Summary: The United States Patent and Trademark Office (USPTO) has accelerated the patent issuance timeline due to modernization efforts, which include publishing electronic patent grants (eGrants) via the USPTO’s Patent Center and eliminating redundancies. Starting May 13, the average time between the date of receipt of the Issue Notification and the Issue Date will be reduced from approximately three weeks to approximately one week.
Impact and Considerations for Clients:
- Earlier Protection: The shortened time between the date of receipt of the Issue Notification and the Issue Date means that clients will receive earlier patent protection for their innovations.
- Continuing Applications: To meet the co-pendency requirement, clients must file continuing applications (e.g., continuation, divisional, or continuation-in-part applications) before their parent applications are issued or abandoned. Under this accelerated patent issuance timeline, care should be taken to ensure that continuing applications are timely filed in accordance with the co-pendency requirement.
- Potential Reduction in Post-Allowance Information Disclosure Statement (IDS) Filings: Sometimes, relevant references to an allowed patent application are found after the issue fee is paid but before the Issue Date. This typically occurs during the examination of non-U.S. counterpart patent applications. If these references affect patentability, they must be cited before the Issue Date, either by reopening prosecution and filing an IDS or by using the Quick Path IDS (QPIDS) program. Shortening the time between the date of receipt of the Issue Notification and the Issue Date can reduce the chance of discovering new references before issuance, thus decreasing the number of post-allowance IDS filings.
- e-Office Action Program: Applicants who have opted out of the USPTO’s e-Office Action program should be aware that the Issue Date may occur even before the date of receipt of the Issue Notification.
Recommendations:
- Be aware of the effective date of May 13 for the accelerated patent issuance timeline.
- File any continuing applications on or before the date of issue fee payment to ensure compliance with the co-pendency requirement.
- Regularly monitor the USPTO’s Patent Center for status updates on your pending applications, particularly if you are not participating in the e-Office Action program.
