April 2007 I've Filed a Patent Application: Now What?

Preparing and filing a patent application is a difficult and time-consuming task. It is easy to feel a sense of relief and forget about your patent application after it has been filed. This is a mistake, not only because you have ongoing legal obligations to take certain actions in connection with your patent application after it has been filed, but also because you can increase the strength of the resulting patent by remaining attentive to the patent application while it is being prosecuted.

Consider taking the following steps after your patent application has been filed:

1. Begin planning for foreign patent protection. See International Patent Protection: Having Your Cake and Eating It Too on our web site. Although you typically have one year from your U.S. filing to file patent applications in other countries, a year can fly by quickly.
2. Continue to inform your patent attorney of any competing products, services, magazine articles, web sites, or other documents you become aware of that are in any way similar to the invention covered in your patent application and which predate your patent application. You and your patent lawyer are under a legal obligation to submit such information to the Patent Office as part of obtaining your patent. Analyzing this information can help in determining whether to modify your patent application in any way to make it stronger. See Don't Keep Secrets from the Patent Office on our web site.
3. Inform your patent attorney if you make any modifications or improvements to the invention covered by the patent application. Certain kinds of modifications can be incorporated into the patent application by modifying the application itself; other kinds of modifications require filing an additional patent application. Make sure to document any such modifications as described in Document Your Inventions Early and Often on our web site.
4. If the inventors did not sign the necessary paperwork (such as the Declaration and Power of Attorney) before the patent application was filed, make sure that all of them sign such paperwork and return it to your patent attorney as soon as possible. Although initially such documents can be submitted to the Patent Office with the payment of a small surcharge, the surcharges increase significantly with each month of delay.
5. Consult with your patent attorney before describing your invention to anyone outside of your company, with or without a confidentiality agreement. Although having the patent application on file with the Patent Office provides you with a certain degree of protection, disclosing your invention to others can have harmful effects even after the patent application has been filed. Your patent attorney can advise you on how to proceed with activities such as discussions with investors, demonstrations, and product launches based on your particular circumstances.

Please contact us should you have questions about any of these steps or about other ways to protect your valuable intellectual property.