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Friday Dec 10, 2021

Modernizing how we issue patents and trademark registrations

Blog by Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO

Person typing on a laptop

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. With that in mind, today we are announcing our transition to the electronic issuance of patents and trademark registrations in 2022.

Patents

For patents, we have issued 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.

This change comes with 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 our patent application processing and streamlining of our services. Beginning in 2001, we implemented the electronic filing system for patent applicants and have 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.

Trademarks

While no similar amendment to the trademark rules is necessary, we still believe it is important for the public to have the chance to give us feedback about our transition to only providing digital copies of registration certificates. To that end, we recently issued 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. We anticipate the transition to digital delivery of trademark registration certificates to 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 us to issue trademark registrations 1-2 weeks faster than our current process by discontinuing the printing, assembling, and mailing of paper registration certificates upon issuance. Since we currently issue 6,000-9,000 printed trademark registration certificates per week, this will reduce paper processing to a minimum.

Next steps

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 a $25 fee per copy. On future digital formats, we plan to use a digital seal and electronic Director’s signature to officially authorize the patent or trademark.

By gathering feedback from the public regarding this transition to electronic patents and trademarks, we can fully consider all views as we continue to modernize our processes while continuing our core mission of providing the high-quality patents and trademark registrations our customers have come to expect and deserve from America’s innovation agency.

As always, we look forward to working with our stakeholders to ensure their needs are met, and that American innovation continues to drive our nation, and the world, forward.

Comments:

I am fully on board with electronic TM registration certificates. In fact, the US is one of the last to make the transition.

Posted by Jeanine M Ortt on December 10, 2021 at 10:34 AM EST #

I am very excited for this. Can there also be a way to get electronic certified copies of patent applications emailed or available via Private PAIR? Physical CDs are obsolete.

Posted by Emily Chilson on December 10, 2021 at 10:40 AM EST #

This is a very good decision. Electronic issuance of patents and trademark is a mandatory thing in this era of science and technology. Thanks a lot.

Posted by NFRstream on December 10, 2021 at 10:41 AM EST #

I think this would be a great improvement. It would be much more environmentally friendly -- not only would the USPTO not be mailing hard copies, but also law firms like ours would not need to forward them on by mail to our clients. I like the idea that presentation copies will still be available for a fee, since we do have some clients who really like receiving the ribbon copy. But for the most part I think that applicants will be perfectly happy with a digital version.

Posted by Celia Leber on December 10, 2021 at 10:44 AM EST #

Sure thing, but keeping Physical CDs or paper works also mandatory I think.

Posted by UFC Fan on December 10, 2021 at 10:49 AM EST #

Will it be sent automatically to the emails in the application? I ask because currently registration is the only time we are NOT notified by email. The only way I know we've gotten a registration is the certificate or other alerts I have set up. Everything else comes through.

Posted by Meg Duffy on December 10, 2021 at 11:18 AM EST #

Electronic patent certificates will make my life so much easier!

Posted by Axel Nix on December 10, 2021 at 11:26 AM EST #

Good Plan. A bit overdue - but this will simplify many things.

Posted by James L. Young on December 10, 2021 at 11:29 AM EST #

Digital copies are fine, but I hope they are natively fully searchable, not just the usual pdf images. PDF patent images do not OCR correctly in Acrobat, since acrobat cannot distinguish the two column format from a single column. So it always gets the word order incorrect. (for example, when selecting OCR’d text over multiple lines in the left-hand column, the selection frequently jumps over to the right hand column inappropriately.) If you are issuing patents natively in pdf format, then you can establish the proper word order from the outset. That, in my mind, would be a very nice benefit of issuing patents electronically.

Posted by Warren on December 10, 2021 at 11:43 AM EST #

I like that the Trademark Office is going to digital certificates. The paper ones get crumpled or lost in the mail anyway. If $25 is being charged for a fancy copy to be mailed, maybe the Trademark Office can put it in a cardboard envelope and have Fedex or Amazon deliver it, rather than the Post Office.

Posted by Susan Basko on December 10, 2021 at 11:55 AM EST #

How does one protect the seal and signatures so they won't be stolen or hacked by those who want to issue phony certifications or otherwise use the official material for counterfeit?

Posted by DgX on December 10, 2021 at 12:10 PM EST #

Great. Now make it a "live" document, so that a revoked, lapsed, or expired patent no longer bears indicia of being a patent.

Posted by Mike on December 10, 2021 at 01:02 PM EST #

I fully support this program, particularly as it relates to large entities. It appears, however, that issue fees will not be decreasing. In other words, the Office will be providing fewer services for the same price and upcharging if patentees want the previous level of service. This disproportionately impacts microentities, who benefit the most from ribbon copies. I recommend that the Office waive the surcharge for microentities.

Posted by Bridget Smith on December 10, 2021 at 01:36 PM EST #

If PTO converts to digital certificates, then shouldn't the Applicant also get a $25 discount from paying either the patent issue fee or trademark application fee, respective to each scenario?

Posted by Narek Zohrabyan on December 10, 2021 at 04:53 PM EST #

This shift seems like a sustainable, environmentally-friendly idea that is universally desirable in most instances. But I agree with the earlier comment that the fee for paper copies should be waivable for micro-entities and small entities. The US patent system has always had a special focus on rewarding inventors, and this caveat seems aligned with that philosophy.

Posted by Ted on December 10, 2021 at 06:12 PM EST #

I applaud this decision and it's long overdue. I echo the other comments that the U.S. is one of the last countries to switch to electronic certs. This will save the USPTO a fortune in postage and and us firms too.

Posted by Stacey Kalamaras on December 10, 2021 at 08:33 PM EST #

Good news. The process of receiving will be facilitated. It is good that you saved the paper "presentation copy" and the tape version. For many, obtaining a patent is a great event and pride. How not to hang such a confession on the wall?

Posted by Piromax on December 11, 2021 at 07:20 AM EST #

About time! Paper production, distribution, use and disposal require a large amount of energy and raw materials. It would help to reduce paper waste and pollution. Also, it will reduce additional expenses to owners for mailing the documents. If someone needs to prove original ownership they can request a certification service from the USPTO and provide a certified copy with a seal as necessary. Perhaps this also can be arranged through electronic verification.

Posted by IR on December 11, 2021 at 12:15 PM EST #

Switching to electronic patents makes sense for many large patent applicants, who mostly don't want to be bothered with paper copies. Charging a fee for large entities who want a paper copy may also make sense. But micro entities and small entities often view their patents quite differently. A ribbon copy patent is the most tangible output of a very expensive and time-consuming process. In my experience, micro and small entities are the applicants most likely to want a ribbon copy of their issued patent and least needing to be dissuaded by additional fees at the USPTO. In particular, it's a bit absurd to charge micro-entities an additional $25 fee for the ribbon copy of their patent after the massive investment they've already expended to apply for that patent in the first place.

Posted by David Gosse on December 11, 2021 at 01:04 PM EST #

While no similar amendment to the trademark rules is necessary, I believe it is important for the public to have the chance to give their feedback.

Posted by Super Bowl Now on December 12, 2021 at 02:14 PM EST #

As a trademark attorney for small business clients, many of my clients would prefer to have a certificate with a gold seal for display purposes. If the application fee is not being reduced (even though the customer is receiving fewer services), it should be far less than $25 to obtain an optional certificate, since the current system is clearly not spending that amount on a per-certificate basis to print and mail.

Posted by Karen Boardman on December 12, 2021 at 05:59 PM EST #

This is a very good decision. Electronic issuance of patents and trademark is a mandatory thing in this era of science and technology. Thanks a lot.

Posted by Delwar on December 13, 2021 at 09:01 AM EST #

This makes sense, certainly for companies that receive numerous patents per year. But as a small entity with only a few patents in process, I'd definitely want the presentation copy. So I hope that the $25 isn't an upcharge on top of the existing issuance fee.

Posted by steve on December 13, 2021 at 10:44 AM EST #

How many ribbon copies can be purchased? Does it (they) have to be paid for at a specific time or can it be purchased later?

Posted by Donna Johns on December 13, 2021 at 10:54 AM EST #

Good decision, it would be an excellent news for trademark owner as they will have their registration certificate sooner, also it is good news for the environment as we will be printing less paper.

Posted by Oscar Weber on December 14, 2021 at 04:50 AM EST #

I also support this program, particularly as it relates to large entities. It appears that issue fees will not be decreasing.

Posted by Amy watch TV on December 16, 2021 at 12:26 PM EST #

Very good all in all. This year, some of my certificates ended up in Kansas City and were FedExed to me by a kind, fellow practitioner. This would have prevented that accident from happening. That said, I am curious to hear if all email addresses of record would get the notice of the electronic trademark certificate. In other words, would our clients receive it before we have time to report it?

Posted by NJTrademark on December 16, 2021 at 07:07 PM EST #

Effective plan, Electronic certificates will make my life so better

Posted by nfbdpvt on December 16, 2021 at 11:42 PM EST #

Great idea preferably on a blockchain too so information is immutable. I have designed a similar for Patent Licensing by issuing as NFT so that Patentee can issue NFT (license for their patents) to those who wants to practise their invention. I hope the Director would encourage this and make this as a feature in part of this digital patent or trademark. Ie whenever someone check on this digital patent/trademark, there is a button allowing one to license it (if turn on by the patentee).

Posted by Khai Kwan on December 17, 2021 at 02:59 AM EST #

This is a great idea, however, I think the $25 should be waived for at least microentities. Many would like to have a ribbon copy after the massive investment in obtaining a patent. If the fee is meant to encourage electronic copies, I don't think the USPTO will have an issue as most large entities will prefer electronic copies.

Posted by Jenifer Lake on December 20, 2021 at 09:06 AM EST #

Thank you all for your input on these proposed changes. We invite you to provide any additional feedback on the electronic issuance of trademark registrations by emailing TMFRNotices@uspto.gov with the subject line “Electronic Registration Certificates,” or on the electronic issuance of patents by submitting a formal comment on the notice of public rulemaking, linked to above, by February 14, 2022. As always, we will review and consider all comments and appreciate hearing from you.

Posted by USPTO on December 21, 2021 at 12:57 PM EST #

This is a step in the right direction. In this age of science and technology, electronic patent and trademark issuance is a must.

Posted by ICJobs on December 21, 2021 at 05:47 PM EST #

I applaud this decision and it's long overdue. I echo the other comments that the U.S. is one of the last countries to switch to electronic certs. This will save the USPTO a fortune in postage and us firms too.

Posted by ARI Mond on December 25, 2021 at 04:49 AM EST #

This decision is long overdue, and I commend it. I concur with the other statements that the United States is one of the last countries to use electronic certificates. This will save the USPTO and our firms significant amounts of money on postage. This is an excellent idea; however, I believe the $25 fee should be waived for microentities. Many would prefer to receive a ribbon copy following the substantial expense required to obtain a patent. If the fee is intended to promote electronic copies, I believe the USPTO will have no objections, as the majority of large entities will choose electronic copies.

Posted by chrome extensions Trademark on December 30, 2021 at 04:18 AM EST #

Great article, I have found a new insight through this post. Electronic patent and trademark issuance is a must. Thanks you.

Posted by kronologibayu on January 04, 2022 at 05:12 AM EST #

This is a step in the right direction.

Posted by Ajay Prajapat on January 06, 2022 at 08:37 AM EST #

I figure this would be an incredible improvement. It would be considerably more harmless to the ecosystem - not exclusively would the USPTO not be mailing printed copies, yet in addition law offices like our own would not have to advance them on via mail to our customers. I like the possibility that show duplicates will in any case be accessible for an expense, since we in all actuality do have a few customers who truly like getting the strip duplicate. However, generally I imagine that applicants will be totally happy with an advanced version.

Posted by Pets Helps on January 07, 2022 at 11:01 AM EST #

I think this is a very progressive move in the right direction in regards to helping the planet. Our clients if wanting can still get ribbon copies but most really only want digital. And with that when we receive ribbon copies that clients do not want to store we are storing them instead. I believe as long as the digital ribbon copy can be locked without allowing any malice edits, this is a superb idea. Thank you...

Posted by April Torres on January 07, 2022 at 09:29 PM EST #

I think this is a great idea, but I believe the $25 fee should be waived for micro-entities. Many would like to have a ribbon copy after the massive investment in obtaining a patent. If the fee is meant to encourage electronic copies, I don't think the USPTO will have an issue as most large entities will prefer electronic copies.

Posted by newscutzy on January 09, 2022 at 06:51 AM EST #

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