USPTO to Offer Paperless Patents | Foley & Lardner LLP

By on December 14, 2021 0


In a Directors Forum blog post published on December 10, 2021, the USPTO announced its intention to publish proposed changes to the rules relating to the format in which U.S. patents are granted, making electronic patents the standard, with some something akin to today’s taped copies available on request (and for a small fee). Many of you reading this may wonder what took so long, but as with many government agency practices, it turns out that there is a law to be reckoned with before the USPTO could go paperless.

Grant of the patent

Chapter 14 of 35 USC relates to the “grant of the patent”. 35 USC § 153 provides:

Patents shall be issued in the name of the United States of America, under the seal of the Office of Patents and Trademarks, and shall be signed by or be signed by the Director and shall be registered with the Office of Patents and Trademarks.

So before the USPTO could move on to electronic patents, it had to figure out how to issue them “signed by the director” or with “his signature on them.”

Once this obstacle was overcome, the USPTO had to deal with 37 CFR § 1.315, entitled “Delivery of patent”, which provides:

The patent will be delivered or mailed upon issuance to the registered correspondence address.

This is where the proposed rule changes will come into play.

As explained in the blog post, the USPTO will instead offer to “grant the patent electronically” – “with the seal of the USPTO and the signature of the director” – via the Patent Center and Retrieval of patent application images (PAIR)). According to Drew Hirshfeld, serving as the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, the USPTO believes this change will result in faster issuance, that is to say., within one week of the granting of the patent number.

What about registered trademarks?

According to the director’s blog, no rule changes would be needed to implement similar changes to trademark registration certificates, but the USPTO still plans to seek public comment on its proposal to replace the trademark certificates. paper recording by digital versions. Since the USPTO “currently publishes[s] 6,000-9,000 trademark registration certificates printed per week ”, this change will significantly reduce paper handling and associated costs.

What if I still want a nice paper patent?

the The director’s blog reassures stakeholders who may still want paper “show copies” of their patents and trademark registration certificates. Specifically, the USPTO plans to offer presentation copies “with an embossed gold seal and director’s signature” for a nominal fee of $ 25 per copy.

Does that mean that the proposed changes will include a reduction in issuance fees of $ 25?

I guess most stakeholders with large patent portfolios will welcome this change, especially with the ability to get presentation copies when warranted. Even now, we have clients who don’t want us to forward their taped copies to them, and some for whom we still hold their patents until their Covid-19 telecommuting status ends.

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