First Office Action in 6months -- Wait or...?

[engr_scotty]

First Office Action in 6months -- Wait or...?

by engr_scotty » Thu Nov 26, 2009 4:18 pm

engr_scotty

White Belt

 

Posts: 4

Joined: Thu Nov 26, 2009 3:42 pm

Location: Chaska,MN

Hi,
Am new to this forum and I appreciate any advice you can give...

I have a patent atty and a letter from the PTO saying the First Office Action will come in a(nother) 6 months. The patent attny is a friend, is doing it "on the cheap", is reluctant to give advice and very busy.The prototype that is nearly ready to show potential licensees...

Should I begin the license/idea sale process or wait until all is cleared with the patent office (i.e. when the patent is likely granted...) ?

Thanks in advance !
Scotty

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[DannyB]

Re: First Office Action in 6months -- Wait or...?

by DannyB » Sun Apr 11, 2010 10:25 pm

DannyB

Green Belt

 

Posts: 106

Joined: Sun Feb 11, 2007 10:02 am

Location: TX

The USPTO is presently forecasting about thirty months before the first examination.

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[apapage]

Re: First Office Action in 6months -- Wait or...?

by apapage » Mon Apr 12, 2010 7:44 am

apapage

Green Belt

 

Posts: 214

Joined: Tue Jun 23, 2009 6:30 pm

Location: NYC

You don't need to wait until the patent issues to license your invention as this could take many months and more likely several years. To give you an example, some of the patents that I worked on recently were filed in 1999-2000 and they issued in 2008. These are extreme cases, but it happens more often than expected. If you want to monetize your IP, then you should start as soon as possible unless there is some reason not to, for example, if you want to keep the information out of the hands of competitors until you have definite patent rights. Keep in mind that some companies do not want to license unless the patent actually issues because they want to make sure the know what they are licensing. There are others that will license the patent application and step up the royalty when the patent issues. But you will never know until you start marketing.

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