In less than 2 weeks, on 18 April 2023, the USPTO will switch to eGrants – meaning that the official statutory patent grant in the US will be an electronic version with a new digital USPTO seal and a digital signature of the USPTO Director vs. the long-standing official paper copy of a US issued patent, bound with a cover sheet and an embossed seal, and having the signature of the USPTO Director.
A few considerations with the change:
- Initially, the paper copy will continue to be mailed as a ceremonial / unofficial copy during an unspecified transition period. Thereafter, the ceremonial paper copy will only be available and sent upon payment of a fee. If you do not wish to receive the ceremonial / unofficial paper copy of the US patent during the transition period, please let your responsible attorney know.
- The payment of any US Issue Fees going forward will result in the patent being issued in the new electronic format.
- Unlike the past where only the patent owner typically held a paper copy of the official statutory patent grant, any member of the public will now be able to access and print off the official statutory patent grant from the electronic format.
- US patents will continue to issue on a Tuesday under the new format.
- US patents are expected to issue more quickly in the new electronic format upon payment of the Issue Fee. Accordingly, there may not be the typical 3-6 weeks after payment of the Issue Fee to decide on and/or file US continuation, CIP, or divisional applications, but rather merely a few days (e.g., the first Tuesday following payment of the Issue Fee) to a couple weeks. The average time from payment of the Issue Fee to issuance of the electronic patent grant remains to be seen.
- In view of the above considerations, it is highly recommended that all patent applicants should make decisions on whether to file and/or file any US continuation, CIP, and divisional applications claiming priority directly from the allowed application by the date of the payment of the Issue Fee.
If you have any questions on the new eGrants (US electronic patents), please do not hesitate to contact Mark Scott or a member of our US IP Team.