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
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
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.