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Five Things to Know about Electronic U.S. Patents Available as of April 18, 2023 Five Things to Know about Electronic U.S. Patents Available as of April 18, 2023

Five Things to Know about Electronic U.S. Patents Available as of April 18, 2023

Starting on April 18, 2023, the United States Patent and Trademark Office (USPTO) will issue letters patents electronically. With this change, the USPTO follows implementation of electronic grants in other jurisdictions such as Australia, China, Canada, and the European Patent Office. In addition to eventually simplifying recordkeeping, the transition to electronic grants has some strategic implications of which patent applicants should be aware.

1. Electronic letters patents will be almost identical to current letters patents.

According to the Federal Register Notice implementing this change, digital letters patents will be issued under a digital seal bearing the USPTO director’s signature. While currently only the patentee receives a hard copy of the letters patent, the electronic letters patent will be publicly available via Patent Center. Like hard copy letters patents, the electronic letters patent will include the cover sheet bearing the USPTO digital seal, the front page, drawings, specification, and claims. “The electronic patent grant cover sheet will be nearly identical in appearance to the cover sheets currently used for paper patents.” [1] 

2. For the time being, electronic grants do not alleviate the need for paper records.

Implementation of electronic grants does not mean patentees can fully transition to paperless patent records. For an unspecified transition period, patentees will receive “a paper copy of the electronic patent grant as a courtesy ceremonial copy” and it is still possible to order such copies. [2] Certificate of corrections will continue to be issued by mail to the correspondence address of record. [3] Certified copies of as-filed U.S. applications will also continue to be only available in paper or on a CD-ROM. [4] 

3. Patents will grant much faster. 

Currently, electronic capture of the information needed for the letters patent begins shortly after mailing of the Notice of the Allowance. After issue fee payment, the USPTO mails an Issue Notification “several weeks prior to the issue date to inform the applicant of the patent number and issue date.” The patent publishes in the USPTO’s Official Gazette, a copy of the patent is available on the USPTO’s website, and the patentee receives the original. [5]

The electronic patent issuance process will result in patents granting much faster. The USPTO will issue digital patents shortly after assigning the patent number and issue date thereby “result[ing] in the reduction of pendency for allowed patent applications.” [6] As with current letters patents, digital patents will issue on Tuesdays. “Issue Notifications will be available electronically via Patent Center after the payment of the issue fee, usually on the Wednesday or Thursday before the patent issues.” [7] Thus, patents will grant within two or three business days of the Issue Notification. 

4. Pending applications will require diligent monitoring.

Due to the abbreviated period between issue notification and grant, patent applicants will have to be extra diligent with monitoring prior art and developing strategies for filing continuation or divisional applications. The USPTO cautions that:
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. [8]

Furthermore, it will be difficult to file a 312 Amendment after issue fee payment. 

Thus, the new digital patent regime puts added emphasis on the post-allowance review. Prior to issue fee payment, patent applicants should now check if additional prior art will need to be cited, or any corrections to the specification are necessary. A decision to file a continuation/divisional application should also be made prior to issue fee payment. Digital patents will not include an issue time, thereby still allowing filing of continuation/divisional applications on the issue day. [9]

 5. Special strategic considerations regarding biotech/pharma patents.

By the USPTO’s own admission, digital patents will result in a “reduction of pendency.” [10] Currently, patents issue several weeks after the mailing of the issue notification. In contrast, digital patents will issue approximately two or three business days after allowance. For patents subject to “B” delay, where the USPTO fails to issue a patent within three years after the actual filing date, [11] digital letters patent has the potential to significantly reduce the amount of patent term adjustment that may accrue. To maximize patent term adjustment for patents with a greater than three-year pendency, the issue fee will need to be paid on the actual due date.

[1] USPTO Officially Transitions to Issuing Electronic Patent Grants in 2023, 88 Fed. Reg. 12560, 12560-12561 (Feb. 28, 2023).
[2] Id. at 12560.
[3] 12564
[4] Id. 
[5] Id. at 12561.
[6] Id. at 12561.
[7] Id.
[8] Id. at 12561.
[9] Id. at 12563
[10] Id. at 12561.
[11] 35 U.S.C. § 154(b)(1)(B)

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.
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