The US Patent and Trademark Office ushers in a new era with the announcement of switching to electronic patents from April 18, 2023, replacing the conventional physical documents with an embossed seal and logo. The "ribbon copies" will now be replaced with the issuance of patents electronically under a new digital USPTO seal and digital signature from the USPTO Director. This in turn will expedite the processing, reduce cost for all parties and foster a green economy by reducing paper waste, as explained in the Federal register Notice issued on Feb 28, 2023.
The Key Take Aways from the Order:
- Beginning from April 18, 2023, the USPTO will issue electronic Letters Patent which will be available for download in Patent Centre.
- During the transition period, the USPTO will mail a "Ceremonial Copy" of the Letters Patent" which is similar to the paper patents.
- After the transition period, the USPTO will no longer mail a ceremonial copy by default, but it will be available for purchase at a "nominal" fee.
- Presentation copies of the Letters Patent will be available for purchase, which will have a unique certification statement, a special ribbon, and seal suitable for display. Additionally, certified copies of the Letters Patent will also be available for use in legal proceedings.
- The adoption of eGrants is expected to reduce the duration between the issue fee payment and the granting of a patent.
BACKGROUND
The shift towards electronic patents was initially announced in December 2021. On August 1, 2022, the USPTO had replaced the legacy Public Patent Application Information Retrieval tool (Public PAIR) with Patent Center for electronic filing and management of patent applications. In order to implement electronic patent issuance, the USPTO has rescinded and reserved the provision37 CFR 1.315, which stipulates that "The patent will be delivered or mailed upon issuance to the correspondence address of record"owing to the shift towards electronic issuance of patents, as outlined in the Federal Register Notice.
Historically, under the paper patent issuance process, the USPTO was physically delivering the patent grant by mailing it to the correspondence address, several weeks after the Issue Notification. This existing practice will be discontinued, as theUSPTO will issue the patent electronically via Patent Center employing a new USPTO digital seal along with the Director's digital signature in conformance with 35. U.S.C. 153, which mandates 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.'
Electronic patents will be downloadable in both public and private views of Patent Center immediately on the day of issuance. They will have a cover sheet that looks identical to the current cover sheets used for paper patents, except for the digital seal and signature.
It is pertinent to note that the patentees may exercise the legal rights granted by the patent without physical possession of the patent because the patent right exists independently of the physical possession of the patent. The USPTO will continue to publish detailed patent information in the Official Gazette and make it available on their website on the day of issue. Additionally, patent holders can access electronic copies of their patents through the Patent Center and print them at no extra cost.
In pursuance of its objective to streamline the patent delivery processes and to achieve complete "beginning to end electronic processing of patent related submissions" the USPTO On March 2, 2023, issued a final rule requiring the patent owners to file PTE applications, interim PTE applications, and any related submissions to be submitted electronically. The new requirements set to take effect on May 1, 2023 with the objective to minimize paper handling.
The Transition Period:
To facilitate the transition to electronic patent issuance, patent holders will have access to the eGrant official copy in the USPTO Patent Center. During the transition period, patent awardees will receive the bound paper version of the Letters patent as a "ceremonial copy" which resembles the paper patents. After the transition period, duration of which is not determined now, patent awardees can request for certified and presentation copies for a nominal fee from the USPTO's certified copy center, moreover, the Patent Center will allow unlimited printing of eGrants at the requester's expense.
Anticipated Benefits of the Adoption of eGrants:
The anticipated benefits of adopting eGrants can be summarized as:
- Minimize the paper waste as the eGrant process decreases the USPTO's printing needs.
- Reduce the patent pendency with the patent being available to applicants and the public approximately two weeks sooner.
- With the streamlined process, duration between the issue fee payment and the granting of a patent is reduced. However, this would also mean that there would be less time for applicants to file continuing applications and requests to withdraw an application after paying the issue fee. It is therefore advised to submit any such applications as soon as possible after paying the issue fee.
- Improve efficiency and potentially saving $2 million in annual printing and mailing costs of the agency.
Suggestions and Criticisms:
The USPTO received certain suggestions and criticisms in regard to the implementation of the electronic-only patent grants. Some pointed that small businesses and independent inventors attach sentimental value to paper-bound copies that cannot be replicated by electronic documents obtained from the internet and hence applicants should be provided with the option to have the patent issued electronically or physically in paper. Some critiques argue that the bound printed patent is a powerful tool in negotiation and potential litigation with competitors. The office also received suggestions that due to the cost savings of implementing electronic patent issuance, the bound paper copy should be offered free of charge or subject to small and micro entity discounts. Yet others noted that the time between the Issue Notification and patent issuance should not be shortened because it leaves too little time to determine a continuation filing strategy.
CONCLUSION
In conclusion, the USPTO's decision to shift towards electronic patent grants and filing requirements is a significant step towards sustainability and efficiency. While this transition may pose some challenges for certain individuals and businesses, it ultimately streamlines the patent application process and reduces the environmental impact of printing and distributing paper documents.
Earlier, in April of 2021, the Canadian Intellectual Property Office (CIPO) also launched electronic patent issuance, enabling the clients who have been awarded a Canadian patent to acquire their documents in electronic format, in lieu of obtaining a hard copy. The USPTO already provides electronic trademark registration certificates to its trademark owners. EPO also launched its electronic patent issuance service where, the Proprietors or representatives will be able to download the patent grant certificates from their Mailbox which as they put it, "will allow for fast and secure retrieval of certificates and will contribute to the EPO's sustainability goals by reducing the use of paper".
The electronic patent issuance process is also expected to result in the reduction of pendency for patent applications simultaneously laying another milestone towards modernisation and innovation. To sum up, as the world continues to prioritize sustainability and technology advancements, it is essential for organizations like the USPTO to embrace change and adapt to the needs of their stakeholders.
META TITLE
USPTO Announces Transition To Electronically Granted Patents In April 2023
META DESCRIPTION
'The USPTO is set to move towards issuing electronic patent grants (eGrants), requiring electronic filing of Patent Term Extension (PTE) applications from April 18, 2023. During the transitional period, ceremonial paper versions of patent grants will be provided. After the transitional period there will be a small fee for obtaining the ceremonial paper versions.'
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