying costs wherever possible, giving yourself time to recover financially while keeping your patent alive.
Here are three practical steps you can take to delay costs, spread out your patent-related expenses, and still stay in the game:
1. Delay Paying Maintenance Fees
If you already have a granted patent, you’re required to pay maintenance fees to keep it active. These fees are due at 3.5, 7.5, and 11.5 years after your patent is issued. If you’re out of funds right now but expect to have the money later, there’s some flexibility. You can delay paying these fees by using the surcharge period, which gives you an extra six months to make the payment with a penalty fee.
However, there’s a catch. During this delay, you need to be aware of intervening rights. If someone else starts using your patented invention while your patent is in this unpaid, limbo state, they might be able to legally continue using it after you make the late payment during the surcharge period. This means that delaying the fee could stop you from enforcing your patent against those who started infringing your patent while it had lapsed.
Still, if you don’t have the money right now, the surcharge period buys you time without completely losing your patent rights. It’s a temporary relief, allowing you to focus on keeping your business afloat while ensuring that you don’t lose your invention’s protection altogether.
2. Delay Filing Responses to Office Actions
If you’re still in the process of securing your patent, the USPTO will issue an office action, which is a list of formal rejections or objections to your patent application. You have three months to respond, but if you need to stretch out your budget, waiting until the last two weeks of the response period is a smart move.
This approach gives you more time without any penalties, and it helps push out your costs over a longer period. By delaying, you’re essentially slowing down the examination process, and thus the expenses for examination. When you are short on cash, this can be a valuable strategy because it allows you to push costs further into the future when the economy—and your financial situation—might improve.
If you just don’t have money even by the end of the three-month period, don’t worry. You can also pay for extensions, which allow you to delay the response by up to three more months. Yes, there’s a fee for these extensions, but if you need to do it, it’s always an option you can take to maintain your patent application.
Delaying your response doesn’t mean you’re neglecting your patent. In fact, you can use this time to carefully prepare your response, gather resources, and ensure that when you do have the money, you’re ready to move forward. By playing the waiting game, you keep your options open and avoid overwhelming yourself financially.
3. File a Continuation Application Instead of an RCE
When you receive a final office action, you’re faced with a decision: should you file a Request for Continued Examination (RCE) or a continuation application? Both options allow you to keep your patent application alive, but there’s a key difference in terms of timing and cost.
An RCE keeps your application on track for quick examination. After filing an RCE, you can expect a response from the USPTO within 1 to 4 months. This speed is great if you have the funds and need to get your patent approved quickly, but it can also mean a compressed spending schedule. You have to pay your patent attorney to do the work and that means you have expenses in a short amount of time.
A continuation application, on the other hand, gives you a much longer delay. When you file a continuation, your application goes to the back of the examination line, and you probably won’t hear from the USPTO for about 18 months. While you are waiting, you won’t have any significant costs. You are spreading out the costs. The delay gives you more time to save up money, plan your next steps, and adjust your patent claims if needed. While you wait you can even file a preliminary amendment which addresses the issues raised in the final office action.
By filing a continuation instead of an RCE, you’re stretching out the entire process, which spreads out the associated costs. This can be a big relief when cash flow is limited.
The Overall Strategy: Delaying to Save
The basic idea behind these strategies is simple: delay what you can to manage costs. By waiting until the last possible moment to take action—whether it’s paying maintenance fees, responding to office actions, or filing applications—you stretch out the time between expenses. This makes the patent process less costly and gives you more time as you make money with your invention.
When you move quickly, you compress the timeline, which means all the associated costs come sooner and pile up faster. By slowing things down, you create breathing room. It’s all about pacing yourself to match your financial situation.