USPTO Proposes Electronic Issuance of Patents

In a notice of proposed rulemaking published last month in the Federal Register (86 Fed. Reg. 71209), the U.S. Patent and Trademark Office is proposing to issue patents electronically through its patent document viewing systems (i.e., Patent Center and Patent Application Image Retrieval (PAIR)).  As a result of the proposed changes to the rules, the Office would no longer issue patents on paper or physically deliver patents by mailing them to the correspondence address, and 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," would be removed and reserved.

Currently, the Office issues "letters patent" as paper copies bound with a cover sheet that has both an embossed seal and the signature of the USPTO Director.  Under the proposed process, the Office would issue patents electronically under a new digital USPTO seal and with a digital signature from the USPTO Director.  The notice indicates that the electronic issuance of patents will allow the Office to issue patents approximately two weeks faster than the current process.  Stakeholders and patentees, however, would still have the option of ordering certified copies or paper presentation copies of patents.

The notice provides some historical background regarding the Office's efforts to establish beginning-to-end electronic processing for patent applications, noting that the Office implemented an electronic filing system in 2001, launched the Image File Wrapper system to replace paper processing of patent applications in 2003, and initiated the e-Office Action Program in 2007.  According to the notice, electronic issuance of patents would be another step in the Office's effort to continue streamlining its service delivery processes.  The notice also indicates that the Office is also considering electronically issuing reexamination certificates, statutory invention registrations, patent term extension certificates, and certificates of correction.

The notice provides some advice to stakeholders regarding best practices in view of the proposed change to the patent issuance process.  In particular, the Office notes that:

Under the proposed electronic patent issuance process, the USPTO would issue the patent shortly after the payment of the issue fee.  As a result, applicants would 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.  Therefore, the best practice would be for applicants to file these submissions as early as possible.  Preferably, continuing applications should be filed before the payment of the issue fee.

The Office also encourages Applicants to participate in the e-Office Action Program in order to receive Issue Notifications, as the Office "foresees the possibility that a patent may issue electronically before the applicant receives a mailed Issue Notification," and the use of the e-Office Action Program would "avoid this possibility."

The Office's notice indicates that comments regarding the proposed changes should be submitted by February 14, 2022 to ensure consideration, and that such comments should be submitted through the Federal eRulemaking Portal.

USPTO Proposes Change to Receipt Date for Patent Electronic Submissions

In a notice of proposed rulemaking published last month in the Federal Register (86 Fed. Reg. 69195), the U.S. Patent and Trademark Office is proposing to amend the patent rules of practice to provide that the receipt date of correspondence submitted via the Office's electronic filing system will be the date in the Eastern time zone when the Office receives the correspondence, as opposed to the date on which the correspondence is received at the correspondence address in Alexandria, Virginia.  The Office notes that the change is necessary because the Office is in the process of placing servers in Manassas, Virginia, and anticipates that in the future it might provide servers outside of the Eastern time zone.  According to the notice, the change to the rules will ensure consistency and predictability with respect to correspondence receipt dates as the date of receipt for electronic submissions will no longer depend upon the location of the Office's servers.

The Office also proposes changing the rules to define "Eastern time" as meaning Eastern Standard Time or Eastern Daylight Time in the United States, as appropriate.  Finally, the notice points out that because the Office does not "strictly require" the use of an address when patent-related correspondence is submitted via the Office's electronic filing system, the proposed changes to the rules would exclude such correspondence from the address marking requirements of 37 C.F.R. § 1.1(a).  The Office notes, however, that Applicants may continue to provide an address on correspondence submitted via the Office electronic filing system consistent with § 1.1(a), but that the inclusion of an address is not mandatory.

The Office's notice indicates that comments regarding the proposed changes should be submitted by February 7, 2022 to ensure consideration, and that such comments should be submitted through the Federal eRulemaking Portal.

USPTO Delays Implementation of Voluntary CLE Certification

In a notice of proposed rulemaking published last month in the Federal Register (86 Fed. Reg. 71453), the U.S. Patent and Trademark Office announced that it would be "delaying indefinitely" the implementation of voluntary continuing legal education (CLE) certification.

In August 2020, the Office initially proposed allowing registered patent practitioners (and individuals granted limited recognition to practice before the USPTO in patent matters) to voluntarily certify to the Director of the Office of Enrollment and Discipline (OED) that they had completed 6 credits of CLE in the preceding 24 months (including 5 hours of CLE in patent law and practice and 1 hour of CLE in ethics).  The Office published proposed CLE requirements in October 2020 and sought public comment regarding those proposed requirements.  By the close of the comment period in January 2021, the Office had received 26 comments.  In June 2021, the Office announced that voluntary CLE certification would commence in the spring of 2022.  The Office's latest notice, however, has now delayed implementation of voluntary CLE certification.

The notice indicates that the Office will provide at least 120 days' notice prior to implementation of voluntary CLE certification, and the Office will issue final CLE guidelines and specific instructions for making the certification prior to any implementation date.