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USPTO To Propose Paperless Patents

In a Director’s Forum blog post published December 10, 2021, the USPTO announced plans to issue proposed rule changes relating to the format in which U.S. patents are issued, making electronic patents the norm, with something akin to today’s ribboned copies available upon request (and for a nominal fee). Many of you reading this may wonder what took so long, but as with many government agency practices, it turns out there’s a statute that had to be reckoned with before the USPTO could go paperless.

Issue of Patent

Chapter 14 of 35 U.S.C. relates to “Issue of Patent.” 35 USC § 153 provides:

Patents shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon and shall be recorded in the Patent and Trademark Office.

So, before the USPTO could transition to electronic patents, it had to figure out how to issue them “signed by the Director” or with “his signature placed thereon.”

Once that hurdle was overcome, the USPTO had to address 37 CFR § 1.315, entitled “Delivery of patent,” which provides:

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

That’s where the proposed rule changes will come in.

As explained in the blog post, the USPTO will propose to instead “issue the patent electronically”—“with the USPTO seal and the Director’s signature” —via Patent Center and Patent Application Image Retrieval (PAIR)). According to Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, the USPTO believes this change will result in faster issuance, i.e., within one week after the patent number is assigned.

What About Trademarks?

According to the Director’s Blog post, no rule change would be required to implement similar changes for trademark registration certificates, but the USPTO still plans to solicit public feedback on its proposal to replace paper registration certificates with digital versions. Since the USPTO “currently issue[s] 6,000-9,000 printed trademark registration certificates per week,” this change will significantly reduce paper processing and associated costs.

What If I Still Want A Pretty Paper Patent?

The Director’s Blog post reassures stakeholders who may still want paper “presentation copies” of their patents and trademark registration certificates. Specifically, the USPTO contemplates offering presentation copies “with an embossed gold seal and a Director’s signature” for a nominal fee of $25 per copy.

Does this mean the proposed changes will include reducing the issue fee by $25?

I am guessing most stakeholders with large patent portfolios will welcome this change, especially with the option of obtaining presentation copies when warranted. Even now, we have clients who do not want us to forward their ribboned copies, and some for whom we still are holding their patents until their Covid-19 working-from-home status ends.

© 2022 Foley & Lardner LLPNational Law Review, Volume XI, Number 347
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About this Author

Courtenay C. Brinckerhoff, intellectual property  law attorney, Foley & Lardner  Law Firm
Partner

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s...

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