Sep 23, 2026 | Inventor, Patent, Utility
A patent “disclosure” refers to the complete description of an invention. It must be able to teach someone skilled in the art to build and use the invention. Most often, disclosure refers to the specification that gets filed to The United States Patent and Trademark Office (USPTO) for patent protection. This filing is considered a formal disclosure and the USPTO has rules regarding what it can and cannot entail to support getting a patent, which is why having a patent attorney is imperative. But there are a few more things to consider in regards to disclosure, even before the specification gets filed.
Prior Art: Alongside the formal disclosure of the invention, disclosure of any known prior art is required by the USPTO. This includes foreign patents, sales, or public uses that might affect novelty and obviousness of an invention. If this information is intentionally omitted from the formal disclosure, your patent may be deemed invalid.
The Invention Disclosure Form: This is a confidential document an inventor provides to describe their invention. It is a useful tool for a patent attorney in regards to conducting a search and opinion as to if it is worth moving forward with a patent application. The Invention Disclosure Form is considered internal confidential disclosure.
Public Disclosure Timing: Perhaps the most misunderstood aspect of disclosure is in regards to the timing of public disclosure. As soon as you make public disclosure of an invention, you have exactly one year to file the formal disclosure to the USPTO. While the USPTO offers this one year grace period, all foreign countries do not. Therefore, public disclosure before filing a patent application can destroy patent rights in foreign countries. Public disclosure includes presenting your invention at a trade show, conference, on the internet in any capacity, or even talking about it publicly.
Want to learn more? Schedule a free consultation with attorney Jim Passé!
Sep 9, 2026 | Inventor, Patent, Utility
Sometimes it can be necessary to file a new application that is partially based on your currently pending application. This type of application is called Continuation-in-Part or CIP for short. The benefit of such application is that you can add new matter. This is a new application with a new serial number and a new filing date. Basically, once you file the CIP, the process begins all over again. Amendments that were made previously do not carry over.
When you file a CIP, the application it is a continuation of (parent application), must be pending; it cannot be issued or abandoned. Additionally, at least one inventor of the CIP should be in common with the parent application.
Why file a CIP? If you have any changes or improvements to your invention after a patent application has been filed, it is wise to file the CIP. The best thing about the CIP is that you can claim the priority date of the parent application. This is important because US is a first-to-file country.
The disadvantage of a CIP is that the patent term will be counted from the priority date. So, if you filed your parent application in 2023, and filed the CIP in 2026, the patent term will start from 2023, and the 3-year difference can be significant for some applicants. Remember that the patent term is 20 years total.
If you are hesitant about filing a CIP, you should discuss it with the attorney. If you have any questions, contact our office and will gladly assist you!
Aug 26, 2026 | Design, Inventor, Patent, Utility
When filing your patent application, it is important to clarify your entity status. Depending on what status applies to you, the discount of 60% or 80% may be applicable to most patent-related fees.
SMALL
Who qualifies: Individuals, nonprofits, or businesses with no more than 500 employees that have not assigned, licensed or otherwise conveyed an interest in the invention to a large entity.
If you qualify for small, you may qualify for micro.
MICRO
Who qualifies: Same as small entity, plus special provisions for employees of higher education institutions. Additionally:
- Neither the applicant nor the inventor has been named as an inventor on more than four previously filed US non-provisional applications
- Neither the applicant nor the inventor has assigned, licensed or otherwise granted an interest in the invention to an entity whose gross income exceeds the amount listed below (unless the entity is an institution of higher education)
Maximum qualifying gross income: $262,380 in the previous year from when the fee is paid (in 2026, subject to change), if any of the applicants or inventors make more than this amount, you automatically do not qualify for micro status.
Please note that if the application involves joint applicants, each applicant must qualify for micro entity status.
Additionally, you cannot falsify our status. Since 2025, USPTO started implementing statutory penalties for falsely made assertions or certifications of small and micro entity status. If USPTO finds that an applicant falsely asserted a small/micro entity status, the applicant may need to pay a fine of at least three times the amount that the entity underpaid.
Useful links:
If you have any questions, or would like to schedule a free consultation with our attorney, Jim Passe, do not hesitate to contact our office at 919-256-8199.
Aug 12, 2026 | Inventor, Patent, Utility
Your application is filed, all the fees are paid, and you are excited about becoming an official patent holder. But how long will it take, how soon can you expect an approval from USPTO? Well, let’s dive in.
The first thing you need to remember is that every patent journey is unique, and it is difficult to predict how long it will take for your patent to be issued. We must keep in mind that not all patent applications are approved. Additionally, there are several ways to expedite the process (such as based on age), but we will not be covering it today. However, in our office we have seen patents being issued within 18 months as well as 60 months.
The prosecution process depends on several aspects such as:
- The complexity of the application
- Whether it is a utility or design application
- Prior art
- Examiner and their subjective view
- Number of claims
- Whether it is a government-backed application
- USPTO backlog
- How fast you respond to the Office Actions
- Whether your file National or PCT first
Some things to remember:
- Your patent will be published 18 months after filing or after a priority date, whichever comes first (unless you expedite).
- The first Office Action is typically issued within 18-24 months.
- When you receive the Office Action, you usually have 3 months (6 with extension of time) to respond to the Office Action. If it is the Final Office Action, you need to file a Request for Continued Examination.
- When you get a Notice of Allowance, you will have 3 months to pay the Issue Fee. Again, the sooner you pay, the sooner your patent will be issued.
To check current wait times, please see this page USPTO: Pendency.
If you have any questions about the patent process, contact our office and will gladly assist you.
Feb 10, 2021 | Design, Inventor, Patent, Utility
National Inventors’ Day is Thursday, February 11, 2021. President Ronald Reagan first signed National Inventors’ Day into declaration on February 11, 1983, which coincides with Thomas Edison’s birthday, as a day to recognize and honor past, present, and inspire future inventors.
Oct 23, 2020 | Inventor, Patent, Utility
A search and opinion is not required by law or by our firm, but it is strongly suggested. Without the search and opinion, the patentability and scope of an invention cannot be determined and what the applicant would be entitled to receive, in terms of patent scope, would be a wild guess. A mistake in the scope of a patent application (what is claimed in the application to be essential to the invention) can easily lead to a complete loss of any patent rights. No prior searching is a prescription for an expensive failure.
