After centuries of issuing paper patents to inventors, the U.S. Patent and Trademark Office will soon transition to only electronic issuance, with patent holders able to receive a printed “ceremonial” copy to display proudly if they wish. This long-awaited transition, effective April 18, 2023, should reduce costs associated with handling, storage and shipping, and the pendency between issue fee payment and grant of the patent is expected to be substantially reduced. Patent recipients will benefit from a more cost-effective patent office and shorter pendency, but they should consider how this shortened time to grant can impact their patent rights, particularly with respect to continuing applications and the Duty of Disclosure.

The New Electronic Patent Process

Under the new issuance procedure, the USPTO will publish electronic patents via Patent Center, with each electronic patent bearing the seal and Director’s signature in digital form. The electronic patents will be available via Patent Center to the patentee as well as the public. As is the case under paper patent issuance, the electronic patents will publish on Tuesdays, and the Official Gazette will continue to publish the detailed patent information.

The rules provide for a “transition period,” during which the USPTO will issue patents electronically, as well as by mailing a “ceremonial paper copy” to the patentee’s correspondence address of record, without charge. However, the electronic patent grant will be considered the official patent grant under 35 USC §153. After the transition period, the ceremonial paper copy will be available for purchase by patentee. The certified copy and presentation copy will continue to be available for purchase.

The USPTO has not provided an indication of the duration of the transition period. Thus, patentees that wish to continue to receive the ceremonial paper copy will want to understand the USPTO’s process during and after the transition period, and check for relevant updates.

Practical Considerations

The USPTO has indicated that issuance will occur more quickly after payment of the issue fee. For example, the Notice states that the issue notification will be published “Wednesday or Thursday before the patent issues.” Given that the USPTO issues patents on Tuesdays, applicant and counsel may only have two or three business days of notice prior to the issue date to take any necessary actions.

Applicants should consider the following immediate impacts of the expected significant shortening in time between payment of the issue fee and grant of the electronic patent:

• Continuing Application Practice: Applicants should review the Notice of Allowance at an early stage to evaluate whether the file divisional applications to non-elected inventions, and/or continuation or continuation-in-part applications directed to unclaimed subject matter. Ideally, such review should be conducted regularly throughout prosecution.
  • Where feasible, the decision and filing of the continuing application should occur at the time of issue fee payment. When in doubt, applicants may file the continuing application without payment of the USPTO fee at the time of filing, and late-pay the government fee (e.g., in response to a Notice to File Missing Parts).
  • If additional time is required to finalize the claim language, applicants may consider filing the continuing application with the issue fee payment, followed by a preliminary amendment with the desired claims. However, the preliminary amendment should be filed relatively soon after the filing of the continuing application, to reduce the risk of a first final office action.
• Duty of Disclosure: Applicants should consider the impact of the compressed grant schedule on the ability to coordinate, prepare and file an Information Disclosure Statement (IDS) at the post-allowance stage.
  • For foreign counterpart applications, applicants should quickly communicate the Notice of Allowance to local counsel in those jurisdictions, so that any foreign office actions or other relevant information is provided in a timely manner, and the IDS can preferably be filed before the issue fee is paid. Any lead time for translation or the preparation of an English language statement of relevance should also be taken into account.
  • If it becomes necessary to file a petition to withdraw from issue (e.g., for a Quick Path IDS submission), there may be very little time between issue notification and patent grant. Rather than relying on the issue notification as a trigger to file the petition, applicants should move expeditiously to file such petitions.
• Post-grant Quality Processes: Patentees will need to consider whether the change from paper to electronic form impacts any post-grant processes.
  • With respect to patent proofing, patentees will want to provide the proofer with the official electronic patent for review. If there is a discrepancy between the electronic patent and the ceremonial paper copy, the patentee will need to determine where a Certificate of Correction is appropriate based on the electronic patent.
  • When reviewing the drawings, particularly for design patents, patentees should review the initially uploaded documents at the time of filing against the granted electronic patent, for potential differences, distortions, or the like.

Given the short time before the implementation of this rule, as well as the expected reduction of pendency, applicants and counsel alike may wish to take steps to address the above issues. For example, patent processionals may consider updating workflows, revising internal policies, providing training for Patent Center, and implementing reminders on the docket.

All told, this is a historic shift for the USPTO, which issued its first U.S. patent in 1790. More than 11 million issued patents later, inventors fortunate enough to secure patent protection will do so via electronic form, befitting the 21st Century.