A notice of allowance is an office action from the Patent Office which informs the patent applicant that the claims in the patent application can be patented. To obtain the patent, an issue fee needs to be paid. About 4 to 6 weeks after payment of the issue fee, the Patent Office will grant the patent.
What should you do after you receive a notice of allowance?
Within three months after receiving the notice of allowance, you have to pay the issue fee. Otherwise, the patent application will be abandoned. The due date to pay the issue fee within 3 months cannot be extended.
After you receive the notice of allowance, you should consider the following:
- You should consider filing a continuation patent application to prevent others from going around your patent.
- You should consider delaying the payment of the issue fee if you are still in the process of launching your product to determine marketability or for other business justifications.
- You should consider paying the issue fee as early as possible if you have investors that want to invest if you have a granted patent.
- You should double-check your files to determine if you filed all of the prior art that you had knowledge of. If needed, file an information disclosure statement.
After you’ve considered the issues above, you should pay the issue fee.
How a continuation patent application prevents others from going around your patent?
A continuation patent application allows you to write a new claim after you’ve seen your competitor’s design around against your patent. That is a powerful ability to have. You get to see the target of your claims when you are writing the claims.
In addition to this advantage, the continuation patent application gives you at least three other benefits.
First, when a competitor hires a patent to suggest a design around for your patent, their patent attorney will find out that you’ve filed a continuation patent application. Their patent attorney has to advise them that a successful design around is a moving target because of your continuation patent application.
This means that although one design around might work this year, it might infringe on a future patent of yours. It is quite discouraging to find out that you can’t ever be sure that a design around would not infringe your patent.
Second, you can broaden the claims that have already been allowed. By filing a series of continuation applications, you can continue to broaden the claims, and thus make designing around your patent portfolio more difficult over time.
Third, you can seek patent protection for different aspects of your invention. For example, if the first patent is directed to the product, the second patent can be directed to the method of manufacture or the method of use. Protecting your invention from different angles also helps to broaden your patent protection. Your competitors might be able to avoid patent infringement from one angle but might not be able to from a different perspective.
How long does it normally take to receive a notice of allowance?
To obtain a notice of allowance, it typically takes about 9 months to 3 years. Nine months if you expedited the examination of your patent application. Three years if your patent application is being examined on a first-come, first-served basis.