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James Sherer Comments on Client Questions Post-Election in Law.com and The Recorder Articles

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On April 18, 2023, the U.S. Patent and Trademark Office (PTO) will begin moving away from issuing paper patents and will begin issuing patents electronically as electronic patent grants (eGrants). In addition to reducing paper waste, the PTO states that eGrants will “benefit[] stakeholders by reducing pendency and streamlining the process.”<a href="#_ftn1" id="_ftnref1">[1]</a> According to the PTO, a patent will issue “shortly after the payment of the issue fee.”<a href="#_ftn2" id="_ftnref2">[2]</a> Although the PTO declined to create a fixed time for issuance, it is anticipated that Issue Notifications will be available electronically sometime after the payment of the issue fee, usually on the Wednesday or Thursday before the patent issues, and the patents will be issued on a Tuesday shortly after the patent number is assigned.



An important factor for patent applicants to consider in view of the change to the electronic system is the timing for filing continuation and divisional applications, which appears to be significantly shortened under the new system. In fact, the PTO acknowledges that “applicants will have less time, after the payment of the issue fee, to file continuing applications” and recommends filing continuing applications before payment of the issue fee.<a href="#_ftn3" id="_ftnref3">[3]</a> Continuation and divisional applications must be filed prior to the issuance of the patent, which the Federal Circuit interpreted to mean up to and including the day the patent issues. Under the current paper system, patent applicants have a fairly predictable amount of time to file a continuation or divisional application after paying the issue fee. Once the issue fee is paid, for example, applicants generally have at least a few weeks before the PTO mails an Issue Notification and at least a few additional weeks before the patent’s issuance. Thus, under the current system, patent applicants generally have a month or more after paying the issue fee to file a continuation or divisional application. But once the PTO begins issuing patents electronically, the timeline to file a continuation or divisional application will shorten and may be less predictable. Now, more than ever, patent applicants should consider filing their continuation or divisional applications before or at the time of paying the issue fee so that they are not barred from doing so under the electronic system.



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<a id="_ftn1" href="#_ftnref1">[1]</a> <a href="https://www.uspto.gov/about-us/news-updates/uspto-ushers-new-era-introduction-electronic-patent-grants#:~:text=WASHINGTON%E2%80%94Beginning%20April%2018%2C%202023,grants%20in%20an%20electronic%20format" target="_blank" rel="noreferrer noopener">https://www.uspto.gov/about-us/news-updates/uspto-ushers-new-era-introduction-electronic-patent-grants#:~:text=WASHINGTON%E2%80%94Beginning%20April%2018%2C%202023,grants%20in%20an%20electronic%20format</a>.



<a id="_ftn2" href="#_ftnref2">[2]</a> <a href="https://www.federalregister.gov/documents/2023/02/28/2023-03809/uspto-officially-transitions-to-issuing-electronic-patent-grants-in-2023." target="_blank" rel="noreferrer noopener">https://www.federalregister.gov/documents/2023/02/28/2023-03809/uspto-officially-transitions-to-issuing-electronic-patent-grants-in-2023.</a>



<a href="#_ftnref3" id="_ftn3">[3]</a> Id.

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IP Intelligence Report

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Ronald C. Kern Jr., Ph.D.

Intellectual Property

Patent Litigation

U.S. Electronic Patent Grants and the Effect on the Timing of Filing Continuation and Divisional Patent Applications

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