Beginning May 13, 2025, the window between paying the issue fee and your patent officially issuing will become much shorter.
Until now, after paying the issue fee, applicants typically had a comfortable three weeks (sometimes longer) to file a continuation or divisional application. It was not an enormous amount of time, but it was usually enough to grab a coffee, think it over, and get your paperwork filed.
Starting May 13, 2025, you will have about one week.
For anyone who files continuation or divisional applications, this is a major shift. In short, the clock will be ticking much faster, and you will need to be ready.
Quick Refresher: What Are Continuations and Divisionals?
Simply put, a continuation application lets an applicant pursue additional claims based on the embodiments disclosed in the original specification. You might be seeking broader protection, or you may want to focus on a different embodiment. Either way, it gives you another opportunity to build on the original filing, so long as the initial application is still pending (i.e., the patent has not issued).
A divisional application comes into play when the USPTO tells you that your application covers more than one invention and asks you to choose one. You file a divisional to protect another invention that was disclosed but not pursued in the parent application.
The key thing to remember is that you must file continuation and divisional applications before the parent patent issues. Once the patent is issued, the door largely slams shut. Technically, you can file a petition to re-open prosecution, but it involves paying a fee and re-opening your patent to further examination. That is not ideal unless you have no other choice.
The Best Move: File Before Paying the Issue Fee
The smartest approach is to file any continuation or divisional application before you even pay the issue fee. The good news is this is not a heavy lift. When you receive a Notice of Allowance, you have three months to pay the issue fee. That gives you plenty of time to review your strategy, make decisions, and get any necessary continuation or divisional applications on file before the patent cruises toward issuance.
Here are some best practices to follow:
- Build continuation and divisional discussions into your standard Notice of Allowance review.
- Set internal deadlines to finalize your strategy before paying the issue fee.
- Treat the issue fee payment as a warning siren, not the starting gun.
Long story short, do not wait until the last minute. Patent law rewards the early birds, and starting May 13, early birds will be the only ones who get the worms.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
