E-Certificates for Intellectual Property Registrations

Intellectual Property Registration Certificates are very important for patents, trademarks, and industrial design owners. These official papers are the proofs of ownership for their particular intellectual properties registered in the Registrar’s Office. These days, however, e-certificates have been issued by many PTOs due to the increasing demands of IP owners.

In a recent official notification on November 16, 2022, Taiwan Intellectual Property Office (TIPO) announced the electronic certificate issuance for patents and trademark registrations starting from January 1, 2023, onwards.

For the moment, the applicants are provided with the option to order the certificates in electronic or paper format at the initial stage of implementing the electronic certificate system.

Applicants who choose to receive an electronic certificate will be allowed to later apply for a paper certificate with payment of an additional official fee. However, it is not possible for those who choose to receive a paper certificate at the filing stage, to later apply for electronic certificate issuance. The electronic Certificate will be issued in PDF format and downloadable within 6 months after the applicant receives TIPO’s notice of issuance of the Certificate.

We do not have the information yet on when these two options will still be available. However, the TIPO’s final objective is to only issue the electronic version of the patents and trademark registrations in the future.

Previously this year, United States Patent Office (USPTO) had also started issuing e-certificates as of May 24, 2022. It was scheduled to be effective on June 7, 2022, but due to some “paper vendor disruption” issue, the implementation was accelerated approximately two weeks earlier than it was initially planned.

The e-certificate is now the official registration certificate issued by the USPTO. For the time being, an option to purchase a “presentation copy” or hard copy to display a registration, is still available. A presentation copy can be purchased for $25 and for trademark owners who filed their applications before May 24, 2022, the e-certificates can be downloaded with no additional costs.

With this new development, the USPTO is joining other countries, such as Canada, China, and the European Union Intellectual Property Office (“EUIPO”), among others, in issuing electronic trademark registration certificates. The EUIPO, for example, has offered online electronic trademark registration certificates since November 15, 2010.

For applicants of Indonesian trademarks and patents, e-certificates have now also been available, not only for registration certificates but also for renewal and recordation certificates. Based on DGIPR Office 2020 Yearly Report, since the wake of the Covid-19 pandemic in Indonesia and around the world, the “normal” procedures for filing patents and trademarks in Indonesia have been forced to adopt 100% electronic procedures.

Why Issuing E-Certificates?

The increasing use of digital transactions in many areas of our everyday life, including in the processing procedures of filing and registration of patents and trademarks, has developed a strong preference to receive registration certificates in a digital format instead of a paper certificate in the past several years for several reasons.

First, it will save trees (by reducing the use of paper) and therefore digitally issuing e-certificate will be more environmentally friendly. By enhancing the use of digital technology in the field of intellectual property filing and registration process, we will be taking part in global energy-saving efforts and carbon reduction effects.

Second, issuing e-certificates in place of paper certificates will provide applicants with more straightforward and quicker access to their registration certificates. By doing so, the PTO will also reduce the time it takes for the patents and trademark owners to receive their registration certificates.

Third, the implementation of full electronic processing of patents and trademark applications and registrations, from filing and initial data entry to output right into the PTO database will potentially minimise the costs involved in obtaining registration certificates.

How to Obtain E-Certificates?

Most PTOs who issue e-certificates usually will notify patents and trademark owners and/or their counsel via email communication if their e-certificates have been available for download.

Some PTOs also provide an online portal in which those who have access to the PTO’s e-filing system can view the status of their pending IP matters and retrieve or download any office actions and e-certificates if available.

E-certificates are issued electronically under the electronic signature of the Director and with a digital seal, which will authenticate the registration.

Takeaways

The issuance of e-certificates for patents and trademark registrations is an important step for PTOs in providing more time-and-cost-efficient services from filing up to registration of patents and trademarks.

E-certificate is a global trend because people are increasingly involved in digital or electronic transactions which affect how we do business and deliver products and services to customers.

With the growing attention to environmental issues, the issuance of e-certificates is a crucial factor towards creating a green and paperless working and living environment in many countries of the world.