Womble Bond Dickinson
Effective on May 13, 2025, United States Patent and Trademark Office will implement a significant new change to its patent issuing process. This will reduce the time between the issue notification and the patent issuance. According to the USPTO’s notice, the time between the notice of issuance and the actual issuance of the patent will be reduced to two weeks, compared to the current average of about three weeks. The USPTO has been working on modernizing its processes, including adopting electronic patent grants a little over two years ago.
Key impacts for patent holders and applicants
1. Patent Issuance Earlier and Market Entry
The accelerated timeline allows patentees to receive their official grant of patent sooner, enabling them to protect their inventions earlier. This acceleration provides earlier enforceable rights and protection for patented inventions, which can be critical for business planning, investment, and competitive positioning.
2. Adjustments to Filing Strategies for Continuing Applications
Applicants intending to file continuing applications (such as continuation, divisional, or continuation-in-part applications) must be aware that the shortened window between issue notification and issuance requires prompt filing of any continuing application. Particularly, applicants should begin consideration of whether to file a continuing application upon receipt of the Notice of Allowance rather than waiting until closer to issuance.
Moreover, the USPTO recent implemented a Continuing Application Fee (CAF) for continuing applications filed more than six years after their earliest benefit date. The practice of speculatively filing continuing applications may be prohibitive for older families of patents, thus reinforcing a need to consider continuation filings earlier. Impacts on Quick Path Information Disclosure Statements Practice
The Quick Path IDS program (QPIDS), allows submission of prior art references following payment of the issue fees without requiring reopening of prosecution in certain circumstances. In order to submit a QPIDS, a Petition To Withdraw From Issue After Payment Of The Issue Fee is required. According to the MPEP: “
while a petition to withhold an application from issuance may be granted up to one day before the patent issue date, there may not be a way to avoid publication or dissemination if the petition is granted less than three weeks after the issue date.” The window for filing a QPIDS is significantly reduced by the expedited issue, and it is possible that a QPIDS may not be considered if submitted after receiving the issue notification. A continuing application may be warranted based on the relevance of the prior art to ensure patentability over any late-discovered prior art. If a continuation application is required, monitor issue notifications and track all dates. If necessary, consider filing a continuing application with only one claim to meet the copendency requirement and file a preliminary amendment with the full claim set thereafter.[w]Ensure all prior art, especially that from co-pending foreign applications, is filed before payment of the issue fee.
