Potential Impacts and Benefits of New Proposed Electronic Patent Issuance

Intellectual Property

On December 15, 2021, the United States Patent and Trademark Office (USPTO) proposed a change to the Rules of Practice in Patent Cases (37 CFR part 1) to implement electronic patent issuance. Rather than issuing patents on paper, the USPTO has proposed removing Rule 315 (37 CFR § 1.315) and issuing patents electronically through its patent document systems. Similarly, the USPTO has proposed electronic issuance of trademark registration certificates, although a rule change is not required for this process to be implemented.

Under current patent issuance procedures, data in a patent to be issued and printed is electronically captured, the patent number and issue date are assigned, and the paper patent (sometimes called the Ribbon Copy because of the gold seal and red ribbon affixed to the front) is then prepared and mailed to the patentee, usually on the issue date. The process typically takes three weeks from the assignment of the patent number and issue date until the patent is mailed to the patentee. However, under the proposed electronic patent issuance process, the patent would be issued electronically under the USPTO seal and with the Director’s signature within one week after the patent number and issue date are assigned.

While this proposed change would reduce the pendency of every issued patent application by about two weeks, it also shortens the window for filings after the issue fee. Specifically, with a shorter window between payment of the issue fee and issuance of the patent, the applicant will have less time to file continuing applications, Quick Path Information Disclosure Statements (QPIDS), or petitions to withdraw the application from issue. Accordingly, while the current best practice is to file these submissions as soon as possible, including filing continuation applications before or with the payment of the issue fee, it will become even more critical if this rule is implemented.

Although the reduction in paper would be a welcome change to many clients, especially those with large portfolios that require storage space for all of those Ribbon Copies or those still (or permanently) working from home, some may be disheartened by the lack of a tangible paper patent. Those copies, complete with an embossed gold seal, may still be available through the USPTO for a nominal fee.

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