Patent Deadlines

Samar Shah
Hello, and welcome to the Patent Pending Made Simple Podcast. I'm your host, Samar Shah, and with me today is Jamie Brophy. Jamie, how are you?

Jamie Brophy
Hi. I'm good Samar. How are you?

Samar Shah
I am doing all right. I am happy to be recording. I just got a cup of tea, so I am properly caffeinated, and hopefully I won't put people to sleep today.

Jamie Brophy
Sounds good. I don't think you normally put people to sleep, if it makes you feel any better.

Samar Shah
Oh, my kids would beg to differ. Well, today's topic is patent deadlines. The patent process is famous for having deadlines. When we started our firm and I was looking for malpractice insurance, I was surprised to learn that the malpractice insurance rates for patent practitioners are the highest of any other practice in any part of the country. And I was talking to an insurance representative, and he was like, well, there are a lot of deadlines, and if you miss a deadline, that's potentially very problematic. So we sweat the deadlines all the time, but I'm sure our listeners ought to also, because in the world of patents, deadlines are very important, and if you miss them, it could be potentially fatal to your application or your invention process. So I'm glad to be able to talk about this today.

Jamie Brophy
Jamie yeah, definitely. It's a super important topic, and that's interesting about the malpractice insurance. I didn't know that. But, yes, there are a lot of deadlines, and if you miss something, it's really tough to reinstate your.

Samar Shah
Right. You know, in a lot of practice areas, there are a lot of mechanisms for getting extensions. Missing deadlines is often not fatal. It may be a little embarrassing for the practitioner, but in the world of patents, missing deadline is and can be fatal. So with that appropriate amount of caution and anxiousness that I've hopefully instilled into our listeners, why don't we get started? Should we start with, let's see the deadlines that you should be aware of before you file a patent application, and then maybe we'll talk about what happens after you file the application.

Jamie Brophy
Yeah, sounds good.

Samar Shah
Why don't we start with the statutory bar date to get started?

Jamie Brophy
So there's a statutory bar date for filing a patent application. If something has been on sale for a year or more, you can't get a patent on it. So we occasionally run across this where somebody has something that they've been using or selling for quite a while, and then they decide they want to get a patent on it. And we have the unfortunate job of telling them, it's been too long. There's a statutory deadline, and you can't get a patent on it now. So definitely, if there's been any public disclosure or sale or offer for sale of your product, you want to make sure you either have a patent application already in place or you file one pretty soon thereafter. So that's the first deadline to keep in mind? Do you have anything to add about that, Samar?

Samar Shah
Yeah, no, I think that covers it. I'll say there are two different statutes or sections of a statute. There is the public disclosure date, which means that anytime you disclose something to someone orally in a written format or any other format, that counts as public disclosure. And then there's the on sale bar date, which is the sale date of your product. So either one can trigger your one year, I like to call it a grace period. You have one year from that kind of a disclosure or a sale to file your patent application. And if you don't file your patent within that one year, that could be very tricky to get something patented at that point. Almost impossible, right?

Jamie Brophy
Yeah. And piggybacking on that, Samar, a few years ago, the patent office went from a first to invent system to a first to file system. So if you disclose your invention to somebody and then they file, it could be tricky. If they file an application before you, it could be tricky to fight that. So I think even sooner than the one year is probably a best practice.

Samar Shah
I agree. To me best practices is to file something before you launch or as soon as you launch. Because even that one year grace period, even though you're allowed that by law, somebody else may beat you to it may beat you to the patent office, and that's enough for somebody to get a patent as opposed to you getting a patent. So that's a very good point, Jamie. It's good to think about know, related to that rule change. I had somebody call my office the other day and they said, well, I filed a poor man's patent and I actually don't really know what a poor man's patent is. I'm sure there's some Wikipedia articles about it. Jamie, do you know or I'm going to take a stab at what I think it may no, I don't.

Jamie Brophy
I've not heard that term.

Samar Shah
Yeah, not a term that I'm very familiar with either. I think it means that you write a patent application maybe, or even make your product, and you mail it to yourself and you use that as evidence of you having invented something by a certain date. That used to be common practice in my practice. You'd hear people keeping lab notebooks and things like that as a way to establish data invention, but the data invention doesn't really matter anymore. There are some edge cases where it may matter, but for the most part, the pan office doesn't care when you invented it, they care when you patented it. And so that's the important milestone. Being able to backdate your pen application to your date of invention is not really something that happens anymore.

Jamie Brophy
Yeah, that's right. And so Samar, I just Googled it and you're exactly right. A poor man's patent is essentially writing out a description of your invention and then mailing that written description to yourself. So that was a very good educated guess.

Samar Shah
Even a broken clock is right twice a day, I guess. Oh, one more thing. What counts as public disclosure is very complicated. There are not a lot of cases that the federal circuit courts and the district courts even have addressed on this topic. So sometimes people will call us and say, well, I told my mom this or my children this. Does that count as public disclosure? I don't know the answer to that, quite honestly. There might be other areas of law that may inform this particular piece of law, but I always like to err on the side of caution. So I would say anyone that you've told this to without an expectation of privacy or confidentiality would count as public disclosure. The other questions that I get is, if I told somebody orally, does that count as public disclosure? And I think the answer is yes.

Samar Shah
It would be very difficult for somebody to prove this in the court of law down the road, but I think that does count as public disclosure. I was peripherally involved with a lawsuit where somebody had disclosed the invention and published in their thesis paper in Russia and had a library in Russia in a remote town, had cataloged it and indexed that thesis paper, and we got discovery on that library, and we could show that nobody had checked out this thesis paper ever. Does that count as public disclosure? Yeah, it does, right? So there are some kind of nuanced, complicated questions here about what is and isn't public disclosure, and the courts may come on different sides of that issue just because it hasn't been litigated all that often. There is not a lot of precedence and guidance from the court systems about all these things.

Samar Shah
But I like to just err on the side of caution. As soon as you tell somebody something without an expectation of confidentiality, I think that's public disclosure.

Jamie Brophy
Yeah, absolutely. And I also think that this is where provisional patent applications come in really handy. If you feel like you need to disclose your invention to somebody, but you're still working on it, you're still inventing, or you're still looking for financing or manufacturers or something like that, just get a provisional patent application filed to cover yourself before you have any disclosure. Your invention can always change, and those changes can be incorporated when it's time to file your non provisional application. But if you at least get a provisional filed, you have at least some protection there.

Samar Shah
Yeah, that's a really good point. We do that for clients from time to time where they come to us and say, well, I published this in a conference paper or a journal a year ago, and my deadline is tomorrow. And then we'll just go ahead and put something together really fast to protect the client. So that happens from time to time. It's something to be aware of. One more thing. So we covered the public disclosure nuances. The same nuances apply to the on sale bar deadline. Sometimes clients will ask, well, I was trying to test my product to see if it would actually work, but I sold it as a way to test it. Does that count? There are some safe harbors in the statutes about when experimental use is not considered a sale to trigger your date. So there are some nuances about this thing, but you should really talk to a patent attorney because it is very case specific and fact sensitive.

Samar Shah
So that's a good place to start. The one last thing I'll say about this topic, Jamie, is what counts as public disclosure, right? So let's say you made a blog post about your invention or you made a Facebook post, something like that, but you didn't actually tell anyone how the invention or the product works. Is that public disclosure under the law? And I think that's a pretty nuanced question as well. The general rule is that it has to be an enabling disclosure, which means that you have to disclose enough information to enable a person of ordinary skill in the art. So somebody as skilled as the inventor usually that they should be able to look at your disclosure and know how to make your invention. So it's not just like a high level disclosure of what the product is, but it's about how the invention works, and that is varied.

Samar Shah
Right. So some inventions, you take a picture of it and publish it to the world. That's enabling disclosure. For other products, you take a picture of it, and no one really knows how it works or how it does its thing. So enabling disclosure can vary depending on the product. And the other thing is that the case law on what is enabling disclosure is also very sparse. So I also like to walk the line here or on the side of caution and say, anytime you make a disclosure, just circle that date in your calendar and say, hey, let's file something one year from that date, and let's not get creative unless we have to. Right. The best thing and the safest thing you can do is file within that one year of whatever the post is, even if it's not an enabling disclosure.

Jamie Brophy
Yeah, definitely. I think the gist of it is file your application as soon as possible. If your product's been on the market for a while, you might be out of luck.

Samar Shah
Yeah, that's a really tough one to skirt. Sometimes what we do when that does happen is we'll try to find some aspect or portion of the invention that was not in that original disclosure and try to protect that new stuff. Or we'll tell the client to go back and come up with some improvements to that product, and then we can file patents on the new things. That they've come up with, but yeah, that one is tough. There's really no way around it.

Jamie Brophy
Yeah, absolutely. So, yeah, I think that covers it for that first deadline that you need to think about before you even file your patent application. Samar, what are some other deadlines that need to be considered during the patent application process?

Samar Shah
Yeah, so we covered this in some of our other podcasts, but once you filed your first application and it's a provisional application, then you know that you have twelve months from that provisional filing date to file your non provisional application and or your international Pct patent application. So twelve months after your first filing date, that's something you should be considering, especially if you only filed a provisional. If you filed your first application as a non provisional, then you have twelve months from that date to file your Pct or international patent application. So you need to circle that date as well. Regardless of whether you file the provisional or the non provisional first. We talked about the Pct in the past, you do need to enter national phase 18 months after you file the Pct application. So circle that date on your calendar as well. And we can cover the Pct in another podcast in more detail.

Samar Shah
But that's another area where you probably need to hire an attorney to get things done. And they'll keep track of your deadlines for you. That gives you protection in other countries and with an option to get a patent in those countries. But that deadline is 18 months after you file the Pct application. Now, finally, if you file the Pct application first, then you have 30 months from that date to international phase. So some deadlines to keep track of.

Jamie Brophy
Yeah, definitely. And I think those deadlines are not extendable. So those are drop deadlines, aren't they?

Samar Shah
There's nothing you can do to extend those. There's no one you can talk to really, even they're just going to say, sorry, you missed the deadline, nothing you can do. So be very careful about those.

Jamie Brophy
Right, so once you file your utility application, there's a bunch of different kinds of communications you could receive from the Patent Office, and each of those has different deadlines for responding to them. So one of the first things you might receive is a notice of missing parts or a notice of incomplete application. The notice of missing parts just means that either you didn't file with your filing fee or the inventor's oath or declaration or formal drawings. Something is missing from the patent application and you have three months to respond to that kind of a notice. That deadline is extendable, and you extend the deadline by paying for the extensions one month at a time. So if you respond by the four month deadline, that's a one month extension fee. If you respond by the five month, that's a two month extension fee. You can get all the way up to six months to respond.

Jamie Brophy
Samar, do you have anything to add about that?

Samar Shah
No, I think that's great. Typically you get the Notice of Missing Part if you didn't pay all your fees when you were filing the Pan application, or if there's something wrong with the drawings, then you need to file formal drawings or make some corrections, or if you didn't submit something like an inventor's oath or a declaration. Things like that are things that you'll receive a Notice of Missing part for.

Jamie Brophy
Yeah. And that Notice of Missing Parts, you would typically get, I would say, within three to four months of filing your application. And I believe it's the same deal with a Notice of Incomplete application. I don't know if I've ever seen one of those. But if there's something essential missing from your application, they'll send you a Notice of Incomplete Application, and in that case, you don't get your filing date until you formally complete the application. So there's a deadline for responding to that notice, and when you respond to that notice, that's when you will receive your filing date for your application.

Samar Shah
That's right. So that's a really good point because we never get one of those. But the requirements to get a filing date on a Pan application is that you need to have the spec, you need to have at least one claim, and you need to have an abstract. So if you don't have one of those three things, they will give you the incomplete or Notice of Incomplete application. And that means that you did not meet all those three requirements for getting a filing date. So you need to go back and fix that. And whenever you do fix it, that's going to be the date of your patent application at that point.

Jamie Brophy
Right. So then after that, the next thing you would probably receive from the Patent Office is an Office action. And like we've mentioned several times in this podcast, the Office action is usually a rejection of some sort, and it's not uncommon to get a rejection. It's very normal. And you have three months to respond to that Office action. And that deadline, like I mentioned before, with the Notice of Missing Parts, that deadline is extendable for up to six months. And the fees for extending the deadline are on the Patent Office website. They change all the time, so I won't mention them specifically here, but you can always find those on the Patent Office website. Samar, anything else about responding to Office actions? Deadlines for responding to Office actions?

Samar Shah
One nuance here is that there might be slightly different deadlines for a non final and a final Office action. Or actually, I should say the deadlines are the same, but usually we act differently or we file at a different cadence, even though some of the external deadlines are the same. If you do get a final Office action, there are a few things you could do. You can file an appeal brief so you can appeal the case. You can file an AFCP. I don't know what that stands for. Jamie, do you?

Jamie Brophy
Yeah, I think it's after Final Consideration program or a pilot program.

Samar Shah
Yeah, I think that's right. So you can file that we'll try to file that within two months or three months of receiving the final office action because it triggers some additional deadlines downstream of your filing date. So if you wait too long, you could be in a sticky situation where you have to file additional things down the road without actually getting a response from the Patent Office. So if you're at a final rejection, I would say it behooves you to take some action or get something filed in a couple of months after that date.

Jamie Brophy
Yeah, definitely. Once you receive a final office action, prosecution is essentially closed. There are things you can do to reopen prosecution, but prosecution is essentially closed. So you have six months from the date of that final rejection or final office action to move the case in some manner, and there are things you can do to respond that don't satisfy that requirement to move the case along. So if you're planning on doing some of those in between, you need to make sure that you have enough time to meet that six month deadline, if that makes any sense.

Samar Shah
No, I think that's pretty good. I think that covers the office action phase. Should we move on to the allowance at this point? Jamie, what do you think?

Jamie Brophy
Yeah, I think that covers everything. I can't think of anything else we need to mention about responding to office actions. So then hopefully the next thing you would receive from the Patent Office would be a notice of allowance. And we did a whole episode, I think, on notice of allowance, but just for deadline purposes, you have, again, three months to respond to the notice of allowance, and your response to the notice of allowance is basically paying the issue fee. I think that's all you have to do. So you have three months, and that deadline is also extendable for up to six months. Samar, anything else about notice of allowance? Is there anything else you need to do besides pay the issue fee?

Samar Shah
No, I think that's it. Although one correction, I don't think there's a way to extend that deadline is three months. And if you don't pay your fees in that time period, your patent application will become abandoned, I believe.

Jamie Brophy
Oh, okay. Yes, I think you're right. Sorry, I misspoke.

Samar Shah
Yes, no worries. Oh, one thing I did forget is there is that thing is called an X Party quail action. You may get that before you get a notice of allowance. If you have, let's say, overcome all the rejections, all the substantive rejections on the merits. But there's some informalities still you may get it's called an expart, a quail action, and you had to respond to that within two months of receiving it. So be mindful of that. That is a shortened statutory period relative to the others. But yeah, if you get those and you overcome that, then you'll have to pay the issue fee, which are three months away.

Jamie Brophy
Yeah. And then after your patent issues, there are maintenance fees you have to pay. And I'm not super familiar with the deadlines for maintenance fees because once the patent application is allowed, then my job is kind of over at that point. Samar, what do you know about maintenance fees and deadlines for those?

Samar Shah
Yeah, so you have to pay a fee every I forgot what the cadence is. I know. The first one is three and a half years from your issue date, and then it's seven to seven and a half years after your issue date, and then it is eleven to eleven and a half years after your issue date. So there are three set of fees that you have to pay to maintain your patent over the next 20 years or over the 20 years from the date of your filing. So be prepared for that. We usually will either pay the maintenance fees on behalf of our clients or if it's a larger client, there are specialized companies whose entire job is to pay maintenance fees and stay on top of that. So we'll usually refer the client to that just depending on how large their portfolio is. But I think that's the date.

Samar Shah
Those are the dates. I am not 100% sure about that. And the fees will vary and go up for every payment period. And it's important that you keep track of these deadlines as well, because if you don't pay your fees within the time frame that's allotted to your patent will become abandoned and there's no way to revive it, as far as I know. I do believe you get about a six month grace period on those deadlines as well. So that's why I say it's between seven to seven and a half years after your issue date. But again, I would check with your patent practitioner on that because those dates are critical. You cannot get them back once they're gone.

Jamie Brophy
Right. Those are all the deadlines I can think of. Can you think of anything else, Samar?

Samar Shah
I think that's it. I think we talked about this a little bit on our last or on the allowance episode, but yeah, if you're going to file a continuation application, you need to do it before the patent issues. There's this famous case where they filed an application at 1159 on the date that it issued, and there was a question about whether that counts. So don't do what they did in that case, but get it filed before your issue date.

Jamie Brophy
Wow. Yeah. Seriously. So if you have filed your patent application on your own, all this is to say it's super important to keep your contact information up to date with the USPTO. They'll send these notices and communications to you through mail. They do not deliver them electronically, so make sure they have your contact information so that you are aware of these deadlines. But I think that covers it. What do you think, Samar?

Samar Shah
Yeah, I think so. As usual, we thrown a lot at our listeners. Hopefully they're taking notes or if they're in the car or something like that, hopefully they'll come back and re listen and take notes. I had an interesting call with a law student this morning and they were asking me about how to study for the patent bar, and I kind of jokingly suggested that they listen to this podcast. So I think it'll get you a little bit of the way there. But you'll probably need to do more studying if you're going to take the patent bar. Hey, it might be a start. Yeah.

Jamie Brophy
There you go.

Samar Shah
Wonderful. Well, thanks, Jamie. I'll see you on the next one.

Jamie Brophy
Okay. Thanks, Samar. Take care.

Samar Shah
Thank you for joining us on the Patent Pending Made Simple podcast. I hope you enjoyed our show. If you'd like to receive updates, view the show notes, or access a direct link to any resource, go to the Episodes page on patentpendingmatesimple.com. To help others find our podcast. Please, like, share and subscribe. Thanks again for tuning in. I look forward to having you with us. Next time on Patent Pending Made Simple. This podcast has been hosted by Outlier Patent Attorneys and is not intended to nor does it create the attorney client privilege between our hosts, guests, or any listener for any reason. The content of this podcast should not be interpreted as legal advice. All thoughts and opinions expressed herein are only those from which they came.