When must I notify the USPTO of a change in entity status?

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Erik Lund
Patent, Patent Basics, Prosecution

Sometimes an applicant for a patent application files their application and claims entitlement to an entity status discount. However, perhaps during the pendency of the application or even after issue of the patent, the applicant is acquired by another entity or grows such that they no longer qualify for the entity status discount.

The United States Patent and Trademark Office (USPTO) requires applicants to notify it when there is a change that results in the loss of entitlement ot an entity status.

When do I have to notify of a change in entity status?

The USPTO states “Notification of any change in status resulting in loss of entitlement to an entity status must be filed in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small or micro entity is no longer appropriate.”

Additionally, the USPTO states “notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity is no longer appropriate.”

So, as soon as you have a change in entity status, notify your patent attorney so they can inform the USPTO prior to paying, or at the time of paying, any fee.

What if I accidentally paid the wrong fee before changing the entity status?

If you accidentally paid a fee under an entity status that should have been changed, you may owe a fee deficiency payment. If you can assert that your entity status was previously established in good faith, and that the entity status either was established in error, or the USPTO was not notified of the less of entitlement through error, the then you can pay a deficiency payment equal to the difference in what you should have paid and what you actually paid.

It is best to consult with your patent attorney to prepare and submit the correct forms to the USPTO.

Can I use AI to draft my patent application?

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Erik Lund
Patent, Prosecution

Yes, AI tools exist to help with patent drafting. But, there are some important considerations to keep in mind before you run off and use AI assistance for your patent applications.

Every day there is a new claim of how artificial intelligence (AI) is going wipe out wide swaths of positions, uproot an industry, or change life as we know it. While that may be true in some instances, patent law is not likely to see a drastic change yet. The AI tools currently exist for patent practitioners will help good patent attorneys become more efficient in some aspects of the drafting process. But, they will not allow a novice to create a robust application that would ultimately lead to issuance or survive any post grant challenges.

Patent AI software is only as good as the inputs

AI software can do a lot of things much more efficiently than what came before it. For example, AI software can quickly review written description for claim terms and let a drafter know if a term is missing support. AI software can very efficiently create patent figures from hand drawn sketches. It can also search, categorize, and analyze tremendous amounts of data and synthesize key findings in a prior art search.

But, as of now, AI software does not create new ideas nor does it take vague and broad “inventions” and refine them into something patentable. An inventor is still very much needed with a clear description of his invention. A patent attorney is still needed to navigate the legal and ethical considerations that go with securing a patent. So, for those that think artificial intelligence can take their idea for a perpetual motion machine and spit out everything needed to file and ultimately be awarded a patent, you will be sorely disappointed.

What can AI assisted patent drafting do?

For someone that is not a patent attorney, probably nothing other than spit out some wordy disclosure that looks good to the untrained eye but won’t advance successfully through the patent and trademark office. For experienced patent attorneys who have drafted numerous applications already, AI tools will help them be more organized and speed up their drafting process. The reason for this is because AI software helps integrate good habits that most of these attorneys likely already implemented, but makes them comprehensive across the entire drafting process.

AI drafting tools can improve organization

A good example to illustrate how this works with ai tools is the parts list. Most good patent attorneys kept a parts list during the drafting process. This was a necessity to keep track of what different components were called and how they were numbered throughout the application. The parts list was especially important for preparing the technical drawings. Now, with AI drafting tools, that can all be automated and built in to your drafting software.

AI tools allow patent practitioners to automatically track their parts list by identifying when a new term is used and requesting the patent attorney to give the term a reference number. The AI will then organize the terms and reference numbers and present them to the patent practitioner during the claim drafting process and preparation of the drawings. The use of AI allows the drafter to instantly see if a term isn’t in the figures or if a claim doesn’t have support in the detailed description.

These tasks of course were already performed by patent professionals before but they required a lot of time and tedious tracking. Now, with artificial intelligence the patent attorneys are spared this tedious process which allows them to focus on the more important aspects of the patent application such as the patent claims.

Attorneys are leveraging AI to help ask better questions

Artificial intelligence tools for patent prosecution can also help build out the invention disclosure by analyzing what an inventor provides and generating follow up questions. Again, this is a process that a patent attorney would normally do, but sometimes having AI tools can make the attorney more effective in their questioning by reminding them of certain aspects of the invention to ask about.

A common question patent attorneys ask themselves constantly throughout the patent drafting process is “am I missing something?” As patent practitioners know and fear, an application without sufficient written disclosure can be a death sentence during patent prosecution. With the use of AI, the patent drafting process can become a little less stressful because the drafter can ask AI to scan the entire application for support for claim elements. Moreover, today’s AI tools allow patent professionals to upload known prior art and have the AI determine the similarities and differences between the application and the prior art. Of course, a proper prior art analysis cannot rely on software, but it can help organize and present the information to the attorney to make better-informed decisions.

Generative AI is changing the game with respect to patent drawings

Artificial intelligence has become prominent in many industries, but maybe none as much as images and videos. Every day the internet is flooded with more and more AI generated memes. While patent drafting does not require the level of sophistication seen to make AI movies, the technology has been effective in generating patent drawings from sketches, images, and even written description.

The biggest disruption in the patent drafting space caused by the use of ai tools will likely be in patent drawings. Before, patent professionals had to spend valuable time making drawings themselves or send their sketches off to third-party vendors to create professional drawings. Today’s AI tools largely negate the need for third-party vendors of patent drawings. With today’s AI systems, you can upload a sketch, picture, or written description and the software will generate a figure for you. Once a figure is generated you can easily modify it, and you guessed it, place your already saved reference numerals on it with lead lines.

Notwithstanding the high cost of patent drawing draftsmen, a big problem was the time it took waiting for them to turn around a drawing. With AI tools, you can create your own figures in a matter of minutes and make revisions, as necessary, without having to go back to anyone else.

Are there risks with artificial intelligence in patent drafting?

There are certainly risks with using AI tools during the patent drafting process. The first is that with any AI tools being used, there are ethical concerns about how a client’s confidential information is being use and stored. Many AI tools claim to be a closed universe that do not allow for disclosure or use of confidential information that is input to the system.

Also of concern is whether the AI tools will generate material that is third-party copyrighted, competitor material, or disclosure that did not originate with the inventor. These risks highlight the need for trained legal professionals during the prosecution process.

Importantly, a big risk of using artificial intelligence while drafting patent applications is that without an attorney that has drafted patent applications before reviewing the work, someone using a tool may spend all their time and end up with a useless disclosure. Just because an application is lengthy and reads as if it were a technical document does not mean that it is a good patent application. AI tools are notoriously bad at drafting patent claims.

This is one of the reasons why even if inexperienced agents use these AI tools, they will not be able to draft effective patent applications. There is an art to patent prosecution and drafting a good patent application in the United States . That skill is developed over time by patent prosecution professionals that know the case law and rules of the patent and trademark office.

Conclusion – AI tools can make good patent attorneys better

Experienced patent attorneys will find that the use of AI tools can imrpove their patent drafting by helping them be more organized, quicker, and thorough. This can happen by reducing the tediousness of drafting and patent preparation. Unexperienced persons hoping that they will no longer need a legal professional to help them will be sorely disappointed. The main takeaway is that we will likely see the top performers become more proficient with less time and overhead by utilizing software and its significant advantages.

Everything to know about the USPTO’s new Continuing Application Fee (CAF)

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Erik Lund
Patent, Practice Tip, Prosecution

You may have noticed a new fee when filing patent applications at the United States Patent and Trademark Office (USPTO). Or, you may have noticed that your priority claims are being dropped when you file continuations. Whether or not this has happened to you yet, it likely will soon.

That is because the USPTO’s new Continuing Application Fee (CAF) is in effect (since January 19, 2025) and the USPTO is enforcing it the best they know how.

What is the Continuing Application Fee?

Short answer: A fee applicants must pay when their continuation applications have a priority claim older than 6 (or 9) years.

Long answer: The CAF is a new fee the USPTO is requiring under 37 CFR 1.17(w) for presenting a benefit claim under § 1.78(d). The CAF applies to all utility, plant, and design continuing applications which have an actual filing date more than six years after their Earliest Benefit Date (EBD). This means that if an applicant files a continuation, divisional, or continuation-in-part application and the application claims priority to another application that is more than six years prior to the filing date of the new continuation, the CAF fee will be required if the applicant wants to claim priority.

What is the cost of the CAF?

There are two different costs for the CAF depending on whether the earlier benefit application is more than six years prior or more than nine years prior. If the earliest benefit date is more than six years prior, then the § 1.17(w)(1) fee is due. If the earliest benefit date is more than nine year prior, then the §1.17(w)(2) fee is due.

Entity Size§1.17(w)(1)§1.17(w)(2)
Regular$2,700$4,000
Small$1,080$1,600
Micro$540$800

When do I have to pay the CAF?

Short Answer: At the time of filing the continuation application.

For an application filed on or after January 19, 2025, payment of the CAF is required at the time a benefit claim is presented in the application. So, the best time to pay the CAF is at the time of filing. If you do not pay at filing, the USPTO will not necessarily inform you that you are not entitled to the earliest benefit dates. Instead, you will simply receive an Official Filing Receipt that does not include all your benefit claims.

If you happen to notice this and submit a corrected ADS but don’t pay the fee, you may receive a response from the USPTO like the below:

However, in any situation you should strive to pay the CAF before four months of the U.S. Application’s filing date or sixteen months from the priority of the earlier foreign application pursuant to 37 CFR § 1.55.

What happens if I don’t pay the CAF?

Failure to pay the CAF will result in non-entry of the benefit claim. This means that the Applicant has waived the priority claim and the continuation application will not receive benefit back to the earliest benefit date. This can have serious implications for continuation applications because it means earlier filed applications can become prior art against the continaution.

Applicant’s should seek guidance from their patent attorney before making a decision on whether or not to waive their earlier priority claims.

How will I know if the CAF applies to my application?

Calculate your earliest benefit date (EBD) for which benefit is claimed. If the EBD is more than six or nine years earlier than the actual filing date of the present continuation application, then a CAF applies.

Why does the CAF exist?

Short Answer: It exists because the USPTO says it does and the USPTO has fee-setting authority.

The longer answer involves the USPTO’s policy goals (and Congressional input) regarding patent thickets, revenue the USPTO can raise per patent, ensuring that patents that have value late in their life are adequately paying USPTO fees, etc.

Practice Tips for the Continuing Application Fee

When filing continuations, plan ahead and calculate whether any of your priority claims will be subject to the continuing application fee.

Talk with clients about the cost of the CAF. Explain that they will have to pay this fee or else lose priority which could impact the patentability of their continuation.

When correcting your ADS and paying the CAF, include a Request for Corrected Filing Receipt with your submission so you have an opportunity to explain to the USPTO what priority you want included. If you do not do this step, the USPTO will simply look at your supplemental ADS and your fee and try to guess at how to enter in the priority.

Pay the CAF before the four month deadline after you file the application. Otherwise, you will also need to pay petition fees to restore priority and those petition fees are significant.

Check out the USPTO’s Guide to the Continuing Application Fee.

Is my idea patentable?

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Erik Lund
Patent, Patent Basics, Prosecution

Have you ever suddenly had a “genius” idea? Maybe you’re using something in your home and come up with a better way to do it. Or maybe you read about a new technology and thought “I can make that even better!” No matter how your ideas come to you, you’ve likely had that moment where you think you are the first to invent a new product or a new way of doing something.

You start imagining all the riches you’ll acquire when you sell your new invention. But, wait, you remember something the “sharks” are always asking on the hit NBC show Shark Tank.

Do you have a patent? Are you patent pending?

Uh oh, you better get some patent protection before you begin your journey to becoming the next Steve Jobs!

But an important question still remains: Is your new idea patentable?

What does it mean to be patentable?

An idea is patentable if it is patentable subject matter, new, non-obvious, useful, and enabled. These criteria come from the United States patent law under 35 U.S.C. Although these seem like simple criteria, there can be much more nuance to whether an idea satisfies each of these categories. Here is a more detailed explanation of what these mean.

Patentable Subject Matter

The idea must fall within one of the four statutory categories. The idea must be either a process, machine, manufacture, or composition of matter. This criteria ensures that one does not get a patent on an ineligible subject matter such as a law of nature, a mental process, or abstract ideas.

Novelty

The idea must be new. Something is new if it is not already known, used, or described in a prior patent, publication or public use before the filing date of your idea. This criteria is what those unfamiliar with the patent application process usually think of when they think about patents. Novelty ensures that you can only patent something that is new.

Non-Obviousness

The idea cannot be obvious to a person of ordinary skill in the relevant technology field at the time of the invention. Non-obviousness ensures that a patent is not granted for something that an ordinary person would think of. It ensures that there is an inventive step in the invention. As an example, it would be obvious to change the color of a coffee pot. Therefore, the United States Patent and Trademark Office (USPTO) would not grant a patent for a coffee pot that is only different because it has a different color.

Utility

The idea must have a specific, substantial, and credible use. It must work as described in the patent application and provide a practical benefit. An example of a non-useful invention would be using genetically modified mice as snake food because all mice can be used as snake food and using expensive mice for snake food is not a real world use.

Enablement

Your patent application must describe your idea clearly and completely so that a person of ordinary skill in the art can replicate or use it without undue experimentation. This means that you have to provide enough written description and details on how to make and use the invention. This criteria exists because in order to be granted a government monopoly on your idea, you must share with the public how the invention works and is made.

How will I know if my idea is patentable?

The only way to truly know if your idea is patentable is to file a non-provisional patent application with the USPTO and prosecute your application until it is allowed. If you are able to retain an experienced patent attorney, they can review your idea and give you a good estimate about whether your idea is patentable. But, even the most experienced patent attorney will not know whether your idea is patentable until it has gone through patent prosecution at the USPTO.

Can a patent search tell me if my idea is patentable?

A patent search cannot definitively tell you if your idea is patentable. However, it is a great tool to give you a better idea of what other inventions exist that could potentially render your idea not novel or obvious.

What is a patent search (aka prior art search)?

A patent search is a search done of existing patents, published patent applications, and other documentation such as technical jounrals to find relevant and related disclosures. It is sometimes called a prior art search. It involves searching databases all around the world to see if there is any prior art that matches your invention.

When you receive the results of your prior art search, you (and your patent attorney) can review the other publications to make a more informed decision of whether your idea is novel and non-obviousness. For example, maybe you think you’ve invented a new coffee machine that runs on solar power. However, when you perform your prior art search you may find that there are dozens of other patent applications for solar-powered coffee makers.

At this point, you will know that it may be a good idea to take some more time to refine your idea. Maybe your truly genius invention is not that the coffee maker is solar powered, but that it uses a new type of battery storage system for solar-powered coffee makers. That may be a better patent application to file because you may have a higher change of securing a grant and patent protection.

What is the best way to find out if my invention idea is patentable?

The best way to find out if your invention meets the criteria for being patentable is to file a patent application and get the patent process going. However, it is not the best idea to try getting a patent without a patent attorney. Getting a patent can be a complicated process and finding a patent attorney to help you navigate through the patent office will likely improve your odds of securing a patent.

Conclusion – only the USPTO will answer whether you’ve invented a patentable innovation

Whether your idea is patentable can only be determined through the application process at the USPTO. You cannot have the same idea as someone else in the world and it must not be obvious in light of the prior art. Most people never take the step to find out if their idea is deserving of protection. However, now you know that if you truly want to find the answer, you can file an application to protect your idea and discover its patentability.

What does patent pending mean?

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Erik Lund
Patent, Patent Basics, Prosecution

Have you ever seen someone on tv say that their product is “patent pending”? You may have wondered what patent pending means. Does this mean they have a unique invention that is protected by a patent? Are they able to sue someone that copies the invention?

People often tout their patent pending status as if it is an endorsement of their invention. In reality, the designation of patent pending status may be different than what you think.

What is the meaning of patent pending?

Patent pending means that someone has filed a patent application with the United States Patent and Trademark Office (USPTO) and the application is still pending. When the application is pending, this means that the application has not been granted a patent.

An application will retain its patent pending status until the application either goes abandoned or issues as a patent.

Can I label my product with patent pending?

If you have a pending patent application filed with the patent office, you can mark your product as patent pending as long as the marking is not done in a deceptive manner. For example, it would be deceptive to file a patent application on a coffee mug and then mark the toaster oven you are selling as patent pending based on the coffee mug application.

Does patent pending give me legal protection?

No, not really. You cannot sue anyone for patent infringement based on the patent pending status of your application at the USPTO. However, the patent pending notice can warn potential competitors that a patent application has been filed and if the pending application becomes an issued patent, the patent rights can be backdated to the date the patent application was filed.

Additionally, the application that has been filed to begin the patent application process and give patent pending status may not have the same scope of protection as the patent that ultimately issues. You should contact a patent attorney for help with determining the legal protection of your ideas.

What is the difference between a granted patent and patent pending status?

A granted patent is an issued patent by the USPTO after a thorough examination process. An officially granted patent meets all the patentability criteria such as novelty, non-obviousness, utility, etc. A patent holder with an issued patent is granted exclusive rights to make, use, sell, or import the invention for a limited time period (typically 20 years from the filing date).

An issued patent will be given a patent number and if the patent is infringed, the patent holder may sue for patent infringement.

In contrast, patent pending status indicates an application has been filed, but the examination process is ongoing, and no patent has been issued. Patent pending status does not give applicant any enforceable legal rights. It is simply a warning to competitors that a patent may be granted in the future.

Here is a summary of the key difference between a granted patent and patent pending status.

Granted PatentPatent Pending
Legal ProtectionFull exclusive rights to enforce.No enforceable rights (limited provisional rights in some cases).
StatusApproved and issued by the patent office.Application filed, under examination.
DurationTypically 20 years from filing date.Temporary, until granted or rejected.
Marking“Patented” or patent number.“Patent Pending” or “Patent Applied For.”
CertaintyConfirmed patentability.Uncertain outcome; may be granted or rejected.
EnforcementCan sue for infringement.Cannot sue (except for provisional rights in specific cases).

Will the Patent Office give me patent pending status on my filing date?

No, there is no such thing as a patent pending notice. When you file your patent application at the patent and trademark office, you will receive an Official Filing Receipt (OFR). But, your patent pending designation begins on your patent application filing date. This is true whether you file a provisional application or a nonprovisional patent application.

Conclusion: Filing a patent application will grant you patent pending status.

Now you know that when someone says they are patent pending it means they have a patent application filed at the patent office. They likely don’t have any legal protection with their pending application, but they may hope to deter potential infringers who would otherwise try and copy their product. One of the easiest ways to become patent pending is to file a provisional patent application. An experienced patent attorney can help you through the patent application process. This will ensure your intellectual property is protected as you start and grow your business.