The End of an Era – The USPTO Goes Paperless – Almost

Did you know that the basis for U.S. patents go all the way back to the U.S. Constitution?  If you didn’t know, now you know:  Article I, Section 8, of the Constitution vests the Federal Government with the power to grant patents:  “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”[1]

It is safe to say that nobody back in 1788, when the Constitution was ratified, foresaw the dawning of the digital era and that – hold your horses – patents would be issued paperless and “delivered” electronically to the patent owner, which is exactly what can happen now, beginning April 18, 2023.[2]  On that day, a new era began for the United States Patent and Trademark Office (the “USPTO”), which will now be issuing electronic patent grants – called “eGrants.”[3]

That’s a long way from the issuance of the first patent on July 31, 1790, to a Mr. Samuel Hopkins of Vermont “for a process of making potash, an ingredient used in fertilization.”[4]  At the time Mr. Hopkins was granted his potash process patent, the USPTO required inventors to provide a physical prototype of their invention.  (One can just imagine the shelves!)  A fire broke out in 1836 in the actual office of the USPTO, which then jettisoned physical requirements and “changed the way it handled its record keeping, assigning numbers to patents and requiring multiple copies of supporting documentation.”[5]

For those sentimentally inclined, the USPTO will still provide a “ceremonial copy [of the actual patent during] a limited transition period, and then for a nominal fee thereafter.”[6]  However, it is the electronic patent certificate that now is the official patent grant, and any paper versions of that grant will be copies or certified copies.[7]

The USPTO estimates the transition to eGrants will significantly reduce the USPTO’s printing and mailing needs and expenses, saving the agency nearly $2 million in annual printing and mailing costs as well as being an environmentally friendly reform all around.[8]  The patent eGrants will also be accessible for viewing, downloading and printing via the “Patent Center,” a website and robust database provided by the USPTO.[9]

Patent information (along with trademark notices) will continue to be published in the USPTO “Official Gazette,” accessible online.[10]  Some of us still remember the days of receiving and slogging through thick printed Official Gazette booklets, stacking up every week!  Now, all that information will be available at your fingertips through the Patent Center.

Note, there are a few things to keep in mind about eGrants for patent applicants:

  • The time between the payment of the patent issue fee and the actual issuance of the patent itself will be reduced considerably, which will substantially reduce the time to file continuation, continuations in part, or divisional applications claiming priority of the patent application.[11]
  • Continuing applications may still be filed, for example if the patent applicant wishes to add information to the patent application file or to make certain changes to the patent application before the application issues to a patent.
  • The time to file a petition to withdraw a patent application from issuance will be reduced.[12]

This new eGrants era will bring patent grants on par with trademark registration certificates, which already are provided electronically to trademark owners.[13]  Much of the work with prosecuting patents is already done electronically, so the USPTO enabling eGrants is a natural development and the right step to streamline the patent process and bring it into this century.

 

This article is intended as a general discussion of these issues only and is not to be considered legal advice or relied upon. For more information, please contact RPJ Associate Nafsika Karavida who counsels clients on employment, intellectual property, corporate and transactional, and cross-border commercial law, or RPJ Counsel Dara L. Onofrio who counsels clients on intellectual property matters with special emphasis on patent prosecution and licensing in numerous fields of science and technology. Ms. Karavida is admitted to practice law in Connecticut and New York, as well as Sweden and the European Union. Ms. Onofrio is admitted to practice law in Connecticut and New York, and before the United States Patent and Trademark Office, the United States District Courts for the Southern and Eastern Districts of New York and the United States Supreme Court.

 

 

[1] https://www.archives.gov/founding-docs/constitution-transcript.

[2] https://www.uspto.gov/about-us/news-updates/uspto-ushers-new-era-introduction-electronic-patent-grants.

[3] Id.

[4] https://www.govinfo.gov/features/anniversary-first-patent.

[5] https://en.wikipedia.org/wiki/1836_U.S._Patent_Office_fire.

[6] See footnote 2, supra.

[7] See footnote 9, infra.

[8] Id.

[9] 88 FR 12560, pp. 12560-12565, retrieved at https://www.federalregister.gov/documents/2023/02/28/2023-03809/uspto-officially-transitions-to-issuing-electronic-patent-grants-in-2023.

[10] Id.

[11] See footnote 9, supra.

[12] Id.

[13] See footnote 2, supra.