The United States Patent and Trademark Notice Extends SOME Deadlines in Response to the COVID-19 Outbreak

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) issued a “Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act.”  The full Notice can be found here on the USPTO website.

The Notice announces the availability of 30-day deadline extensions to file some patent-related documents and to pay some required fees, but only if certain requirements are met.  As stated in the notice, the extensions are being made available in response to the fact that some filing entities, especially small businesses and independent inventors, may experience difficulty making and paying for the enumerated filings as a result of COVID-19.

The Notice indicates that:

The Director of the USPTO has determined that the emergency has prejudiced the rights of applicants, patent owners, or others appearing before the USPTO in patent matters, and has prevented applicants, patent owners, or others appearing before the USPTO in patent matters from filing a document or fee with the Office.  Among other things, the spread of the virus has significantly disrupted the operations of numerous businesses, law firms, and inventors.  Small businesses and independent inventors, who frequently have less access to capital and for whom patent-related fees may constitute a more significant expense, may face particular difficulties.

The Notice specifically states, “a person who is unable to meet patent-related timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of certain deadlines.” It is important to note that the Notice DOES NOT represent an extension of all patent related deadlines such as application filing deadlines and IS NOT automatically applied.  In particular, the following items should be noted:

1. In some cases, the deadline extensions only apply to the specifically enumerated classes of filing entities, e.g., micro or small entities.
2. The deadline extensions only apply to specifically enumerated types of filings (listed below). Significantly this applies to Office action responses but does not include application filing deadlines.
3. The deadline extensions only apply to deadlines that occur from March 27, 2020 to April 30, 2020, inclusive.
4. If the stated requirements are met, the deadlines will be extended only 30 days from the initial date on which the reply or fee was due.
5. In order to be granted the deadline extension, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Examples include if a practitioner, i.e., patent agent or attorney, associated with the application, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

It is critical to understand that the Notice DOES NOT EXTEND ANY APPLICATION FILING DEADLINES, WAIVE OR MODIFY ANY APPLICATION FILING BAR DATES, OR EXTEND ANY APPLICATION FILING DEADLINES BASED ON RELATED OR PARENT APPLICATIONS SUCH AS PROVISIONAL APPLICATIONS.

The specifically enumerated classes of filing entities and specifically enumerated types of filings deadlines for which relief may be obtained under the Notice include:

1. Replies to an Office notice issued during pre-examination processing by a small or micro entity.
   a. Examples given include a Notice of Omitted Items, Notice to File Corrected Application Papers, Notice of Incomplete Application, Notice to Comply with Nucleotide Sequence Requirements, Notice to File Missing Parts, and Notification of Missing Requirements.

1. Replies to an Office notice or action issued during examination or patent publication processing.
   a. Examples given include an Office action (either final or non-final) and Notice of Non-Compliant Amendment; an Office notice or action issued during patent publication processing, and a Notice to File Corrected Application Papers issued by the Office of Data Management.
2. Issue fees.
3. Notices of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31.
4. Appeal briefs under 37 C.F.R. § 41.37.
5. Reply briefs under 37 C.F.R. § 41.41. 
6. Appeal forwarding fees under 37 C.F.R. § 41.45. 
7. Requests for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47.
8. Responses to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2). 
9. Amendments when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b). 
10. Maintenance fees filed by a small or micro entity.
11. Requests for rehearing of a PTAB decision under 37 C.F.R. § 41.52.

The Notice also provides additional relief before the PTAB.  Specifically, upon a request to the USPTO affirming that a filing that was due on March 27, 2020 to April 30, 2020 which was or may be delayed due to the COVID-19 outbreak as defined in the Notice (see above), the PTAB shall provide a 30-day extension of time for the following deadlines:

1. a request for rehearing of a PTAB decision under 37 C.F.R. § § 41.125(c), 41.127(d), or 42.71(d);
2. a petition to the Chief Judge under 37 C.F.R. § 41.3; or
3. a patent owner preliminary response in a trial proceeding under 3 7 C.F.R. §§ 42.107 or 42.207, or any related responsive filings.

The Notice also sets forth that in the event that the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).  In addition, for situations not covered in the notice, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing before the Board can be made by contacting the PTAB by telephone at 571-272-9797 or by e-mail at Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov  (for PTAB appeals) or InterferenceTrialSection@uspto.gov (for interferences).

The Notice specifically points out the USPTO remains open for the filing of documents and fees and that the waiver set forth in this Notice is available only if the delay was due to the COVID-19 outbreak as defined in the Notice (see above).

The Notice does not change the USPTO’s March 16, 2020 announcement that the fee under 37 C.F.R. § 1.17(m) for petitions to revive applications under 37 C.F.R. § 1.137 is waived for applicants who were unable to timely reply to an office communication due to the COVID-19 outbreak.

Questions regarding the Notice can be directed by e-mail to Covid19PatentsRelief@uspto.gov or by telephone to the Office of Patent Legal Administration at 571-272-7704 or 571-272-7703 for reexamination.  PTAB-related question regarding the Office’s notice can be directed by e-mail to Trials@uspto.gov for AIA trials, to PTAB_Appeals_Suggestions@uspto.gov for PTAB appeals, or to InterferenceTrialSection@uspto.gov for interferences, or by telephone to 571-272-9797.

Finally, the USPTO noted that it will continue to evaluate the evolving situation around the COVID-19 pandemic and its impact on USPTO operations and stakeholders.

If you have further questions please do not hesitate to contact Phil McKay with questions.

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