The U.S. Patent and Trademark Office (USPTO) announced on December 10 a plan to transition to electronically issued patents and trademark registrations in 2022.
"Like so many other service agencies and organizations, it is imperative that our business practices evolve to meet the needs of inventors and entrepreneurs who look to our agency to help safeguard their valued intellectual property," Drew Hirshfeld, acting director of the USPTO, wrote in a Director's Forum blog post that outlined the new plan and invited stakeholder feedback.
For patents, USPTO will soon be issuing a notice of proposed rulemaking (NPRM) to seek public feedback on our proposal to revise the rules of practice to issue patents electronically. Under the current rule (37 CFR 1.315), the USPTO is required to deliver or mail a patent “upon issuance to the correspondence address of record.” Under the proposed changes, the USPTO would no longer physically deliver the patent by mailing it to the correspondence address, but would issue the patent electronically via our patent document viewing systems (i.e., Patent Center and Patent Application Image Retrieval (PAIR)). Patentees would also be able to download and print their electronically issued patents through these systems.
USPTO expects this change to have many benefits for patent owners. For example, the new process will result in electronic patent issuance with the USPTO seal and the Director’s signature within one week after the patent number is assigned, reducing the pendency of every issued patent application by approximately two weeks.
The proposed changes represent another step toward the full digitization of the patent application process and streamlining of USPTO services. Beginning in 2001, the office implemented the electronic filing system for patent applicants and has since launched numerous initiatives to provide high-quality services, including the Image File Wrapper system, the eOffice Action program, Public/Private PAIR, and Patent Center, among others.
While no similar amendment to the trademark rules is necessary, USPTO believes it is important for the public to have the chance to provide feedback about the transition to only providing digital copies of registration certificates. To that end, the office will also soon be issuing a public request for comments on replacing paper registration certificates with digital versions. This change reflects a strong preference expressed to us by our trademark community. USPTO anticipates the transition to digital delivery of trademark registration certificates will begin in the spring of 2022.
And similarly to patents, this new electronic process will benefit trademark owners by providing a more accessible and timely registration certificate – one they will be able to view, download, and print a complete copy of at their leisure. This change will also allow trademark registrations to be issued one to two weeks faster than the current process by discontinuing the printing, assembling, and mailing of paper registration certificates upon issuance. Since USPTO currently issues 6,000-9,000 printed trademark registration certificates per week, this will reduce paper processing to a minimum.
Once the transition is complete, for customers who wish to continue to receive paper “presentation copies” of issued patents and trademark registration certificates with an embossed gold seal and a Director’s signature, that option will still be available for $25 per copy. Future digital formats are expected to use a digital seal and electronic Director’s signature to officially authorize the patent or trademark.