IP monitor: Faster USPTO patent grants after payment of issue fee

Effective May 13, 2025, the USPTO’s expected timeframe between issue notification and issue date will be approximately two weeks (instead of approximately three weeks). While patents will grant sooner, from a practical perspective, this also means there will be less time to decide if an optional continuing application should be filed.

Introduction

When a patent application has successfully completed substantive examination on the merits at the USPTO, the examiner issues a “notice of allowance” document. The “notice of allowance” sets out a deadline for paying the “issue fee” and any other related fees. Once these fees are paid, an “issue notification” is then issued noting the projected “issue date” and the projected patent publication number.

An optional “continuing” (continuation, continuation-in-part, divisional) application can be filed up until the “issue date,” which usually occurs on a Tuesday, and there has been jurisprudence indicating that the optional “continuing” application can be on the same day as the parent application. While it is best practice to obtain continuation instructions well before paying the issue fee, nonetheless applicants may choose to wait until closer to the “issue date” to file their continuing applications.

There are various reasons to consider filing continuing applications, such as filing strategic continuing applications to pursue variations of subject matter to support future litigation efforts, to pursue unclaimed subject matter in the detailed disclosure, to pursue alternative groups or specimens in divisional applications, and to add new subject matter in an improvement “continuation in part” application, among others.

Accordingly, for some applicants, the strategic filing of continuing applications for high importance patent families is part of their overall intellectual property strategy.

Recent USPTO notice

The USPTO has been undergoing modernization efforts as part of its shift towards an eGrant system (instead of the old physical grant publications). Accordingly, the USPTO has been able to reduce the time between grant notification and the issuance date, and has indicated that effective May 13, 2025, the USPTO’s expected timeframe between issue notification and issue date will be approximately two weeks (instead of approximately three weeks).

There are three major impacts from a practical perspective:

• There will be less time to decide if an optional continuing application should be filed.
• There will be reduced need to file a Quick Path Information Disclosure Statement (QPIDS), which is typically used when new information is to be disclosed to the USPTO after paying the issue fee in certain scenarios.
• Patents will grant slightly faster and thus provide earlier protection.

It is important to note that the fees related to continuing applications were recently amended to include additional fees when filed more than six or nine years after the original patent application, and this needs to be considered when assessing whether a continuing application is merited.

It remains to be seen whether this shortened preparation time spells the end of the transition period where the USPTO has still been providing physical ceremonial copies of the granted patents in addition to the eGrant.

For more information, please contact your IP professional at Norton Rose Fulbright Canada LLP.

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