After a patent application has been filed for about 18 months it will publish and the patent prosecution process will usually begin.   The first an inventor knows about this is when his/her attorney receives notice from the patent office in the form of what is called an "Office Action".  Most often the patent office denies one or more (usually most) of the applicant's claims and gives the applicant and the patent attorney a fixed period ( usually 60 days) to respond to the Office action.

Properly, the applicant and the attorney put their heads together and file a response within the 60 day period in which case the patent office will reply again with a second office action until "3 strikes"  are reached.  To see how this process works in more detail watch this video.

However, just as often as not, for any number of reasons the attorney and applicant do not get their heads together in which case the time to file a response quickly runs out.

If no response is made, the patent office will declare the patent "abandoned"  which  means that not only will it not be granted, but everything that was disclosed in the patent application will become public domain prior art. Your abandoned application then can be used by any other inventor without penalty and it can and will be used against you should he choose to file a subsequent application.

There  are several approaches one can take to prevent a patent from being abandoned. One of the most obvious is to file for an extension.  Extensions are a long honored American tradition in Income Tax cases.  However the patent office will only allow the applicant a limited total length for extensions.  And this procrastination will not benefit the applicant if he/she does not file a response during the extension period.

The most effective way to protect the patent is to do what is required to reach the next step in the examination process and that is to file what is called an RCE or a CIP.  Those acronyms represent two processes the first for changing the claims of the patent and the second for adding material to the body of the patent. For more on these steps ask your attorney.

Either approach will buy the inventor another cycle through the patent offices "Office Action"  process.  The better job the inventor and his/her attorney do, the more likely the next step in the process will be an acceptance , not another rejection , but even if what is filed is not of the best quality  and the new application is rejected the specter of abandonment is kept away.

Often the inventor doesn't follow through on an office action because they either don't understand what it means or have no idea what to do next.  The patent attorney can explain options but the decision of what to do rests with the inventor.  That is where BML can help. 

 Don't loose your invention to abandonment due to  inaction . If you are confused and need help deciding what to do,  give us a call.  Also checkout Second Opinion on our website. We are there to help you succeed.  

 

For more information write to rblazey@ittrifecta.com or call (585) 520-3539

Peter Drucker says that one of the first questions an entrepreneur should ask , is "Who is my customer"?  Often an entrepreneur will have a vague  idea of who his/her product might appeal to which includes several different demographics/geographics if the product is Business to Consumer and industry groups if the product is Business to Business.

One customer that Penguin worked with had identified five  different categories of businesses that he thought would be attracted to his product.  However this was just an assumption and it needed to be tested.

The product we studied was scheduling software for service organizations such as tradespeople.  The inventor who was in the software business, thought that IT companies would be  his prime targets.   He also considered appliance service , auto service  and other similar groups.

When he hired Penguin,  we created calling lists for each of the groups he had identified.  We found phone numbers for same number of people in each group and then we called them.

The result surprised our customer.  He had thought that IT people would like his invention the most.  He was wrong.  They hated it because they said they could do that work better  themselves.   The auto service people were much more interested.  He even got some invitations to talk to them.

The script we used was created in cooperation with our client  and encouraged the respondent to volunteer information, not just answer yes or no 

or choose a, b or c.  This "Voice of the Customer"  method often produces results unexpected by the client.

One example, from a marketing guru, is the person whose wife used a bookstore 25 miles from her house when there were many bookstores much more conveniently located.  

When he asked her WHY  she responded that the store she choose had the best Carrot cake in town.   You can be pretty sure that if the store was surveying its customers it wasn't asking about Carrot cake, but a VOC survey might have found that out.

So if you want to know what your prospective customers really think about your new or existing products or services, give Penguin  a call. We can setup a VOC survey to help you find out.

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