Patent Grant Notice

My Patent Granted – Now What?

Congratulations on your patent being granted!  On the date your patent grants, a copy of the patent is available for download from the US Patent and Trademark Office website. Now you can start enforcing your patent and showing it to your customers and competitors.

Remember to Mark Your Products with Your Patent Number

To inform your competitors, and even your customers, that the innovation in your patent is yours, you should immediately begin including your patent number on your products and advertising. Legally, you only need to mark your products directly, but including notice of your patents on your advertising and website tells your customers and your competitors that you are protecting your rights and that your invention is unique enough to get a patent.

To preserve all of your patent rights and give you greatest advantage for your patent, the patent number needs to be included on your products.  Any products or services that are made, sold, used in or introduced into the United States by your authority on or after the date of your patent that embody the invention claimed by the patent should have the patent number affixed to the product.  Except in rare circumstances, this means that the product needs to include the patent number actually printed on it.  Just including the patent number on the packaging or on your website is not enough unless the patent claims are for a service rather than a product or method of using a product.  Wording for patent marking needs to include the patent number and at least the first three letters of the word patent.  For example:  PAT xx,xxx,xxx; US Patent xx,xxx,xxx; US Patent No. xx,xxx,xxx; or even as much as US Patent Number xx,xxx,xxx and other patents pending.

Instead of actually printing the patent number on the product, because sometimes multiple patents are granted and changing molds and manufacturing can be difficult, another option is to mark the patent virtually.  Virtual patent marking involves printing a website link on the product that directly links to a page on a website that connects each specific product with each specific patent.  Please contact your attorney for examples of other virtual patent marking sites to model yours after.  The products can be marked with wording like:  PATs, or any other website that connects the patents to the products.

Watch your Competitors and the Market for Infringers

Your patent is an asset and like most assets it needs attention to maintain its value. If you fail to understand and police your patent rights, you may lose them altogether or at least lose part of the value you could gain from them. Take time to read and understand the claims section of your patent to know what your patent scope is. Your patent attorney can help you understand how to read the claims and identify infringing products. By watching the market and your competitors for potentially infringing products and notifying your attorney when you think there might be infringement, you take the first step toward protecting those rights. At a scheduled time each month, search, or have your attorney search, for competitors with similar patents or similar products. By identifying them early, you can adapt your ip strategy to minimize the damage to your business market caused by those competitors copying your unique products. Once you’ve identified them, you can decide whether you want them to stop infringing, or to license your patent rights and pay you royalties to use them. But if you don’t know about the infringement, those options are not available to you.

Confirm Your Patent Term Adjustment

Patent Term Adjustment (PTA) is additional days of patent term added to a patent based on Patent Office delay during the pendency of the application, minus delays by the applicant due to extensions of time requested and use of other procedural tools.  PTA ranges from 0 days, to hundreds of days, to thousands of days of extension and can be very valuable depending upon your particular product and market.  The calculations to determine what the appropriate PTA should be are complicated and are not ordinarily confirmed by your attorney unless you specifically request they do the additional work to figure it out.  If your patent term beyond 20 years from its earliest non-provisional priority filing date is critical to your business and market, please contact your attorney to request a re-calculation to confirm that the Patent Office’s PTA number is correct.  Any challenges to the Patent Office’s determination of PTA must be filed within two (2) months of the patent issue date.  Your attorney can file the appropriate forms to challenge the PTA for your patent. For more information about Patent Term Adjustment, please review this article on Patent Term Adjustment.

Maintenance Fees are Critical to Maintain Your Patent Rights

Maintenance fees must be paid to the United States Patent and Trademark Office to maintain the patent in force.  The first of these fees is due three years and six months after grant.  The second of these fees is due seven years and six months after grant.  The third of these fees is due eleven years and six months after grant.  At the time payment of each of these fees are paid, we strongly recommend that you obtain advice as to what your then current entity status should be, as failure to pay U.S. government fees according to the correct status can render the patent void.  

Each maintenance fee can be paid within a six-month grace period following these due dates, but any such grace period payment is subject to a surcharge.  The amount, number and timing of the maintenance fees may be changed by law or regulation, but a change is highly unusual.  Unless each maintenance fee and any applicable surcharge is received by the United States Patent and Trademark Office by its deadline, the patent will expire at the end of the grace period.   

Although the United States Patent and Trademark Office may send notices when maintenance fees are due, it is the patent owner’s duty to timely pay the fees whether or not it receives such a notice. If your patent attorney does not track these dates for you and notify you of their deadlines, you should calendar them yourself to notify your attorney when you need them paid.

It is worth the security of knowing your patent maintenance fees will be taken care of to let your attorney maintain and pay those maintenance fees on your behalf. This will help to ensure you do not lose those rights due to an error in submitting the fees and related paperwork.

Please contact a qualified professional at Booth Udall Fuller, PLC with any questions you may have about patents, product marking, patent maintenance fees, or any other intellectual property protection or strategy needs.