In a final rule published in the Federal Register (88 Fed. Reg. 12560) last week, the U.S. Patent and Trademark Office announced that it will start issuing patents electronically under a new digital USPTO seal and bearing the digital signature of the USPTO Director beginning on Tuesday, April 18, 2023. The Office indicated that electronic patent issuance will reduce pendency of patent applications, foster a green economy by reducing paper waste, and permit issued patents to be viewed and printed by applicants and the public immediately upon issuance in Patent Center.
The Office noted that following a transition period, patents will no longer be issued on paper and will no longer be mailed to the correspondence address of record as part of the patent issuance process. During the transition period (the length of which has not yet been specified) the Office will provide a paper copy of the electronic patent as a courtesy ceremonial copy, delivered to the correspondence address of record. And even after the transition period, ceremonial copies of patents will be available for purchase at a nominal charge. In addition to ceremonial copies, the Office will also offer presentation copies (a certified copy of the first page of a patent suitable for framing and display) and certified copies of issued patents for a nominal fee. However, the Office will no longer accept orders for Advance copies of issued patents, and the Issue Fee Transmittal form (PTOL–85B) will be revised to eliminate the option for ordering Advance copies of patents.
The lone rule change required by the implementation of electronic patent issuance will be the removal of 37 C.F.R. § 1.315, which states that "[t]he patent will be delivered or mailed upon issuance to the correspondence address of record." The move to electronic patent issuance will, however, impact patent practice to some extent. The notice points out that under the current paper patent issuance process, electronic capture of the information needed to issue a patent begins shortly after the mailing of the notice of allowance, and an Issue Notification is typically mailed several weeks prior to the issue date to inform the applicant of the patent number and issue date. (While there is no set period after payment of the issue fee when a patent will issue, in our experience patents often issue within about five weeks following payment of the issue fee.) Under the electronic patent issuance process, the Office notes that patents will issue "shortly after the patent number and issue date are assigned, which will result in the reduction of pendency for allowed patent applications." Thus, the Office indicates that patents will issue "shortly after the payment of the issue fee," and Applicants therefore "will have less time, after the payment of the issue fee, to file continuing applications, Quick Path Information Disclosure Statements, or petitions under 37 CFR 1.313(c) to withdraw an application from issue." The Office recommends that the best practice would be for Applicants to file any of the above submissions as early as possible, with continuing applications preferably being filed before the payment of the issue fee. The Office notes, however, that patents will continue to be issue on Tuesdays, and that Issue Notifications will continue to be available electronically via Patent Center, generally on the Wednesday or Thursday before a patent issues. Thus, Applicants can still monitor Patent Center to determine the patent number and issue date of a patent at least a few days prior to that patent's issuance.
As for the format of the electronic patent, the Office notes that the electronic patent cover sheet will be nearly identical in appearance to the cover sheets currently used for paper patents, except that the seal and Director's signature will be in digital form. In addition, the new seal will be an official USPTO seal in digital form that serves to authenticate the patent, with an encrypted digital signature embedded within the seal.
The notice indicates that the Office received 21 comments in response to an earlier notice of proposed rulemaking regarding implementation of electronic patent issuance. The Office noted that some comments argued that the time between the Issue Notification and patent issuance should not be shortened because it leaves too little time to determine a continuation filing strategy. The Office responded that "[d]elaying issuance to counteract th[e] time savings [from electronic patent issuance] because [an] applicant may possibly choose to file a continuing application is not in accordance with the statutory directive," and "[t]he USPTO appreciates this may cause a change in some applicant's practice, but agrees with the comments that state that applicants will adapt to the new timeline." In response to comments suggesting that certificates of correction also be issued electronically, the Office noted that it would continue to mail certificate of corrections to the correspondence address of record, but "is making efforts to also issue certificates of corrections electronically via Patent Center with the electronic patent grant." The Office also noted in response to some comments that it has no plans to make certified copies available electronically beyond the current practice of using CD–ROM media.
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