Effective April 18, 2023, the U.S. Patent and Trademark Office (USPTO) will begin issuing patent grants electronically.

Here is what that means:

• Patents will issue much more rapidly (such as just a few days) from the date the issue fee is paid.
• The USPTO will phase out the mailing of a paper ceremonial copy (ribbon copy) of a U.S. patent.
• After a transition period, the ribbon copy will be available for a fee.
• Issue notifications are expected to be available on the Wednesday or Thursday after payment of the issue fee – in advance of patent issuance on the following Tuesday.

Expedited Time Frame for Filing Continuing Applications

Continuing applications such as a continuation (CON) or divisional (DIV) must be filed before patent issuance. With the time frame between issue fee payment and patent issuance being reduced from about two to four weeks down to just a few days, applicants will need to have a decision ready for filing a CON and/or DIV. Under best practices, the CON or DIV should be filed on the same day the issue fee is paid. In-house counsel and business leaders should discuss a filing strategy after receiving a Notice of Allowance, so these decisions are ready within this expedited time frame. Typically, a DIV may be filed if the Examiner issued and maintained a restriction requirement during prosecution of a parent case. Consideration should be given to authorizing in advance of the Notice of Allowance, the filing of a DIV on restricted claims the Examiner did not rejoin. A CON may be filed to pursue additional claim scope if supported by the specification as filed in the parent case. If applicants are unsure whether to file a continuing application, a safe bet is to file a CON at the time of issue fee payment without paying the application fees.

Quick Path Information Disclosure Statement (QPIDS) Practice

Typically when a Notice of Allowance is issued, an applicant should review the case to determine if any references were inadvertently not cited to the USPTO. The best practice remains to submit any such references in an IDS on or before payment of the issue fee. However, the USPTO's QPIDS program allows an applicant to submit one or more references in an Information Disclosure Statement (IDS) after payment of the issue fee for expedited processing, if the applicant can certify that the references were first known to the applicant within the prior three months. Under electronic patent grants, the time frame for filing a QPIDS request will be significantly shortened.

IDS Practice for Potentially Relevant References Known For More Than Three Months

If one or more references are more than three months old, and thus would not qualify for the QPIDS program, it is necessary to reopen prosecution by filing a Request for Continued Examination (RCE) to have these references considered. Under electronic patent grants, the time frame will be shorter. Therefore, it becomes important to conduct a complete review of known references before paying the issue fee. Once the issue fee is paid, it may be necessary to file a petition to withdraw from issue. The time to do so will become very limited by the expedited patent issuance, though.

Shortened Pendency Could Impact Patent Term Adjustment (PTA)

Under the patent rules governing patent term adjustment, USPTO delays may supplement the patent term of an issued U.S. patent. Under 37 CFR 1.702(a), the USPTO is required to issue a patent within four months of the date on which the issue fee was paid. This time frame is rarely exceeded. However, the USPTO does frequently exceed the three-year overall patent pendency as prescribed by 37 CFR 1.702(b). Therefore, for applicants who are expecting a significant award of PTA, it may be beneficial to pay the issue fee before April 18, 2023 in order to continue to accrue PTA.

Ribbon Copy Available to Applicant For a Fee

According to the USPTO, after expiration of a transition period, a ribbon copy will no longer be automatically mailed to the applicant. However, for a "nominal fee," an applicant may still receive the ribbon copy by mail. This may be welcome news to inventors who enjoy receiving the paper ceremonial copy as a memento. For many organizations, the absence of a paper ribbon copy being regularly mailed will provide relief from the burden of storage requirements.

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