eGrants and Quick Issuances

by Dennis Crouch

Later this month the USPTO will transition to electronic patent grants or eGrants.  This primarily a cost-savings mechanism, although it saves some paper too.  Going forward, patentees will be able to obtain a paper ceremonial copy for a $25 fee.

This result does not have a direct major impact on patent practice, but as part of the change, the USPTO is issuing patents at a quicker pace following the issue fee.  That issue date is important because it is the final day for filing a follow-on application claiming priority.

Best Practices: With the compressed issuance timeline, a growing number of patent practitioners are moving to a standard practice of only filing the issue fee once a firm decision has been made as to whether to file a continuation.  And, if the decision is to file a continuation, delay the issue fee payment until the continuation is ready to go.

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10 thoughts on “eGrants and Quick Issuances

  1. 6

    Will e-grants only be issued on a Tuesday or can they now be issued any business day of the week?

  2. 4

    If Dennis still practiced patent law, he would probably know that (a) issue fee payments have an inextendible 3-month deadline, and (b) an application filed under 111 can be filed without paying fees. So if the client says it wants the patent but hasn’t made up its mind about a continuation, the practitioner can file a continuation without paying fees for that application, and if the client wants to keep the case going, the practitioner will get paid.

  3. 3

    What are the latest cases on serial continuation filings and prosecution laches? Wasn’t there a significant pharmaceutical case recently?

    1. 3.1

      I’m not sure how your question is relevant to the post, but to answer it: there was a case some years ago on a pre-GATT patent that issued around 1990, in which the defendant tried to assert unenforceability for prosecution laches. The applicant was a small pharma company, and for several years, from the early 1980s until around 1990, it repeatedly filed continuations rather than pay the issue fee because it hadn’t yet gotten a strategic partner (viz. big pharma company) to help bring the product to market. As soon as there was a strategic partner, the applicant paid the issue fee and got the patent. Judge Newman noted that had the applicant paid the issue fee at the first opportunity, there likely wouldn’t have been a strategic partner, and thus there wouldn’t have been a drug, b/c the patent would have expired too early. By delaying issuance until the drug could be developed, the applicant actually helped the public. So there was no problem of prosecution laches. This is the opposite of the situation in which (under the pre-GATT system) an applicant would wait until a technology was in the market, and only then pay the issue fee.

  4. 2

    Also agreed. My latest patent issued just over two weeks after issue fee payment.

    . . . and — surprisingly — with no advance notice of the expected issue date or patent number (anyone know where this is the new norm?)

    Take note, my fellow pro se inventors.

    Take note or else.

    1. 2.2

      Corrected: Patent Office just replaced their, “patent issued notice” with the usual and expected, “Issued Notification.” So this aspect of issuance appears to have remained the same after all.

      Still my fellow pro se folks, get those continuations in before paying the issue fee. Ideally, weeks before. And confirm your con/s has/have been entered before paying.

  5. 1

    Agreed, and thank you for this article as it will help educate the larger client base out there.

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