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: $251,190 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.
Jul 30, 2026 | Patent, Utility
A patent journey can be confusing and complex. This is why it is important to understand commonly used words early on. For experienced practitioners and examiners this is nothing new. But for a person new to the intellectual property world, understanding this language from the start can be a beneficial advantage. Want to know more? Keep reading.
- USPTO – United States Patent and Trademark Office is a federal agency in the Department of Commerce. USPTO is a trademark and patent authority that is responsible for granting US patents as well as registering trademarks.
- Prosecution – A process by which the patent is examined, with correspondence going back and forth between the examiner and the applicant and/or applicant’s attorney.
- Provisional – A provisional patent application is an informal application that is filed with the patent office and expires automatically in one year from its filing date. A provisional patent application acts as a placeholder and ensures a priority date for your non-provisional patent. Provisional application is not examined by the examiner unless a non-provisional is filed.
- Non-Provisional – A non-provisional patent application is a formal patent application which is intended to be examined by the examiner. The goal is to get your non-provisional patent application approved, so that it becomes an active patent.
- Prior Art – All the publicly disclosed and available knowledge and references, anywhere in the world, relating to the technology of the claimed invention in the patent application.
- Priority Date – The earliest filing date that a patent application can claim. When a patent relates to an earlier-filed application by the same inventor, it can claim priority to the earlier application. Since US is a first-to-file country, it is important to establish your priority date as soon as possible. Therefore, filing a provisional application can be a crucial step.
- Patent Term – A legal lifespan of a patent. It starts on the day the US application is officially filed and lasts 20 years. If you claim priority on an earlier US application, the patent term starts from the priority date.
- Office Action – Official communication from the USPTO requesting a certain action to be taken. Office Actions can be final and non-final. Non-Final Office Action is usually the first communication from the Examiner regarding the patent application. Final Office Action is typically Examiner’s communication after the Non-Final Office Action response. Usually, you have 3 months to respond to the Office Action, this time can be extended for a fee. Unless you file a Final Office Action response with the Request for Continuing Examination, your response will not be considered, and the application will be abandoned.
- Publication – Typically, 18 months from the earliest priority date, your patent application becomes public which means that it is now searchable and accessible through the USPTO database by everyone.
- Issue – When a patent application becomes a patent, it is called issuance. Before the patent is issued, you will receive a Notice of Allowance stating that your patent is allowed, what claims are allowed, and the fee you must pay in order for a patent to be issued. A few months after you pay the fee, your patent will be issued, and you will become an official patent owner.
Jul 9, 2026 | Patent, Utility
A provisional patent application is an optional and temporary utility patent application that only lasts 12 months from its filing date. It is never reviewed or examined during its 12-month lifetime and it is never issued as any kind of patent.
The filing costs of a provisional patent application are less than a non-provisional patent application, but overall a provisional application is a more expensive and time-consuming route. because it requires filing a non-provisional patent application.
Although the provisional application requirements are more informal compared to nonprovisional requirements, the safest strategy is to file the same patent application as both a provisional and non-provisional patent application. An incomplete provisional patent application can result in loss of all patent rights in the U.S. and around the world. Complications may arise if the provisional application is not identical to the subsequently filed non-provisional and foreign patent applications, especially because the provisional patent application exceptions exist only in the U.S.
Ultimately, the provisional patent application is a placeholder. It shifts the beginning and end of the 20-year term for patent coverage by one year and gives patent pending status while the inventor does market research and attends to other business needs before the non-provisional and foreign applications are filed.
Jun 9, 2026 | Patent, Utility
Patent application prosecution, also called examination, is when the U.S. Patent Office assigns the patent application to an Examiner. The Examiner is an expert in the field of the invention and will make a full review of the present invention and compare it to prior art, which most often results in an office action.
Office actions are a very normal part of the patent process. Typically, a patent application receives about 3-4 office actions. When the Examiner “rejects” the invention based on prior art, the attorney will argue that the invention is, in fact, patentable based on provided evidence:
“The attorney’s job is to strategically respond to the Examiner’s rejections to minimize the amount of issued Office Actions that go back and forth, while trying to obtain the broadest scope of claims possible. A patent may be of little value if it isn’t of broad enough scope to keep folks from easily avoiding the scope of the patent. A skilled attorney will also greatly increase your chances of getting allowable matter of reasonable and useful scope of your invention, resulting in an issued patent.” –Attorney Jim Passé, The Inventor’s Guide E-Book
