USPTO unveils digital patent, trademark certs from next year
The US Patent and Trademark Office (USPTO) has announced plans to issue patent and trademark registration certificates digitally from 2022 onwards.
Acting director Drew Hirshfeld confirmed the development in a blog post on Friday, December 10.
“Like so many other service agencies and organisations, 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 IP,” he wrote.
If the transition is approved and finalised, customers will still be able to order paper “presentation copies” of issued patents and trademark registration certificates with an embossed gold seal and a director’s signature, for a $25 fee per copy.
The USPTO plans to issue a notice of proposed rulemaking to seek public feedback on its 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”.
According to 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 through its patent center and patent application image retrieval system. Patentees would also be able to download and print their electronically issued patents through these systems.
Hirshfeld wrote that this change would herald 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.”
According to the acting director, the changes represent another step towards the full digitisation of the office’s patent application processing services. “Beginning in 2001, we implemented the electronic filing system for patent applicants and have since launched numerous initiatives to provide high-quality services...” he wrote.
He added that while similar formal amendments to the trademark rules were not necessary, the office would still provide the public with a chance to offer feedback about the planned transition to digitalisation.
“We 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. We anticipate the transition to digital delivery of trademark registration certificates to begin in the spring of 2022,” he wrote.
And similarly to patents, he noted that this new electronic process would benefit trademark owners by providing a more accessible and timely registration certificate—one that can be viewed, downloaded, and printed.
The post stated that the planned change will allow the USPTO to issue trademark registrations 1-2 weeks faster than the current process allows 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,” wrote Hirshfeld.
The announcement was broadly welcomed by IP attorneys who left comments relating to the blog post on the USPTO site. According to Celia Leber, founder of Leber Law, the change will mark a great improvement. “It would be much more environmentally friendly—not only will the USPTO not be mailing hard copies, but also law firms like ours will not need to forward them 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,” she concluded.
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