The US Patent and Trademark Office (USPTO) announced that it will reduce the time between receiving an Issue Notification for a United States Patent Application and the actual Issue Date. Currently, a patent Applicant can budget between three and four weeks from the date they receive an Issue Notification to the actual Issue Date.
What This Means for Patent Applicants
This change has significant implications for patent strategy:
- Shorter window for critical decisions: The Issue Notification provides crucial information about the last possible date to file continuation or continuation-in-part patent applications. With the accelerated timeline, applicants have less time to prepare and file these critical follow-up applications.
- Priority rights at stake: Filing continuation and continuation-in-part applications must be completed prior to the issue date of the original patent application. Failing to do so means losing the priority date to the original patent, which can significantly impact the strength of your patent protection.
- Prior art advantages: Another benefit of continuation or continuation-in-part patent applications is the ability to reduce the amount of prior art that the Patent Examiner can cite during prosecution. This strategic advantage requires timely filing before the issue date.
Action Steps for Patent Applicants
In light of this change, patent applicants should consider:
- Acting more quickly when receiving Issue Notifications
- Planning continuation application strategies earlier in the patent process
- Being more vigilant about monitoring USPTO communications
- Preparing potential continuation applications in advance of receiving Issue Notifications
- Consulting with patent counsel promptly after receiving Issue Notifications
While receiving issued patents faster is generally beneficial, this change requires applicants to be more proactive in their patent strategy planning. Leveraging continuation and continuation-in-part patent applications remains a valuable strategy that can help enhance patent protection for inventors, but now requires more immediate attention when Issue Notifications arrive.
The patent attorneys at Widerman Malek are available to answer questions about the updated timing of the issuance of patents and any other patent strategy questions you might have.
About The Author
Mark Malek is a registered patent attorney admitted to practice before the United States Patent and Trademark Office. With extensive experience in intellectual property law, Mark specializes in developing customized intellectual property (IP) strategies that align with clients’ long-term business objectives. His practice focuses on representing clients before the USPTO, licensing and enforcing intellectual property rights, and advising on effective IP monetization strategies. Mark’s scholarly article, Markman Exposed: Continuing Problems with Markman Hearings, continues to be cited by researchers in the field of IP law, demonstrating his thought leadership in patent litigation procedures. His community involvement includes serving on boards for Junior Achievement of the Space Coast, the Melbourne Regional Chamber of Commerce, and participation in several charitable initiatives.
