USPTO To Transition To Electronically Granted Patents In April 2023 | Foley & Lardner LLP
The USPTO will transition from officially issuing patents in paper form to officially issuing patents electronically, starting April 18, 2023. In addition to saving paper, the USPTO predicts the change to electronically issued patents will shorten the time from issue fee payment to grant, reducing application pendency.
The Format Of Electronically Issued Patents
The transition to electronically issued patents was initially announced in December of 2021. As explained in the February 28, 2023 Federal Register Notice, starting April 18, 2023, patents will be issued electronically under a new USPTO digital seal with the Director’s digital signature. According to the Notice, “the digital seal and electronic signature of the Director … will be in conformance with 35 U.S.C. 153, which requires that patents be issued ‘under the seal of the Patent and Trademark Office, and shall be signed by the Director or have [her or] his signature placed thereon and shall be recorded in the Patent and Trademark Office.’” Indeed, “An encrypted digital signature that may be used to validate the electronic patent document as the issued patent will be embedded within the seal.”
Electronically issued patents will be available for download in both public and private views of Patent Center on the issue date, and will have a “cover sheet” that is “nearly identical in appearance to the cover sheets currently used for paper patents,” except for the digital seal and signature.
The Expedited Process Of Electronically Issuing Patents
As stated in the Notice, electronically issued patents will be granted “shortly after the patent number and issue date are assigned, which will result in the reduction of pendency for allowed patent applications.” Patents will continue to be issued on Tuesdays, but instead of sending out Issue Notifications a few weeks in advance, the USPTO expects Issue Notifications to be “available in Patent Center … usually on the Wednesday or Thursday before the patent issues.” This means that applicants will have at most a few days advance notice of the issue date. The USPTO warns:
Applicants 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. 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. See Manual of Patent Examining Procedure (9th ed. Rev. 10.2019) (MPEP) sec. 211.01(b)(I).
The Transition Period
According to the Notice, while the USPTO will start officially issuing patents electronically on April 18, 2023, it will continue to mail a “ceremonial” paper copy “free of charge” for the duration of a “transition period.” The Notice does not state how long the transition period will last.
Availability Of Ceremonial Paper Copies – For A Price
After the transition period ends, “ceremonial” paper copies of granted patents will be available for order for an as-yet unspecified fee (promised to be “nominal”). According to the notice, a “ceremonial paper copy” will be “a copy of the electronically issued patent reminiscent of the paper patents, bound with a cover sheet with both an embossed seal and the signature of the USPTO Director.”
The USPTO notes that “presentation” copies also will continue to be available for a fee (currently $25). As explained in the Notice, “A presentation copy is a certified copy of the first page of an issued patent, and has a unique certification statement with a special ribbon and seal, and is suitable for framing and display.”
More information on this transition to electronically issued U.S. patents is set forth in the February 28, 2023, Federal Register Notice.
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