Bay Area IP

Service

Utility Patent Issuance Process Handling & Filing

This service is for our Filing of all necessary Patent Issuance paperwork, fees, and Handling the Process.  The fee is for those that qualify as Small or Micro Entities, and does not include any USPTO fees.

Our base "normal" fee for handling your issuance payment, doing ‘final checks’, and associated procedures/paperwork.  However, if you are willing to effectively rate our patent legal services online, we are happy to reduce our fee by 50% in appreciation of your time and effort in doing so.  Please select that option, and advise us so we can send you more info on taking care of that option.


You must act quickly to have the issuance fee and paperwork filed according to the proper procedures by the due date printed on the Allowance notice or your patent application will be irrevocably abandoned.


You are strongly advised not to handle this matter yourself as you are likely to make errors which could result in your losing patent rights, or your patent becoming abandoned and may cost thousands of dollars to revive.

As part of our issuance service we perform multiple checks for common critical issues before doing the paperwork/fee filing.

 

Thus, to avoid abandonment of your patent application, the issuance papers and payment must be properly filed with the USPTO by the due date indicated on the first page of the notice.


If you wish us to handle your issuance payment, doing ‘final checks’, and associated paperwork we would like to receive your payment to begin work no later than 4 weeks before the deadline.  Otherwise, rush fees may apply depending on the required turn-around time and our cases load. 



Important Legal Notices

NOTICE: Please be advised that if a claims restriction was ever issued in your application (i.e., you had to elect prosecution to proceed on one of multiple alleged independent inventions in your application) or if there are any novel improvements you want to add to the patent, then you must file a divisional (or CIP for improvements) application on the non-elected claims while this case (on the elected claims) is still pending at the USPTO (e.g., before allowance of the claims or paying the issue fee).  If you are unsure if a restriction was made on your case please do not hesitate to ask.  

NOTICE: Micro Entity Status Patent Invalidation Risk: By default, we, and the USPTO, assume you continue to qualify for micro-entity status when you have previously claimed it, and continue to pay/remit fees at the micro-entity level.  You must never pay, or remit to us, any USPTO fee at a micro entity level unless you have verified that all inventors/owners qualify, otherwise, that is a legal basis for anyone to invalidate your patent.  Hence, if all inventors/owners still qualify, to get lower USPTO fees, please have all inventors in the patent separately sign and upload to us the USPTO's Micro Entity validation form to prove all inventors/owners still qualify as micro entities; otherwise, you must make sure that their higher small-entity fee schedule is paid, irrespective of what “Fee Due” they may indicate on the NOA letter.

NOTICE: You MUST file a CA or CIP (if you want it) while this present application is still pending at the USPTO, which CIP we strongly advise you to file not later than paying of the issuance fee, which timing you are responsible for assuring.  If, for any reason, you do not file a timely CIP or continuation application, then please take notice (and mark your calendar) that you will have a (drop dead) final deadline to broaden your issued patent's claims (but no new matter) by 2 years after the issuance date by way of a Reissue patent application.  Note that, due to complex legal issues, there is no 100% guarantee that the USPTO will allow you to broaden claims via Reissue.  Note also that no new matter may be added to the patent specification/description in a Reissue.  So doing a continuation/CIP now is the safest, lowest cost approach.  After that 2yr, last chance deadline, you will ONLY be allowed to narrow claims.  To be clear: this 2 years broadening time is just to change the claims, and you will not be allowed to add any new matter to the patent description.  Only a filing of a CIP before issuance/fee payment will enable you to do that going forward.


NOTICE- REASONS FOR ALLOWANCE: You should review the "reasons for allowance" section (if any) of the NOA and agree with everything that is state there.  By paying the issue fee you are agreeing to every reason for allowance stated there and later on in litigation any unfavorable/narrowing reason(s) (even if actually inaccurate or misleading) can be used against you.  Let us know if we should make an official statement against any of the reasons stated.  This would just be entered into the record and does not change the patent's allowance status.  Our below fee includes reviewing, addressing and positioning your concerns/input in this regard.


NOTICE: DEDICATION TO THE PUBLIC- Be aware that anything disclosed in a patent which are not claimed are automatically dedicated to the Public.  That means, for example, if you get certain claims allowed and you do not file a continuation or CIP then anything disclosed but not claimed is forever free for anyone, anywhere, to make/use with no infringement recourse.  So, if it is within your budget and goals, well before having us get your patent issued with the allowed claims, you should scour the patent description and drawings and generate a list of everything novel there which is potentially valuable, yet was not claimed.  Of course, you can have us quote you to do this work for you- usually a few hundred dollars for small specifications and claim sets.  Then, based on what is found, you may decide if you want to retain us to draft new claims to cover that unclaimed matter in a continuation patent application.  Similarly, if you will already be having us do a continuation or CIP for other reason(s) then it would be very opportune to perform this unclaimed matter analysis to generate more things to claim in the continuation or CIP.  If you do not retain us to perform this unclaimed matter related work, we assume by default that you are not concerned about that potential issue.

 

NOTICE- ERRORS: Based on the most recent case law it has been held that any substantial and/or pertinent (even if otherwise minor) error or omission in the published patent can invalidate the patent even if it was the USPTO's fault.  So, you should right away carefully review the issued patent for any errors and/or omissions.  In any case, if a problem is found, which requires official correction, a certificate of correction (if an obvious error) or reissue (if patentability or patent scope related errors are involved) would be required.

 

NOTICE- INVENTOR/ASSIGNEE INFO MISTAKES: You should right away carefully review the USPTO filing receipt, and NOA for any official naming and contact information mistakes they may have.  If a name spelling or address problem is found for any of the inventors/assignees, you should have us prepare and file a corrected ADS form, which makes the required official correction; otherwise, a much more costly certificate of correction would be required. Our fee is $200 to handle the process for you before issuance, and the USPTO does not charge a fee for this. 

 

NOTICE- INVENTORSHIP: Patent laws require that all people that contributed to the conception of the invention as claimed in the allowed claims must be listed as inventors in the patent.  Any missing or incorrect actual inventor(s) may invalidate the patent even if it was the USPTO's (or anyone else’s) fault, or if the patent is assigned to another entity.  So, you should right away carefully review the allowed claims and determine if the currently listed inventors are complete and correct.  In any case, if you find that inventorship is incorrect then you must promptly do an official correction of inventorship.  At this late point it is more complicated process, yet if done after issuance it is far more costly at least because a certificate of correction would be required and inequitable conduct concerns may cloud the patent.  We charge a fee to handle the process for you before issuance, and the USPTO’s fee was $200 for micro entities.  So, as us for a our current fee if you need this to be properly done along with our issuance process work. 

Concerning INVENTORSHIP, the following guidance may help you better detect, understand, and sort out any such issues: 

 

WHEN HAS CONCEPTION BY AN INVENTOR OCCURED?

 

Generally, conception exists when a definite and permanent idea of an operative (i.e., functionally capable of working in principle) invention, including every feature of the subject matter sought to be patented, is known. Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985). Conception is complete when one of ordinary skill in the art could construct the apparatus without unduly extensive research or experimentation. See Summers v. Vogel, 332 F.2d 810, 816, 141 USPQ 816, 820 (CCPA 1064); In re Tansel, 253 F.2d 241, 243, 117 USPQ 188, 189 (CCPA 1958).   

 

WHO IS AN INVENTOR?

 

 

                A patent application contains a detailed description (text and drawings) of the preferred design of the product which is the subject of the invention.  In a corporate engineering environment, there will be dozens and perhaps hundreds of individuals who will have some input into the design which is described in the patent application.

 

                Following the detailed description in the application are a number of claims, which define the invention which is to be protected by the patent.  It is these claims which have legal significance -- the detailed description merely sets the stage for the claims.

 

                An individual is an inventor if he or she made a material contribution to what is set forth as the invention in one or more of the claims.  It is very helpful to have such contributions documented and dated.  The fact that an individual may have made a contribution to the design set forth in the detailed description does not constitute inventorship if that particular aspect of the design is not specifically set forth in the claims.

 

                An individual is an inventor if that individual originally suggests an item claimed.  Other types of contributions, such as suggesting that a prior concept is unworkable, promoting the original thought of another, or modifying the original thought of another in a manner not claimed as invention, may be valuable engineering contribution, and perhaps even more valuable than originating the concept, but it is only the originator of a concept claimed who is specified as an inventor.

 

                Many inventions are the joint inventions of two or more inventors.  Each person named as an inventor in a joint patent application need not have contributed something to each claim.  Under certain circumstances we will need to know who the inventors are on a claim-by-claim basis.  Therefore, as you read over the application and claims, please note directly on the draft copy of the application (or on a separate piece of paper), the name(s) of the inventor(s) for each claim and send the list to us for our files

 

            Note that any listed inventor is an equal owner of the patent, unless an assignment is properly recorded at the USPTO indicating otherwise.

 
NOTICE- PPH:  If you have a pending PCT patent application on this invention, or if you have already entered a patent application into any foreign country, then because your claims are deemed patentable in the allowance notice then you are eligible for accelerating those PCT or foreign patent claims under the PPH program.  See these articles to better understand the PPH process:
Under the PPH program, your US NOA will normally accelerate and make certain you’re getting a patent allowance in the other countries on those approved claims within 3-6 months (instead of years, and cuts prosecution costs dramatically), and 90% of the time they just accept the NOA report finding and allow the foreign patent applications.  Hence, unless, it is too late to amend the PCT, or you are looking (to fight) for broader claims internationally, it is highly advisable that you have us amend your PCT claim to match our final claim that were allowed.  We charge a fee to prepare, file, and handle the PCT amendment process.  

To have us handle this for you please add that to the PPH fee to begin this work.  

NOTICE- BY LAW YOU MUST DO THE FOLLOWING OR RISK YOUR FUTURE PATENT BECOMING INVALID: If you have related (in any way) US or foreign or international (e.g., a PCT filing) patent application prosecution which has discovered prior-art (e.g., in a search report or foreign patent office action) not already cited to the USPTO, then the USPTO requires that it must be submitted ASAP in an Information Disclosure Statement (IDS).  If so, please provide us with a list of the prior-art cited, and add the USPTO's IDS fee, and our IDS preparation fee.  Likewise, the USPTO also requires the disclosure to them of any US patent application you have filed that is related to this case in any way; otherwise you risk your future patent becoming being rendered invalid by presumed inequitable conduct.  If we do not receive a payment and instructions to file any prior-art or other cases on your behalf, we assume that you are handling the matter yourself.


NOTICE- ceremonial of eGrants:  

  • Starting March 9, 2026, courtesy ceremonial copies of eGrants will only be provided by opt-in. To opt-in to receive a courtesy ceremonial copy of an eGrant you must check the Ceremonial Copy box on the PTOL-85 Part B when paying the issue fee. Customers who pay the issue fee before March 9 will still receive an automatic courtesy ceremonial copy. The eGrant is the official statutory patent grant; the ceremonial copy is a commemorative item only. For more information, see USPTO’s Patent Related Notices webpage.



Pricing

Price400.00
Minimum pre-payment100
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