Overview
On April 18, 2023
the United States Patent and Trademark Office (USPTO) will start issuing Electronic Patent Grants (eGrants).
Under the current paper-laden system and toward the end of the patent prosecution process, a patent applicant receives a Notice of Allowance, pays the Issue Fee, and waits for the USPTO to send out an Issue Notification. The Issue Notification provides a few weeks’ heads up that a patent will issue. The patent applicant is then mailed a bound paper Letters Patent, complete with a cardstock cover and ribbon.
The USPTO will start issuing eGrants on April 18, 2023. Once the patent applicant pays the Issue Fee, the USPTO will process the payment and send out an Issue Notification giving the patent applicant just a few days’ notice before the eGrant will be made available. For a period of time, the USPTO will actually be issuing both eGrants and formal bound Letters Patents.
According to the USPTO, this change in process will reduce paper waste and save nearly $2 million annually in printing and mailing costs, thereby helping the USPTO “go green.” This change also has some people trying to keep from “turning green” with anger. Small companies and independent inventors have voiced opposition to this change, stating the paper bound patents provide ceremonial and sentimental value for their business. Others have expressed their dislike of the shortened timeframe between receiving the Issue Notification and eGrant. A continuation application or continuation-in-part application must be filed before the issuance of the underlying patent. The current process gives an approximately 2 week notice of issuance whereas the new process will give a 1-2 day notice. There has also been concern about whether an eGrant will have a timestamp which could potentially affect co-pendency, infringement, and other time-sensitive issues.
The USPTO has taken these concerns into account. Patent owners can always request a certified cover page or ceremonial paper copy of their patent, for a fee, if desired. Regarding the timeline for filing continuation or continuation-in-part applications, patent applicants need to start considering those options at the time a Notice of Allowance is received. The USPTO has also issued guidance with respect to the time stamp and confirmed that it is only the date that drives the analysis, which is the same as the current practice. These responses by the USPTO have not, however, kept people from posting their eGrant e’rants.
Regardless of whether you support “going green” or are “turning green,” this milestone change is coming and puts the USPTO more in line with many of its foreign counterparts which have been issuing electronic patents for some time now. It also brings this grant process in line with the USPTO’s trademark and service mark registration process, which started issuing electronic Registration Certificates last year. If you have any questions about how this change affects you or your business, or want to know more about obtaining paper bound patents for your matters, please reach out to trusted counsel.
