The US Patent and Trademark Office (USPTO) has announced a proposed rule to implement electronic patent issuance. The proposed rule looks to abolish the practice of mailing issued patents to a patentee opting for simply issuing the patent electronically.
Such a rule change was perhaps inevitable as the world moves from paper to fully digital. The current working from home arrangements in place for many may have only accelerated this transition. Additionally, the USPTO is not the first intellectual property office to move to an electronic-only patent grant certificate. The Chinese IP office stopped issuing paper patent certificates in March 2020.
As stated in a blog post from the USPTO's leadership the proposed practice will purportedly benefit patentees as the new process will reduce the pendency of every issued patent by two weeks. However, there is an important side effect of this reduced time frame.
Generally in US patent practice once an Examiner deems a patent application suitable for grant the Examiner issues a Notice of Allowance which sets a deadline for payment of an issue fee. Once paid, an issue notification is sent which states the patent number and the date of issue. There may be some time between these two communications. For example, the issue notification for US Patent No 11,139,690 B2 was communicated on 15 September 2021 and it set a patent grant date of 5 October 2021, approximately 3 weeks later.
Under the proposed new practice, this timeline would be reduced to 1 week.
The US allows for subsequent continuation or continuation-in-part ("continuation") applications to be filed so long as a patent application is pending, i.e. before the patent application has been granted or abandoned. Such continuation applications are commercially valuable as they allow a patentee to hold a patent for their invention to secure investment, and also a pending application that may be used to pursue a potential infringer.
Reducing the pendency of a granted patent reduces the amount of time a business has to make a decision regarding filing a continuation application.
The lesson here is simple: file early, preferably before paying the final fee or risk losing the chance to file at all. As the saying goes, "Time Waits for No One".
This new process would result in electronic patent issuance under the USPTO seal and with the Director’s signature within one week, after the patent number is assigned, reducing the pendency of every issued patent application by approximately two weeks.