Patent Issue Notification

What is a Patent Issue Notification?

Congratulations on your patent being approved to issue!  Prior to the patent issuing, the Patent Office sends out a Patent Issue Notification, but it’s not quite an enforceable patent yet.  There are a few more things to do.  Among other information, the Issue Notification identifies the actual issue date where the patent becomes enforceable, and the patent number for your patent

What Should I Review on the Issue Notification?

When you receive a Patent Issue Notification, the first thing to do is to verify the information on the notice.  Your patent attorney’s office will likely do this for you to ensure the patent issues correctly, but even if the attorney’s office is handling the review and issue fee for you, there is some information you can review.  With the Issue Fee Due notice, you should confirm the invention title, the application number, the filing date, the Entity Status (to ensure you are paying the correct fee), the first named inventor, Applicant Name, the claims allowed, and the Examiner’s Reasons for Allowance, if any, to ensure they are all as expected.  At the Issue Notification, it is also good to re-check the information to confirm it is correct. Incorrect information is much easier to fix before the issue fee is paid than after, but even if you catch incorrect information after, it can be fixed.  Notify your attorney if you see anything that looks incorrect so it can be fixed.

How Long Does it Take for the Patent to Issue?

After the issue fee is paid, it typically takes anywhere from 4-8 weeks for the patent to issue. It typically takes 1-2 weeks from the Issue Notification for the patent to issue.  Mistakes in submitting the issue fee and any changes made to the paperwork can delay this, but there is no way to make the Patent Office move any faster. 

Consider Whether to File a Related Application

While you are waiting for the patent to issue, you should consider whether you want to file a related patent application that claims priority to the patent issuing. 

Why Would I Want to File a Related Patent Application?

Depending upon your intellectual property strategy for your patent and business, you may want to file a related patent application before your patent issues.  Continuation, continuation-in-part, and divisional patent applications that include the same or related invention disclosures can be filed anytime before the patent issues.  After the patent issue date, however, it is too late.  Filing a related patent application allows you to claim your invention in a different way than the original patent was granted.  This may be done to try for broader or narrower patent scope or to claim a different part of your application that wasn’t a focus of the original patent claims.  Having multiple patents directed to similar inventions also helps you to create a stronger bubble of protection around your invention and better protect the market for your product or services against infringers.

What Should I Include in a Related Patent Application?

Related applications can include improvements to your invention, or just the same original invention.  Speak with your attorney soon about strategies and recommended content for your related application.

How Do I Use My Patent Number to Mark My Products

Now that you know what your patent number is, you can start using the patent number.  To preserve all of your patent rights and give you greatest advantage for your patent, you need to properly mark your products or services with your patent number.  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.

It is also wise to include patent marking notices on sales and promotional literature.

If proper patent marking is not applied, no damages may be recovered for infringement of the patent claims unless it can be proven that the infringer was notified of the infringement and still continued to infringe.  Even then, damages can only be recovered for infringements occurring after such notice.  Proper marking ensures damages can be claimed back to the issue date for the patent.

What is 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 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 is critical to your business and market, please contact your attorney to request your attorney to do the calculations and determine whether the Patent Office’s calculations are 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.

It is important to verify the patent data before the patent issues, submit the issue fee correctly, and mark your patent number on your products to maintain your full patent rights.  Errors in any of these can result in lost rights and opportunities. Please contact a qualified professional at Booth Udall Fuller, PLC with any questions you may have about patents, issue notifications, continuation applications, or any other intellectual property protection or strategy needs.