One of the steps in the process of successfully obtaining a US patent is the patent applicant’s receipt of a Notice of Allowance. A Notice of Allowance is sent by the US Patent & Trademark Office (“USPTO”) to a patent applicant toward the end of the process. The document is sent after a USPTO patent examiner has determined that a patent should be issued. In other words, when a patent examiner has determined that all the legal requirements for patent issuance have been met, a Notice of Allowance is sent. In fact, the Notice of Allowance will state:

“THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT. EXAMINATION ON THE MERITS IS CLOSED.” (Caps and emphasis in original)

So, receiving a Notice of Allowance should be considered “great news.”

However, no patent has been issued yet. Indeed, the Notice of Allowance continues with the following statements:

“THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS. THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON REQUEST BY THE APPLICANT.”

What are the Next Steps?

To complete the patenting process, fees must be paid to the USPTO. These fees are identified in the Notice of Allowance. In fact, technically, a Notice of Allowance is termed by the USPTO as a “Notice of Allowance and Fee(s) Due.” See example here.

The Notice is three pages, the second page of which is a fee remittal form. The Notice will state the amount of fees that are due for issuance of the patent and the date on which they are due. The fees are due within three months and there are no extensions granted. The remittal form must be completed and sent along with the required fees. Failure to remit the fees within three months will be deemed an abandonment of the patent application.

What About “Entity Status”?

The fees charged by the USPTO depend on the size of the entity submitting the patent application. Since patent applications take many months — and sometimes many years — to complete, an entity’s status may change over the months/years. Thus, the remittal form requires that micro-entities reaffirm their status as a micro-entity. Micro-entities have the lowest fees. If the entity status has changed, the remittal form allows for the status to be changed (which will increase the fees required).

What Happens Next?

Generally, under current USPTO processing practices, it takes about four weeks for the patents to be issued after the USPTO receives the issue fee(s). In the meantime, as part of actual issuance, the USPTO will assign a patent number. The USPTO will also mail what is called an Issue Notification. The actual patent will be issued about two weeks later.

The Issue Notification is important for any separate patent applicants that may need to be filed as a continuation patent. However, if a continuation patent needs to be filed, the USPTO recommends not waiting until the Issue Notification to avoid any potential loss of copendency.

Contact Revision Legal For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100

USPTO Issue Fees: Current Amounts and Entity Status

Issue fees vary based on the applicant’s entity status. The USPTO recognizes three entity categories: large entities, small entities, and micro-entities. Small entity status is available to independent inventors, small businesses with no more than 500 employees, and qualifying non-profit organizations. Micro-entity status — which provides the deepest fee discount — is available to applicants who qualify as a small entity, have filed fewer than five previous patent applications, and whose gross income in the preceding year did not exceed three times the median household income reported by the Census Bureau. As of recent USPTO fee schedules, issue fees for a utility patent range from approximately $1,200 for large entities to $300 for micro-entities.

Accuracy in claiming entity status is legally significant. Intentional misrepresentation of small or micro-entity status in order to underpay USPTO fees constitutes inequitable conduct, which can render a patent unenforceable. Applicants should carefully verify their status at each stage of prosecution. If entity status changes — for example, a startup grows beyond 500 employees or receives investment that affects its classification — the applicant must update its status and pay the appropriate fees.

Continuing Applications: Acting Before the Patent Issues

The period between receiving a Notice of Allowance and the issuance of the patent is a critical window for filing continuation applications, continuation-in-part applications, or divisional applications. These “child” applications can claim the benefit of the parent application’s filing date while pursuing different or broader claim scopes. Once a patent issues, no new continuation applications can claim copendency with that patent for matters that were already fully disclosed in the parent specification.

Patent prosecutors routinely use the post-allowance window to file continuations that pursue claim sets covering different aspects of the same invention. This is a standard portfolio-building strategy, particularly in technology and pharmaceutical sectors where a single invention may have multiple commercial embodiments that merit independent patent protection. If you have not already considered whether your invention warrants a continuation strategy, the receipt of a Notice of Allowance is the time to have that conversation with your patent attorney.

Request for Continued Examination vs. Continuation Application

Before a Notice of Allowance is issued, if the examiner has issued a final rejection, the applicant has two main options: file a Request for Continued Examination (“RCE”) or appeal to the Patent Trial and Appeal Board. Once a Notice of Allowance is received, however, the examination is closed. An RCE filed after allowance reopens prosecution and, in effect, withdraws the allowance — something that is generally done only when the applicant wants to amend claims or submit new prior art that could affect the issued patent’s scope. This is an unusual step that should be taken only after consultation with patent counsel.

Maintaining Your Patent After Issuance

Issuance of the patent is not the end of the maintenance obligations. For utility patents, the USPTO charges maintenance fees at 3.5 years, 7.5 years, and 11.5 years after issuance. Failure to pay a maintenance fee results in expiration of the patent. Maintenance fees, like issue fees, are discounted for small and micro-entities. Unlike issue fees, maintenance fees can be paid with a six-month grace period after the due date, subject to a surcharge. Beyond the grace period, the patent lapses and cannot be revived except through a petition demonstrating unintentional delay — a high standard to meet.

• 3.5-year maintenance fee — Due between 3 years and 3.5 years after the patent grant date (large entity: approximately $2,000; micro-entity: approximately $500)
• 7.5-year maintenance fee — Due between 7 years and 7.5 years after the patent grant date (large entity: approximately $3,760; micro-entity: approximately $940)
• 11.5-year maintenance fee — Due between 11 years and 11.5 years after the patent grant date (large entity: approximately $7,700; micro-entity: approximately $1,925)

Design patents and plant patents do not require maintenance fees. Setting up a docketing system to track maintenance fee deadlines across a patent portfolio is essential for any business that relies on patent protection as part of its competitive strategy.

Contact the patent lawyers at Revision Legal at 231-714-0100 for help navigating the post-allowance process and building a patent maintenance strategy.