On May 13, 2025, the United States Patent and Trademark Office (USPTO) will implement significant changes designed to expedite patent issuance, reducing the timeframe between Issue Notification and Issue Date from approximately three weeks down to about two weeks. This move, announced as part of ongoing modernization efforts, aims to provide faster market entry and earlier invention protection for patent holders. However, this accelerated timeline carries important strategic implications, particularly concerning the timely filing of continuation and divisional applications for utility patents.
Strategic Considerations for Utility Patents
Applicants seeking to file continuation or divisional applications should pay close attention to the condensed timeline, as the shorter period between Issue Notification and actual patent issuance may impact critical strategic decisions.
Under 35 U.S.C. §120 and 37 CFR 1.53(b), a continuation or divisional application claiming priority to an earlier-filed (parent) utility application must be filed while the parent application is still pending. A utility application is considered pending until the USPTO officially issues the patent or the application is abandoned.
With the reduction in the issuance timeline, applicants now have significantly less time after receiving the Issue Notification to file any necessary continuation or divisional applications. Missing this crucial window could result in a loss of rights to pursue additional claims that were disclosed but not claimed in the issued parent patent.
Detailed Overview of Filing Requirements
Under 37 CFR 1.51(b), a complete continuation or divisional application for utility patents must include:
- Payment of the appropriate filing fees (basic filing fee, search fee, and examination fee).
- A signed inventor’s oath or declaration under 37 CFR 1.63(d), unless previously provided in the parent application.
- Alternatively, for applications filed on or after September 16, 2012, an Application Data Sheet (ADS) identifying each inventor by name, residence, and mailing address may initially suffice. However, a signed inventor’s oath or declaration must still be filed no later than payment of the issue fee.
Key Timelines and Considerations
For continuation or divisional applications under 37 CFR 1.53(b), filing must occur before the earlier of:
- Payment of the issue fee for the parent application, unless a timely petition under 37 CFR 1.313(c) to withdraw the application from issue is granted;
- Abandonment of the parent application; or
- The official issue date of the parent application.
Given the accelerated issuance schedule, applicants and patent practitioners should establish rigorous internal procedures to promptly review Issue Notifications. Acting quickly upon receipt of this notice ensures sufficient time to evaluate whether continuation or divisional filings are strategically advantageous.
Pre-AIA vs. Post-AIA Considerations
For many applications filed in or after 2025, priority claims will commonly originate from a parent application filed post-AIA (on or after September 16, 2012). These filings benefit from streamlined procedures allowing the inventor’s oath or declaration to be delayed until payment of the issue fee, provided an ADS was properly filed.
However, in cases where the parent application claims priority from before September 16, 2012 (pre-AIA), applicants must be mindful of the distinct rules applicable to these older filings. In pre-AIA cases, the inventor’s oath or declaration typically had to be filed earlier in the prosecution process. Applicants dealing with such legacy applications should carefully review the original application file and consult 37 CFR §§ 1.51, 1.53(b), and 1.63 to ensure compliance with these requirements. Given the complexity and potential strategic implications associated with pre-AIA filings, applicants are encouraged to consult with qualified patent counsel to fully protect their rights and properly navigate any procedural nuances or timing constraints.
Precautions and Recommendations
To safeguard continuation and divisional filing rights, applicants should:
- Closely monitor USPTO communications, specifically Issue Notifications;
- Establish internal review processes to expedite decision-making immediately upon receiving Issue Notifications;
- Consider preemptively preparing continuation or divisional applications ahead of anticipated Issue Notifications to avoid missing shortened deadlines;
- Clearly document and calendar all deadlines related to continuation or divisional application filings.
This proactive approach mitigates risk associated with the tighter timelines and preserves critical rights for future protection and commercial strategies.
Given the complexity and strict enforcement of patent regulations, navigating continuation and divisional applications requires more than technical skill. Minor missteps can result in abandoned rights, lost filing dates, or limited protection. A sound understanding of the USPTO’s accelerated issuance process can help maintain continuity and preserve the strength of a patent portfolio. Applicants who rely on experienced professional guidance are often better positioned to manage these risks and make decisions that support long-term strategic goals. [i]
[i] This information included herein is specifically tailored to utility patents. Procedures applicable to design patents, including those under 37 CFR 1.53(d) and RCE practice (37 CFR 1.114), are not discussed in this document.
