USPTO Transitions From Hardcopy Patents
Inventors prize their bound hardcopy patents for both sentimental reasons and because the hardcopy can be useful in negotiation. The USPTO only issues one original “Letters Patent.” If a patent is lost or destroyed, the best the owner can do is obtain a certified copy.
However, as the world transitions from analog to digital, so too does the USPTO. As of April 18, 2023, the USPTO is transitioning to electronic patent grants instead of printing hardcopies, publishing pdf documents, with encrypted validation, including the color coversheet, and any color drawings. The patents will be available for viewing and printing via PatentCenter. The patent will be immediately available on the issue date. Advance copies will no longer be printed.
The process is expected to be fast. After the Issue Fee is paid, the Patent Office will publish an Issue Notification on Patent Center, usually on a Wednesday or a Thursday. The Patent will usually be issued the next Tuesday.
This is good news for those who tend to lose documents! It is also good news for multiple people involved in a patent who each want to have their own copy. The change is intended to streamline the grant process, minimize paper waste, save the Office money on printing and mailing, and reduce the pendency of allowed applications. The USPTO estimates they will save nearly $2 million per year.
During an undetermined transition period, the USPTO will print and mail ceremonial copies of patents without an additional fee. After the transition period, presentation copies, certified copies, and ceremonial copies will be available for purchase. A ceremonial copy is a bound copy of the entire patent with a cover sheet having an embossed seal and the USPTO Director’s signature. A presentation copy is a copy of a patent’s first page with a certification statement, ribbon, and seal, intended for framing and display. A certified copy has a cover sheet with a gold seal and an ink signature and can be submitted to a legal proceeding. Currently, the USPTO requires $25 for a certified copy.
Note, a patentee does not need a hardcopy of a patent to exercise their rights. The patent right exists independently of physical possession of the letters patent. See page 56521 of the September 21, 2004, Federal Register (69 FR 56481), announcing changes to support implementation of the United States Patent and Trademark Office 21st Century Strategic Plan.
As a result of this change, Applicants need to be on guard due to the shortened time between paying the required Issue Fee and granting of the patent. An applicant can file a continuation (child) application having the same priority date as the allowed parent application if the continuation is filed while the parent application is still pending, i.e., before it is granted. These continuation applications allow an applicant to get an examination of subject matter that wasn’t initially examined (such as claims withdrawn due to a restriction). In some situations, applicants file a continuation in part to add subject matter that wasn’t included in the parent application (for example, on discovering an improved modification of the originally disclosed invention). These decisions must be made early to avoid losing the opportunity.
The Patent Office encourages applicants to file any continuation application before the Issue Fee is paid for the parent application. Moreover, the timeframe to file an information disclosure statement (IDS) through the Quick Path Information Disclosure Statement (QPIDS) program will be similarly abbreviated.
Unfortunately, issue fees will not be reduced due to this change. The USPTO is required by the America Invents Act and the SUCCESS Act to set or adjust fees to recover aggregate estimated costs and cannot adjust a fee for specific costs that may change.
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