Electronic Patent Issuance, 71209-71212 [2021-27117]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 86, Number 238 (Wednesday, December 15, 2021)]
[Proposed Rules]
[Pages 71209-71212]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-27117]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2021-0007]
RIN 0651-AD54


Electronic Patent Issuance

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice of Proposed Rulemaking.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
proposing to implement electronic patent issuance. Under the proposed 
change, the USPTO would issue patents electronically through its patent 
document viewing systems (i.e., Patent Center and Patent Application 
Image Retrieval (PAIR)). Patents would no longer be issued on paper, 
and as a result, they would no longer be mailed to the correspondence 
address of record as part of the patent issuance process. The 
elimination of these steps would allow issued patents to be available 
weeks sooner in electronic form, and the patentee would be able to view 
and print the complete issued patent via the USPTO's patent document 
viewing systems immediately upon issue. Patentees would continue to 
have the option of ordering an unlimited number of paper presentation 
copies and certified copies of patents.

DATES: Comments must be received by February 14, 2022 to ensure 
consideration.

ADDRESSES: For reasons of Government efficiency, comments must be 
submitted through the Federal eRulemaking Portal at 
www.regulations.gov. To submit comments via the portal, enter docket 
number PTO-P-2021-0007 on the homepage and click ``Search.'' The site 
will provide a search results page listing all documents associated 
with this docket. Find a reference to this document and click on the 
``Comment Now!'' icon, complete the required fields, and enter or 
attach your comments. Attachments to electronic comments will be 
accepted in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format. Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.
    Visit the Federal eRulemaking Portal (www.regulations.gov) for 
additional instructions on providing comments via the portal. If 
electronic submission of comments is not feasible due to a lack of 
access to a computer and/or the internet, please contact the USPTO 
using the contact information below for special instructions.

FOR FURTHER INFORMATION CONTACT: Mark Polutta, Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patents, at 571-
272-7709. For technical questions, contact the Patent Electronic 
Business Center (EBC) at 1-866-217-9197 (toll-free), 571-272-4100 
(local), or [email protected]. The EBC is open from 6 a.m. to midnight ET, 
Monday through Friday.

SUPPLEMENTARY INFORMATION: The USPTO is proposing to issue and publish 
patent grants electronically via the USPTO's document viewing systems. 
By doing so, the USPTO is continuing with its efforts to move to fully 
electronic processing of its patent applications. The electronic patent 
issuance process would enable the USPTO to issue patents approximately 
two weeks faster than the current process.
    One of the specific powers granted to the USPTO by 35 U.S.C. 
2(b)(1) is to ``adopt and use a seal of the Office, which shall be 
judicially noticed and with which letters patent . . . issued by the 
Office shall be authenticated.'' Currently, the USPTO issues ``letters 
patent'' (hereafter, patents) as paper patents under the seal of the 
USPTO, by virtue of being bound with a cover sheet that has both an 
embossed seal and the signature of the USPTO Director. As proposed, the 
USPTO would instead issue patents electronically under a new digital 
USPTO seal and with a digital signature from the USPTO Director, and 
the patents would be made available via the USPTO's patent document 
viewing systems upon patent issuance. In the USPTO's patent document 
viewing systems, a patentee would be able to view and print the patent 
in its entirety, including the cover sheet, front page, drawings, 
specification, and claims.

[[Page 71210]]

    In order to implement electronic patent issuance, the USPTO is 
proposing to remove and reserve 37 CFR 1.315, which states that ``[t]he 
patent will be delivered or mailed upon issuance to the correspondence 
address of record.'' Under the proposed changes, because patents would 
be issued electronically rather than on paper, the USPTO would no 
longer physically deliver the patent by mailing it to the 
correspondence address. Instead, the USPTO would issue the patent 
electronically via the USPTO's patent document viewing systems.

Background

    The USPTO has undertaken numerous efforts to establish beginning-
to-end electronic processing for patent applications. In 2001, the 
agency implemented the electronic filing system to provide applicants 
the capability of filing their patent applications electronically. See 
Electronic Filing System Available to Public, 1240 Off. Gaz. Pat. 
Office 45 (Nov. 14, 2000). In 2003, the USPTO launched the Image File 
Wrapper system, which uses image technology to replace the paper 
processing of patent applications by utilizing the electronic data 
processing system for the storage and maintenance of all the records 
associated with patent applications. See Changes to Implement 
Electronic Maintenance of Official Patent Application Records, 68 FR 
38611 (June 30, 2003); 1272 Off. Gaz. Pat. Office 197 (July 29, 2003). 
In 2007, the USPTO initiated the e-Office Action Program, which 
provides electronic notifications of some outgoing correspondence. See 
Electronic Notification of Outgoing Correspondence (e-Office Action) 
Update, 1319 Off. Gaz. Pat. Office 146 (June 26, 2007).
    Further, the USPTO uses its patent document viewing systems to 
provide electronic access to the patent application file. These systems 
have a private side and a public side. The public side provides any 
member of the public with access to a display of the information 
contained in applications that have been patented, published, or 
otherwise made available pursuant to 37 CFR 1.14. The public side of 
the patent document viewing systems does not provide public access to 
information concerning applications that are maintained in confidence 
under 35 U.S.C. 122(a). The private side of these systems may be used 
by an applicant to access a display of the information contained in 
their pending application, regardless of whether it is being maintained 
in confidence under 35 U.S.C. 122(a) or has been published under 35 
U.S.C. 122(b). To access the private side of the USPTO's patent 
document viewing systems, a customer number must be associated with the 
correspondence address for the application, and the user of the system 
must have a verified USPTO.gov account with two-step authentication. 
For further information, contact the Customer Support Center of the EBC 
via the methods described above.
    In an effort to continue streamlining its service delivery 
processes, the USPTO is now proposing to implement electronic patent 
issuance and to store the granted patent in the USPTO's patent document 
viewing systems.
    I. Current Paper Patent Issuance Process: Under the current patent 
issuance process, electronic capture of the information in a patent to 
be issued and printed (the Initial Data Capture) begins shortly after 
the notice of allowance has been mailed. Most of the information for 
printing a patent is electronically captured during the Initial Data 
Capture. When the Initial Data Capture is completed, and if the issue 
fee has been paid and all other requirements are timely met (e.g., 
corrected drawings have been timely filed), the Final Data Capture 
process begins. After the Final Data Capture and final issue 
preparation are completed, the patent number and issue date are 
assigned. An Issue Notification is mailed generally three weeks prior 
to the issue date to inform the applicant of the patent number and 
issue date. The Issue Notification is also available electronically in 
the USPTO's patent document viewing systems. The paper patent 
(including its cover sheet) is then prepared and mailed to the 
patentee, generally on the issue date. On that date, the USPTO also 
publishes in the Official Gazette the patent number, title of the 
patent, names and residences of the inventors, the applicant, the 
assignee (if applicable), the filing and priority dates, the text of 
the first claim of the patent, the total number of claims in the 
patent, and the representative figure (if applicable). Once a paper 
patent is issued, a copy of the patent (without its cover sheet) is 
available for viewing and printing by the public on the USPTO's website 
at www.uspto.gov/patents/search, via the Patent Full-Text and Full-Page 
Image Databases.
    II. Proposed Electronic Patent Issuance Process: Electronic patent 
publication would result in electronic patent issuance under the USPTO 
seal and with the Director's signature within one week, instead of 
three weeks, after the patent number and issue date are assigned. Thus, 
by discontinuing the printing, assembling, and mailing of a paper 
patent upon issuance, the USPTO would be able to reduce the pendency of 
every issued patent application by approximately two weeks. Applicants 
and the public would benefit from the time saved. In addition, 
patentees would be able to view and print their electronically issued 
patents (including their cover sheets) through the USPTO's patent 
document viewing systems, rather than waiting for their paper patent to 
arrive by mail. The USPTO proposes to make electronic patent grants 
available on both the public and private sides of the USPTO's patent 
document viewing systems such that the public would also be able to 
view the official electronic patent grant (including its cover sheet). 
Additionally, the USPTO is considering electronically issuing 
reexamination certificates, statutory invention registrations, patent 
term extension certificates, and certificates of correction rather than 
mailing them.
    Patentees may exercise the legal rights granted by the patent 
without physical possession of it because the patent right exists 
independently of the physical possession of the patent. See Changes to 
Support Implementation of the United States Patent and Trademark Office 
21st Century Strategic Plan, 69 FR 56481, 56521 (Sept. 21, 2004); 1287 
Off. Gaz. Pat. Office 67, 98 (Oct. 12, 2004). Furthermore, under the 
proposed rule change, patentees who want a copy of the electronically 
issued patent would be able to access it themselves through the USPTO's 
patent document viewing systems and print it at no charge.
    Under the proposed electronic patent issuance process, the USPTO 
would issue the patent shortly after the payment of the issue fee. As a 
result, applicants would have less time, after the payment of the issue 
fee, to file continuing applications, Quick Path Information Disclosure 
Statements, or petitions under 37 CFR 1.313(c) to withdraw an 
application from issue. Therefore, the best practice would be for 
applicants to file these submissions as early as possible. Preferably, 
continuing applications should be filed before the payment of the issue 
fee. See Filing of Continuing Applications, Amendments, or Petitions 
after Payment of Issue Fee, 1221 Off. Gaz. Pat. Office 14 (Apr. 6, 
1999).
    Under the proposed electronic patent issuance process, patents 
would be issued about one week after the patent number is assigned. 
Issue Notifications would be available electronically via the USPTO's 
patent document viewing systems approximately three to four weeks after 
the payment of the issue fee, usually on the Thursday before the

[[Page 71211]]

patent issues. For those applicants who participate in the e-Office 
action program, the USPTO emails notification of the Issue Notification 
to the applicant's designated email address. For more information 
regarding the e-Office action program, see Electronic Office Action, 
1342 Off. Gaz. Pat. Office 45 (June 2, 2009). For those who do not 
participate in the e-Office action program, the USPTO foresees the 
possibility that a patent may issue electronically before the applicant 
receives a mailed Issue Notification. The USPTO encourages applicants 
to use the e-Office action program to avoid this possibility.
    III. Proposed Electronic Patent Grant May Be Viewed and Printed Via 
the USPTO's Patent Document Viewing Systems: As proposed, the USPTO 
would upload the patent (including its cover sheet) electronically, 
thereby making the patent available to the patentee through the USPTO's 
patent document viewing systems. Patentees would be able to print an 
unlimited number of copies of the electronically issued patent 
(including its cover sheet in color) through the USPTO's patent 
document viewing systems upon the issuance of the patent at no charge. 
Additionally, the electronically issued patent would provide the 
patentee greater control and flexibility in printing their issued 
patent. Since copies of the patent could be printed on the date of 
issuance, the USPTO would discontinue offering advance patent copies 
that can currently be ordered on the PTOL-85 Fee Transmittal (Part B) 
form.
    Although the USPTO would no longer deliver a paper patent to the 
patentee upon issuance, offer advanced patent copies, or provide 
duplicate copies of the paper patent, the patentee would still be able 
to order certified and non-certified copies of the patent for a fee, in 
accordance with 37 CFR 1.13. In addition, the patentee would still be 
able to order presentation copies of the patent for a fee. A 
presentation copy is a signed, ribbon-sealed copy of the first page of 
the issued patent, suitable for framing. Presentation copies are often 
preferred for displaying the grant of a U.S. patent, because not only 
do they add a ribbon to the same gold seal displayed on paper patent 
grants, but they also identify the inventors, display complete 
bibliographic data, and contain a brief abstract of the technical 
disclosure of the invention. In contrast, the cover sheet of a paper 
patent grant looks the same for every issued paper patent. For further 
information, visit the USPTO Certified Copy Center web page at https://certifiedcopycenter.uspto.gov/.
    IV. Cover Sheet of Proposed Electronic Patent Grant: The patent 
cover sheet in the USPTO's patent document viewing systems, as 
proposed, would likely be nearly identical in appearance to the cover 
sheets currently used for paper patents, except that the seal and 
Director's signature would be in digital form. Importantly, the digital 
seal and electronic signature of the Director on the proposed 
electronic patent grant cover sheet would be in conformance with 35 
U.S.C. 153, which requires that patents be issued ``under the seal of 
the Patent and Trademark Office, and shall be signed by the Director or 
have his signature placed thereon and shall be recorded in the Patent 
and Trademark Office.'' The new seal would not simply be an electronic 
image, but rather an official USPTO seal in digital form that serves to 
authenticate the patent, in conformance with 35 U.S.C. 2(b)(1).

Request for Public Comments

    The USPTO invites interested persons and entities to participate in 
this rulemaking by submitting written comments, data, or views on the 
proposed regulations addressing the electronic issuance of patent 
grants, via the methods described earlier in this document.

Rulemaking Requirements

    A. Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure, and/or interpretive 
rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015) 
(Interpretive rules ``advise the public of the agency's construction of 
the statutes and rules which it administers.'' (citation and internal 
quotation marks omitted)); Nat'l Org. of Veterans' Advocates v. Sec'y 
of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that 
clarifies that the interpretation of a statute is interpretive); Bachow 
Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules 
governing an application process are procedural under the 
Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala, 244 
F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims.).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this rulemaking are not required pursuant to 5 U.S.C. 
553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (Notice-
and-comment procedures are required neither when an agency ``issue[s] 
an initial interpretive rule'' nor ``when it amends or repeals that 
interpretive rule.''); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), do not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'' (quoting 5 U.S.C. 
553(b)(A))). However, the USPTO has chosen to seek public comment 
before implementing the rule to benefit from the public's input.
    B. Regulatory Flexibility Act: Under the Regulatory Flexibility Act 
(5 U.S.C. 601 et seq.), whenever an agency is required by 5 U.S.C. 553 
(or any other law) to publish a notice of proposed rulemaking, the 
agency must prepare and make available for public comment an Initial 
Regulatory Flexibility Analysis, unless the agency certifies under 5 
U.S.C. 605(b) that the proposed rule, if implemented, will not have a 
significant economic impact on a substantial number of small entities. 
5 U.S.C. 603, 605. For the reasons set forth herein, the Senior Counsel 
for Regulatory and Legislative Affairs of the USPTO has certified to 
the Chief Counsel for Advocacy of the Small Business Administration 
that this proposed rule, if implemented, will not have a significant 
economic impact on a substantial number of small entities. See 5 U.S.C. 
605(b).
    The USPTO is proposing to amend the rules of practice to implement 
electronic publication, that is, issuing patents electronically through 
the USPTO's patent document viewing systems rather than mailing a copy 
of the patent to the correspondence address on record. Patentees would 
then be able to print a copy of the issued patent in its entirety, 
including the cover sheet that matches the color and design currently 
used for patent grants on paper, directly from the USPTO's patent 
document viewing systems.
    This change is procedural and is not expected to have a direct 
economic impact on small entities. The discontinuation of the paper 
patent grant is not expected to impact the ability of a patent owner to 
exercise their patent rights as a paper patent grant is not necessary 
to enforce or license a patent. Once issued, the paper patent grant is 
merely commemorative. Under the proposed electronic patent issuance, 
patent owners will be able to access their granted patent at any time. 
This includes the ability to print their own hard copy. Only when a 
patent owner would like the Office to print them a hard copy would any 
additional fee need to be paid (i.e., for a presentation copy or 
certified copy for

[[Page 71212]]

submission to a legal proceeding). The additional fees for presentation 
and certified copies already exist today and would remain unchanged 
under this proposed rule. Therefore, for the reasons above, the changes 
in this proposed rule are not expected to negatively impact small 
entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
proposed rule has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The USPTO has complied with Executive Order 13563 (Jan. 18, 
2011). Specifically, the USPTO has, to the extent feasible and 
applicable: (1) Made a reasoned determination that the benefits justify 
the costs of the proposed rule; (2) tailored the proposed rule to 
impose the least burden on society consistent with obtaining the 
regulatory objectives; (3) selected a regulatory approach that 
maximizes net benefits; (4) specified performance objectives; (5) 
identified and assessed available alternatives; (6) involved the public 
in an open exchange of information and perspectives among experts in 
relevant disciplines, affected stakeholders in the private sector, and 
the public as a whole, and provided online access to the rulemaking 
docket; (7) attempted to promote coordination, simplification, and 
harmonization across Government agencies and identified goals designed 
to promote innovation; (8) considered approaches that reduce burdens 
and maintain flexibility and freedom of choice for the public; and (9) 
ensured the objectivity of scientific and technological information and 
processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant the 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes, (2) impose substantial direct compliance costs on Indian tribal 
governments, or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
proposed rulemaking is not likely to have a significant adverse effect 
on the supply, distribution, or use of energy. Therefore, a Statement 
of Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the rule and other required information 
to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this proposed rule are not 
expected to result in an annual effect on the economy of $100 million 
or more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this proposed rule is not a ``major rule'' as defined in 5 
U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The proposed changes set 
forth in this rulemaking do not involve a Federal intergovernmental 
mandate that will result in the expenditure by State, local, and tribal 
governments, in the aggregate, of $100 million (as adjusted) or more in 
any one year, or a Federal private sector mandate that will result in 
the expenditure by the private sector of $100 million (as adjusted) or 
more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    M. National Environmental Policy Act of 1969: This rulemaking will 
not have any effect on the quality of the environment and is thus 
categorically excluded from review under the National Environmental 
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act of 1995: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 
1995 (44 U.S.C. 3501) requires that the USPTO consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This proposed rule does not involve an information collection 
requirement that is subject to review by the Office of Management and 
Budget under the Paperwork Reduction Act of 1995.
    P. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies, to provide increased opportunities 
for citizen access to Government information and services, and for 
other purposes.

List of Subjects for 37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

    For the reasons stated in the preamble, the Office proposes to 
amend 37 CFR part 1 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2).


Sec.  1.315  [Removed and Reserved]

0
2. Section 1.315 is removed and reserved.

Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2021-27117 Filed 12-14-21; 8:45 am]
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