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July 17, 2023
John Rizvi, Esq.

When You Invent an Improvement for Your Product Before its Original Patent Issues

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I have several issued patents one related and pending application. As of quite recently, they are now in the hands of a broker for a marketing effort. For the pending application, I am close to submitting an Office Action response, which I believe has a good chance to pass examination. When and if that application receives Notice of Allowance, I will want to open another application to keep the family open for the benefit of a potential buyer of the family of pet. In addition to delaying payment of the issue fee as long as possible, what would be a good strategy for establishing an additional application before the issue of the patent?

Okay, yes, perfect. So he's picked up on the important aspect of patents is that before I'm gonna use this, this clipboard real quick is before one patent grants, you have an opportunity to file another one. So using this as an example, so you have patent one, you file and you go along, so you go along six months a year while you're waiting for examination. But you've come up with an improvement. You have to do it before this patent neither grants or issues, you can file a second patent. And then the second patent is pending. But the line must be kept alive. If the first patent becomes granted, before you file the second patent, then your own invention can be used against you. So so pick up on an important criteria. Now, how do you prevent a patent from being granted? That's usually the opposite of what US Patent attorneys are hired for. Usually we're hired to get patents granted as soon as possible. But Charles is right. One way to prevent it from being granted is to wait as long as possible before you pay the issue fee. However, you don't get forever, you get six months at most with extension fees. And Charles should take advantage of those six months. And then he should file a continuation application. You mentioned Apple Giovanni, can you hold up your phone once more? How many patents do you think are covered that the iPhone?

Just one, right? I mean, it's just an iPhone like,

Nope, that's, I tricked you shirvani than you should. There's last time I saw there were 49 patents filed on the iPhone. So what Apple does is what a lot of large companies do, they'll start with a basic patent covering one tiny aspect or maybe a broad patent. It's called an umbrella Padma. And then as they have an improvement, they'll file for the improvement. And then over time, if they improve again, they will file patent three, and then you go on to patent four, and so on and so forth. As long as they keep the line alive, you can continue indefinitely. Now, of course, companies like Apple have have tons and tons of money to spend on 49 patents signed up on an iPhone. But even individual inventors could keep the line live by filing one continuation. And it's incredible leverage while they're trying to license the idea because it stops a competitor. The competitor doesn't just have to get around the granted patent. But they also have to worry about the pending application. So that's great leverage to have any of my clients that have a patent close to being issued, we always advise them to consider at least filing a continuation to help them in licensing negotiations. So great question, Charles. You're, you're doing the taking the right steps, wait as long as possible to pay your issue fee. However, if you miss that issue feed date by one day, your patent is going to go abandoned. So I would I don't know if you have an attorney helping you monitor this. Our law firm, when it gets close to that that abandonment date. We call our clients, we text our clients. We hunt them down on social media if we have to. They say hey guys, you're gonna lose your patent if you don't get this issue fee. So Charles, just make sure it's good to wait as long as possible. But don't wait a day more than you're allowed to. So watch that day carefully.

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