In its ongoing efforts to modernize operations, the United States Patent and Trademark Office (USPTO) implemented eGrants for patents beginning in April of 2023.
In switching to eGrants, patent grants will no longer be issued on paper, but in a PDF format. It should be noted that applicants wishing to obtain a paper version of a granted patent can still do so, for a fee.
The new format will look just like the paper version of the documents and will use encrypted certification/validation technology to eliminate, or at least greatly reduce, the risk of fraud. The electronic patent grant will be the official statutory patent grant.
This has a number of benefits to both the USPTO and the patent applicants, but may also have some disadvantages, or at least some major changes for some patentees.
For example, with paper patent grants, there would be a delay of as much as four to six weeks once the patent was issued in the applicant receiving their patents. Under the new system, patent grants are available on the day of issuance. This reduces the amount of time applicants have to wait for the documents, as well as reducing paper usage and mailing costs for the USPTO. On the other hand, paper or ribbon copies will no longer be provided to the applicant, without a fee.
Under both the old paper system and the new eGrant system, there is a period of time between when the issue fees are paid and when the patent actually issues. This is a critical period of time because the patent is still considered to be in a pending status, meaning that follow-on applications, such as continuation, divisional, or continuation-in-part applications, can still be filed with the ability to still claim priority to the parent case. With the old paper system, this period of time was generally about four to six weeks that allowed the processing office format and otherwise prepare the patent for paper printing. However, with the new eGrant system this time period may not always be nearly as long. Currently, the time period between the payment of the Issue fee and the eGrant issuance appears to be about four weeks, but as the new eGrant system is in use for a while, this period may shorten, thereby shortening the length of time the patent is considered pending for the filing of follow-on applications claiming priority to the parent.
Thus, applicants need to be aware that there may, in the future, only be days instead of weeks from the time the Issue fee is paid until the patent is issued. Accordingly, patent practitioners or applicants should try to file follow-on applications at the time of or before payment of the Issue fee, if at all possible. If not, you may run the risk of being unable to file a follow-on application while the parent is still considered pending, thereby losing the ability to claim priority to the parent application.