This paper explains important information about your patent application, including your obligations as an applicant. Please read it carefully.
Examination of the Patent Application
Within approximately two to four years (or just a few months, if you have requested a form of expedited examination), we will receive a substantive review of the patent application from an examiner at the United States Patent and Trademark Office (USPTO). 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 with 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 seriously jeopardizes the patent owner’s ability to enforce any subsequently issued patent.
In particular, the duty to disclose applies to (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 includes: (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 more than one year before the filing date of the application and (iii) any information related to knowledge or use of the invention by the public.
The duty does not obligate you to search for material information. Only information of which you are aware needs to be submitted. 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.
If you do provide a copy of a relevant document, you should make sure that the copy of the material that you send us is legitimate and that you have complied with all third party rights, including copyrights, in obtaining the material. By forwarding any material to us, you are confirming that you have all necessary rights to do so, and we will rely on your representation in connection with our use and potential disclosure of the material to the USPTO. If you are not sure about whether you have the necessary rights, please let us know and we will work with you to obtain the document with all required rights.
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 and Micro Entity Status
Our reporting letters and/or correspondence from the USPTO may indicate that your patent application was filed asserting a right to either small or micro entity status. These statuses entitle you to a discount on many of the USPTO fees. However, improperly claiming small or micro entity status may cause the patent to be unenforceable. Therefore, please contact us immediately if you were incorrectly identified as a small or micro 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