USPTO moves to electronically granted patents
On December 15, 2021, the United States Patent and Trademark Office (USPTO) proposed a rule to primarily publish granted patents electronically and cease to publish a paper copy of the patent as a matter of course (see 86 FR 71209). . (An official printed copy can still be obtained by paying an additional fee after issuance.) When a patent is electronically published, it immediately becomes available through the USPTO’s electric document viewing system (e.g., Public and Private Pair, USPTO Patent Full-Text and Image Database, etc.). This rule will also likely apply to other issue-adjacent events (e.g., reexamination certificates, certificates of correction, etc.)
USPTO timeline for issuing patents to shrink to 4-5 weeks
After an applicant pays the issues fee, the USPTO performs final processing of the application and generates an Issue Notification assigning a patent number and a grant date. Typically, this process takes about three or four weeks, although thattime period is not set in stone. As the USPTO strives to be more efficient in its issuance practice this time period may shrink. Traditionally, the Issue Notification sets the grant date to three weeks after the date of the Issue Notification. However, under the proposed rule, patents will be issued about one week after the patent number is assigned. This means that the time between paying the issue fee and the patent issuing shrinks from six or seven weeks to four or five weeks.
Patent applicants will have less time to file a continuing application
This change is likely a net positive for applicants because a faster issuance means that they may exercise the legal rights granted by the patent sooner. However, one important consequence of this proposed rule is that applicants will have less time to consider whether to file a continuing application (or, e.g., a continuation, continuation-in-part or divisional application). While the best practice has always been to file a continuation application concurrently with paying the issue fee, under the proposed rule, filing a continuation at the time of paying the issue fee becomes more imperative.
As the USPTO strives to reduce the time between paying the issue fee and issuing the patent, applicants will need to make the decision of whether to file a continuation as soon as possible after receiving a Notice of Allowance. Ideally, communications from the applicant’s attorney or agent notifying them of receipt of a Notice of Allowance will also request instructions on whether to file a continuation application with enough notice to be able to prepare one to be filed with payment of the issue fee.
Additionally, while most applicants, through their attorney or agent, are enrolled in the USPTO’s electronic notification system, all applicants should be so enrolled. Under the electronic issuance system, the USPTO envisions that there are some situations that, for applicants that receive notifications through standard mail, the patent will issue before the applicant receives the Issue Notification. To avoid this situation, applicants should verify that they are enrolled.