Over the past few years, the U.S. Patent and Trademark Office has worked towards reducing the duration of time between filing a patent application and either abandonment or issuance of the application, otherwise known as “patent pendency.” Various measures included hiring more examiners and changing the criteria with which examiners are evaluated.1 In an effort to further maximize the Office’s efficiency, the USPTO is also experimenting with technological solutions, such as the potential use of artificial intelligence tools to assist examiners with prior art searches and paperless electronic patent grants.2
In an effort to reduce waste, paper patents will no longer be issued and mailed to the correspondence address of record. Effective April 18, 2023, the USPTO will issue electronic patent grants, or eGrants, through Patent Center.3 The electronic filing and management system includes patent document viewing, allowing applicants and the public to effortlessly view and print patent grants upon issuance.
There will be a transition period in which the USPTO will provide a ceremonial, paper copy of the electronic patent grant to the correspondence address of record. However, the electronic, and not the paper grant, is the official statutory patent grant, during this transitional period. After the transition period, paper grants will remain available if desired for a nominal fee.4
Patentees should also note that Certificates of Correction and Reexamination Certificates will not be issued electronically at this time.
eGrants have numerous benefits, including easy access on the day of issue to the patentee and the public as a certified PDF of the patent. The move towards electronic grants is also expected to reduce the time to issuance after payment of the issue fee by up to two weeks.5 This reduction in patent pendency allows for a slightly longer timeframe for patent enforcement, as the twenty-year term of an issued patent begins at the effective filing date of the application. A reduced pendency may make it easier for applicants to secure venture capital or angel funding; in environments where technology evolves quickly, applicants may better avoid their patented subject matter being rendered obsolete.6 Of course, in some technology fields (e.g., pharmaceuticals) expedited post-allowance processing may reduce valuable patent term adjustment.
Not to be missed as part of this new initiative is that the USPTO is getting greener and saving money. Specifically, the eGrant process significantly decreases the Office’s printing and mailing needs, which meets a goal of becoming more environmentally friendly. Furthermore, it is estimated that no longer printing and mailing every patent will reduce costs by up to $2 million.7
Overall, applicants have a lot to look forward to, with the switch from paper to eGrants. Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, observed: “by issuing eGrants, we’re making considerable strides toward more environmentally-conscious operations at the USPTO. Providing 21st century service to our stakeholders means shifting our processes to reflect 21st century policies. The eGrantprocess not only minimizes paper waste, but it also benefits stakeholders by reducing pendency and streamlining the process. It’s a win-win for the agency and for our customers.”
1 Joshua D. Schmid, USPTO Getting Faster: How to Control the Pace of Patent Prosecution in a More Efficient Patent System, IMAGINE THAT IP LAW BLOG (Mar. 14, 2022), https://www.vklaw.com/ImagineThatIPLawBlog/uspto-getting-faster-how-to-control-the-pace-of.
2 Id.
3 eGrants, USPTO (Feb. 28, 2023), https://www.uspto.gov/patents/apply/patent-center/egrants?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=.
4 USPTO ushers in new era with introduction of electronic patent grants, USPTO (Feb. 27, 2023), https://www.uspto.gov/about-us/news-updates/uspto-ushers-new-era-introduction-electronic-patent-grants.
5 Supra note 1.
6 Supra note 1.
7 Supra note 4.
