As we reported in March, the CARES Act gives the Director of the United States Patent and Trademark Office (USPTO) the authority to extend deadlines of patent-related filings. The director has since determined that the COVID-19 emergency has prejudiced the patent rights of applicants, patent owners or others appearing before the USPTO. Therefore, any person or company who is unable to meet certain patent-related timing deadlines due to the COVID-19 outbreak may be eligible for a 30-day extension of the filing deadline.
To qualify, the filing must have an original deadline falling on or between March 27, 2020 and April 30, 2020. Further, the filing must be “accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.” The director explained that:
[Section] (b): A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, 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.
The qualifying patent-related filings, include any:
- Reply to an office notice issued during pre-examination processing by a small or micro entity;
- Reply to an office notice or action issued during examination or patent publication processing;
- Issue fee;
- Notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
- Appeal brief under 37 C.F.R. § 41.37;
- Reply brief under 37 C.F.R. § 41.41;
- Appeal forwarding fee under 37 C.F.R. § 41.45;
- Request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;
- Response to a substitute examiner's answer under 37 C.F.R. § 41.50(a)(2);
- Amendment 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);
- Maintenance fee, filed by a small or micro entity; or
- Request for rehearing of a PTAB decision under 37 C.F.R. § 41.52.
Additionally, the USPTO has provided relief for certain Patent Trial and Appeal Board (PTAB) filings due on or between March 27, 2020 and April 30, 2020, if accompanied by the “Section (b)” statement provided above. The qualifying PTAB filings include: a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d) or 42.71(d); a petition to the chief judge under 37 C.F.R. § 41.3 or a patent owner preliminary response in a trial proceeding under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive filings. Other PTAB situations may be eligible for extension on an ad-hoc basis by contacting PTAB.
In addition to the relief described above, the fee for a petition to revive an application under 37 C.F.R. § 1.137 remains waived, provided that applicants are unable to timely reply to an office communication due to the COVID-19 outbreak.
The USPTO granted greater relief for small and micro entities, stating that for “[s]mall businesses and independent inventors, who frequently have less access to capital[,] patent-related fees may constitute a more significant expense.” While some relief (such as deadline extensions for Maintenance Fee Payments) is granted to only small and micro entities, other relief (such as deadline extensions for filing Responses to Office Actions, Appeal Briefs and Issue Fee Payments) is granted to all patent applicants effected by COVID-19.
Taft will continue to monitor updates from the USPTO to help our clients optimize their patent-related filing strategies. Please don’t hesitate to contact one of Taft’s Intellectual Property attorneys with any questions regarding the USPTO or other patent-related issues.
Please visit our COVID-19 Toolkit for all of Taft’s updates on the coronavirus.