#LCExcl: Notice of Allowance simplified

— Karan Bhutani, Founder, Shoprwise.com

The Notice of Allowance (NOA) is the final step after the complex patent application process wherein the inventor provides all the requisite information pertaining to the invention including product description, design, drawings, and blueprints. Post the submission of the patent application, the patent examiner reviews and processes the application highlighting description of the invention, inventor’s claim, and outcome of the invention, and decided whether the patent should be issued.

When the patent examiner determines that the patent application is complete and the invention qualifies for a patent, the United States Patent & Trademark Office (USPTO) issues the document i.e. NOA to be sent to the applicant, indicating the grant of the patent. The patent examiner will no longer review the patent application to determine patentability but will issue the patent with the proposed invention. However, the patent will only be granted, if the applicant pays the required fee and submit all the final drawings within the three months from the date of NOA issued by USPTO. There are three sections in the NOA, which are given as below:

  1. Header – Defines the details regarding the inventor, invention, and the case number
  2. Section B identifies the fee to be paid to complete the patent process. This section needs to be completed by the applicant and should be sent to the USPTO within the timeframe
  3. The series of note include the due date for any paperwork and fees

Reviewing the NOA

The NOA also presents an opportunity to identify and rectify errors that have been made during the prosecution stage. There may be numerous errors so detailed proofreading of the patent specification is required. The NOA should be reviewed accurately so that it should not include any unintended interpretations upon the claims.

  1. Inventor’s details:

While reviewing the NOA, the applicant should thoroughly check the names, title of the patent, status of the entity-whether small or large, and address. The entity status should be checked as sometimes the applicant may license the application to a large corporate during the prosecution phase. As a result, the entity status should be changed from ‘small’ to ‘large’. In addition to this, the correspondence address can be changed and lists down details such as assignee name, city and state that appears on the patents’ face page. The applicant can also determine patent term adjustment (PTA) from the NOA.

The NOA will include notice of allowability that enlists forms such as office actions, highlight check boxes to complete the necessary information required for prosecution of the patent, submission of oath declaration, drawings, etc. in many cases, NOA will also include examiner’s final actions that should be reviewed carefully.

  1. Application Review:

The primary purpose to review the patent application in detail is to identify issues that may require any amendment or withdrawal of the application before the fee is paid. The issues that should be reviewed prior to issuance of the patent include:

  • Whether the priority claims to priority have been filed, reflected in the file history, and acknowledged by the PTO
  • All relevant documents have been disclosed in IDS and the examiner has reviewed the same
  • Whether there is any patentability intellectual property has not been reflected in the claims, but it is mentioned in the application
  • Any error in the specification or claims that should be corrected
  1. Prior Art Review:

Another important detail to check whether the examiner has initialled all prior art cited in IDS filings. This may be critical for future enforcement of the patent and the examiner has checked all the references and documents submitted in the IDS.

Correction of Errors in NOA

The applicant should check the accuracy of the required information in the NOA, and notify errors to the USPTO. If the errors are made from the USPTO then it will determine, if the change requires republication or else the examiner will make the correction and issue the corrected NOA. If the republication is needed, the NOA will be cancelled and the fees paid for filing the statement of use will be refunded, and the application will be scheduled for republication. On the other hand, if the error has been made by the applicant such as incorrect information then a written amendment should be filed, which will be filed similar any other amendments that are filed after the issuance of NOA or prior to the filing of the statement of use.

Keeping in mind the complex issues involved in NOA, Maxval reviews the patent application and the file history before the patent is issued while addressing the errors, which can be rectified by petition. As we believe in maximizing the value of the patent, we carefully proofread the patent and identify the errors that can lead to any infringement by the competitor. We also send a timely reminder for the payment of maintenance fee within the stipulated timeframe.

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