This memorandum explains a number of items that pertain to the issuance of the new patent.
Scope of Patent Protection and Continuing Applications
The scope of protection provided by a patent is determined by its claims. Accordingly, please review the allowed claims and advise us whether you believe these claims accurately and adequately describe the invention and whether you would like to seek additional claim coverage through a continuing application. In addition, please advise us if you wish to pursue any claims that have been withdrawn from consideration in this application after a restriction requirement.
Please note that any continuing applications that claim the benefit of this application must be filed while this application is pending and before it issues as a patent. Because it is impossible to predict precisely when a patent will issue after the issue fee is paid, we recommend filing any new continuing applications before or very soon after payment of the issue fee.
Small Entity Status
Our reporting letters and/or correspondence from the USPTO may indicate that your patent application was filed claiming you or your company as a “small entity.” By claiming small entity status, you are entitled to have many of the USPTO fees discounted by 50%. However, improperly claiming small entity status may cause the patent to be unenforceable. Therefore, please contact us immediately if you were incorrectly identified as a small entity.
The following entities generally qualify as a small entity:
- an individual;
- a company having not more than 500 employees;
- non-profit organizations and universities.
However, these entities do not qualify as a small entity if the invention has been assigned, granted, conveyed, or licensed to a large entity (i.e., an entity that does not qualify as a small entity), or is under obligation under contract or law to assign, grant, convey, or license, any rights in the invention to a large entity.
Please note that your ability to claim small entity status must be reviewed and reassessed upon (1) filing a new application, (2) paying the issue fee for a patent, and (3) paying each of the three patent maintenance fees.
Therefore, please contact us immediately if there are any changes to your small entity status so that we can update your status with the USPTO.
Duty of Disclosure Continues Until the Patent Issues
As we previously advised you, USPTO rules require that everyone involved in the prosecution of a patent application disclose to the USPTO any information that maybe material to the application’s patentability. This duty of disclosure continues until the application issues as a patent. Therefore, please inform us immediately if you have become aware of any new information that pertains to this application so that we can comply with this duty. If you need further information about the duty of disclosure, please contact us.
The USPTO may require that formal drawings be submitted before issuance of the patent. We will attend as necessary to the preparation and filing of these drawings in advance of the issue fee deadline, unless we received your instructions to the contrary.