In a recent press release, the U.S. Patent and Trademark Office (USPTO) announced that, starting on April 18, 2023, the Office would begin issuing electronic patent grants (eGrants) to patent recipients. This process delivers the official copy of patent grants in an electronic format, instead of the previous paper version. The Office will still provide a bound paper version as a ceremonial copy throughout a limited transition period for free, and then for a nominal fee thereafter. This change has important implications for the timing of filing continuing applications, that is, continuation, divisional, and continuation-in-part applications claiming priority to the application that is about to issue.
When Applicants pay the issue fee after receipt of a Notice of Allowance, an Issue Notification follows, informing the Applicant of the patent number and the official issue date. As provided by 35 U.S.C. § 120, continuing applications must be filed "before the patenting or abandonment or termination of proceedings. . ." In other words, continuing applications can be filed up to, and on, the day of the issue date mentioned in the Issue Notification, i.e., the day of patenting. Under the old system, there was a delay of several weeks, usually more than two weeks, between the Issue Notification and the issue date.
With the new system, instead of physically delivering the patent grant by mail to the correspondence address, the USPTO will deliver the patent electronically via Patent Center. The USPTO estimates that Issue Notifications will be available electronically via Patent Center on the Wednesday or Thursday before the Tuesday that patents will issue electronically. The Tuesday after the Issue Notification, the patent will issue and the electronic patent publication will be uploaded on Patent Center. This has the effect of reducing the period of pendency for allowed patent applications by approximately two weeks, thereby narrowing the window of opportunity to file a continuing application, to file Quick Path Information Disclosure Statements (QPIDS), or to withdraw an application from issue.
Applicants should update their procedures to account for the reduced period of post-allowance pendency. Ideally, a continuing application should be filed by the date of paying the issue fee. If that is not possible, it is important to carefully monitor the application file for release of the Issue Notification. Additional information is available in the full Federal Register Notice and the USPTO's eGrants webpage and eGrants FAQS.
If you have any questions about this new process and how it may impact your business, please reach out to MoFo's Patent Strategy + Prosecution team.
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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