This memorandum explains important information about your patent application, as well as your duties associated with your U.S. patent application. Please read this memorandum carefully.
Examination of the Patent Application
Within approximately two to four years, we should receive a substantive review of the patent application from the United States Patent and Trademark Office (USPTO). During this time, the application is assigned to an examiner, who will perform a formal review of the patent application. The examiner will consider the content of the application, including the written description, drawings, and the claims, and will determine whether the requirements for patentability are satisfied. In particular, the examiner will perform a search of the prior art for the claimed invention and will determine whether the claims are sufficiently different from the prior art to merit a patent. We will keep you informed of any developments with this patent application as they arise. Please contact us if you would like us to check the status of the patent application with the USPTO.
Marking Your Products as “Patent Pending”
You can label products covered by the patent application as “patent pending” or “patent applied for” to give notice to others that you have applied for a patent. However, the right to enforce a patent does not begin until the actual grant of the patent.
Duty of Disclosure
USPTO rules require that everyone involved in the prosecution of a patent application disclose to the USPTO any information that may be material to the application’s patentability. Failure to comply with this duty to disclose material information may seriously jeopardize the patent owner’s ability to enforce any subsequently issued patent. Moreover, willful failure to disclose material information may be grounds for invalidating an issued patent and may result in an action for damages against the patent owner.
The duty to disclose requires all individuals associated with the filing or prosecution of this patent application have a duty to disclose to the USPTO any information material to the examination of this patent application.
Individuals subject to this duty include: (i) each inventor; (ii) each attorney or agent who prepares or prosecutes the application; (iii) every other person who is substantively involved in the preparation or prosecution of the application; and (iv) individuals other than the attorney, agent or inventor, who have disclosed information to the attorney, agent or inventor.
Information that must be submitted under this duty include: (i) publications or other information that describes anything similar or identical to that claimed in the patent application, or that discloses a significant concept or feature of the invention, (ii) any information related to public use, public disclosure, sale or offer for sale of the invention or any similar device that occurred in this country more than one year before the filing date of the application and (iii) any information related to knowledge or use of the invention by others in this country.
The duty does not obligate you to search for material information. Only information of which you are aware needs to be filed. However, please thoughtfully consider any publications you have access to, and any public uses, public disclosures, sales, and offers for sale made by the company, you, or others associated with you. Further, we are required to file only information that is: (i) material to patentability of this patent application, and (ii) not cumulative to information already submitted. If you have any doubts as to whether an item of information must be disclosed to the USPTO, please forward it to us for our review and submission.
The duty of disclosure is an ongoing duty throughout the pendency of the patent application. Accordingly, if you are currently aware of any material information, please send it to us for our review and submission.
You should also promptly forward any material information to us for timely submission to the USPTO if you become aware of if any time before the patent issues.
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, and
- 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.