Need of Notice of Allowance Review during Patent Grant Process
Notice of Allowance (NOA) is an official notification from the United States Patent and Trademark Office (USPTO) that the examiner has approved a patent application for grant. However, it is important to understand that receiving an NOA does not guarantee an error free patent will be granted. This is where the Notice of Allowance Review comes into play. A review of the NOA is essential as it allows the applicant to address any deficiencies or changes required before the patent grant, preventing future legal disputes or infringement issues. Furthermore, the NOA review process ensures that the final patent meets the legal and technical requirements set forth by the USPTO.
This article discusses the Notice of Allowance review, the difference between Notice of Allowance review and post-grant review, and much more. But first, let us understand NOA and its role in the patent application/grant process.
Overview of Notice of Allowance
NOA or Notice of Allowance is a document issued by the United States Patent and Trademark Office (USPTO) to an applicant after the examiner has decided to grant the requested patent. The issuance of an NOA indicates the conclusion of the examiner’s review and suggests that a grant number will be assigned soon.
The NOA has three sections, the first of which is the header containing information about the patent case number, the inventor, and the invention. The second section mentions the fee owed to the government to complete the patent process and the due date for the same. This section must be completed and returned to the USPTO within a certain time frame. The third section specifies the due date for the fees and any other paperwork requested based on the patent’s filing date.
While issuing an NOA, the patent office also requests the submission of pending drawings, if any, along with the final application. The patent applicant must then submit the application fee, final application, and pending drawings within the specified time frame. A patent examiner will then review the application, issue the patent, and publish the patent notification on the USPTO website.
Notice of Allowance Review & Why It’s Needed
The Notice of Allowance may contain errors, and failing to correct them can impact the patent quality. Once the patent office issues the Notice of Allowance, an applicant has three months to pay the issue fee. During this time, the application should be thoroughly reviewed to ensure that all the details are in order.
This NOA review facilitates the correction of application irregularities that can impact the enforceability of a patent. Depending on the severity of these errors, a request for continued examination might be required, or the patent may need to be postponed through a petition.
An applicant can file a 1.312 amendment after receiving the Notice of Allowance and before paying the issue fee. Since there is no filing fee for 1.312 amendments, this saves the applicant from incurring Certificate of Correction (CoC) costs post patent grant.
A checklist is prepared after conducting the Notice of Allowance review. This checklist helps evaluate Application Data Sheet, all official documents, Oath & Declaration, etc. Here are a few critical sections that should be evaluated as a part of a Notice of Allowance review:
1. Bibliography Information
A review of the bibliography details covers the following:
- Inventor details
- Inventor name, address, spellings, middle name initials, and change in inventorship
- Title of the application
- Filing date
- Notice to file revised documents
- Priority information should properly mention in the Application Data Sheet under the provisional, domestic, and foreign sections.
- A certified copy of the foreign application should be filed if the concerned patent application is based on a foreign application.
- The priority information in the Application Data Sheet, specification, filing receipt, and PAIR should be consistent.
- Changes in entity status as well as the fee should also be verified during prosecution.
2. Cited Art Review
This includes examining whether any uncited references should have been included in the application. A reference check should cover the following:
- Verify that all family and related cases have been identified and cross-cited.
- Identify all related dockets and ensure that all references are cross-cited among the dockets in the patent family.
- Determine whether the Terminal Disclaimer has been filed.
3. Application Review
This entails a review of all the restrictions and amendments to:
- Determine the presence of any restriction requirements.
- Check for an opportunity to file a divisional application.
- Search for Examiner Amendments in the application.
- Evaluate whether Examiner Amendments are incorporated in the allowed claims.
4. Other Sections
Several other critical elements of the patent application must be analyzed upon the receipt of NOA, including:
- Latest Drawings
- Review of replacement sheet (if any).
- Proofread figures to check spelling and grammar.
- Check tags and referral numerals.
- Check amendments (if any).
- Proofread specifications to check spelling, grammar, and punctuation.
- Compare tags and referral numerals with the drawings.
- Latest Claims
- Check the Examiner Amendments (if any).
- Check the renaming of the claims.
- Proofread the latest claim set as per status tags.
- Review claims to check spelling, grammar, and punctuation.
- Check antecedent and dependency.
Notice of Allowance review can help identify and correct the majority of the flaws in the NOA. The next section delves into the key differences between NOA review and post-grant review.
Difference Between Notice of Allowance Review and Post Grant Review
|Notice of Allowance Review||Post Grant Review|
|1. Issuance of Notice of Allowance indicates that the examiner will no longer review the patent application, and the grant number will be issued soon. |
2. NOA may have errors, and failing to correct them can impact the quality of the patent.
3. Once the NOA has been issued, an applicant has three months to pay the issue fee, during which the application should be reviewed thoroughly to ensure that all the details are aligned.
4. An applicant can file 1.312 amendments after the Notice of Allowance and before paying the issue fee.
5. No additional fee is required for filing the 1.312 amendments.
6. The applicant does not need to file the Certificate of Correction after filing the 1.312 amendments; thus, saving cost.
|1. Issued patents are legal documents that must be error-free, especially their claims. Therefore, such issued patents must be thoroughly proofread upon receipt.|
2. Issued patents can have flaws due to errors made either by the USPTO or the applicant.
3. It is imperative to ensure that all the amendments in the specification, claims, and drawings are accurately incorporated in the issued patents. Since the USPTO does not provide a copy of the patent text to the applicants before final printing, the errors that occur in the published patent are usually flagged using a Certificate of Correction (CoC) filing, requesting the USPTO to make necessary changes.
4. Full Patent and Face Page claims proofreading are the two ways to ensure the quality of a published patent.
5. Applicant must pay USD 160 (subject to change) to file the Certificate of Correction.
Sagacious IP’s Notice of Allowance Review Service
Law firms and corporations routinely receive a Notice of Allowance from the USPTO. Failing to review NOA at this stage can lead to numerous errors in the patent grant. Sagacious IP’s paralegal team keeps complete track of clients’ portfolios. Whenever a Notice of Allowance is received, we forward the same to our proofreading team, which downloads the file wrapper from the Patent Center and meticulously reviews it along with the drawings, specifications, and claims. Bibliography check, prior art citation check, application proofreading, checklist preparation, and 1.312 amendments preparation are a part of Sagacious IP’s Notice of Allowance Review service.
In case there are errors in the NOA and demand changes, the applicant has three months from the mailing date of the Notice of Allowance to file 1.312 amendments. It helps save the cost of filing a Certificate of Correction at a later stage. Aside from this, Sagacious IP offers the following:
- Notice of Allowance Review Checklist
- Marked up and Cleaned Claim Set
- Replacement Sheet (if required)
- 1.312 Amendments
Notice of Allowance indicates that an invention is patentable and on its way to becoming a granted patent. However, it is critical to carefully review the NOA to ensure that the invention is fully protected and that all necessary changes are made prior to the patent grant. The NOA review process allows the applicant to address any deficiencies or make improvements.
Sagacious IP’s NOA Review service focuses on correcting inconsistencies, providing information support for filing continuations and divisional applications, as well as administrative assistance in preparing the acceptable claim set. In addition to a checklist, our reports also include a marked-up and clean claim set, replacement sheets, and a revised Application Data Sheet. By preparing and submitting a 1.312 amendment document, clients can also get specifications, claims, and drawings proofread and revised. We can:
- Protect clients from the possibility of missing errors.
- Improve client experience by managing NOA for their entire portfolio.
- Help clients save both time and money.
To know more, visit our Intellectual Property Management Solutions service page.
– Shalini Makhija (IPMS) and the Editorial Team