Update USPTO extends deadlines for applicants affected by the coronavirus

June 30, 2020

Intellectual Property Alert

Author(s): Seth D. Levy, Paulina M. Starostka

The United States Patent and Trademark Office announced extensions for certain patent and trademark filing and payment deadlines under the CARES Act. The decision to extend certain deadlines is the latest in a series of actions taken by the USPTO in response to the coronavirus pandemic.

On March 31, the United States Patent and Trademark Office (USPTO) announced extensions for certain patent and trademark filing and payment deadlines under the Coronavirus Aid, Relief, and Economic Security (CARES) Act. The decision to extend certain deadlines is the latest in a series of actions taken by the USPTO in response to the coronavirus pandemic. Our March 23rd Alert discussed the USPTO’s waiver of fees for petitions filed pursuant to 37 C.F.R. 1.137(a) and waiver of the handwritten signature requirement. It also discussed a number of statutory deadlines that continue to remain in effect.

The March 31st Announcement contains two additional notices—one for Patents and one for Trademarks[1] —outlining extensions for certain deadlines for those affected by the CORONAVIRUS outbreak. The March 31st Announcement provided that deadlines falling on or after March 27, 2020, through April 30, 2020, were to be extended by 30 days from the initial due date. The USPTO has since issued updated notices on April 28, May 27, and June 29

In the April 28 Notice, the USPTO announced subsequent extensions to the due dates for certain previously extended deadlines falling between March 27, 2020 and May 31, 2020, to June 1, 2020. The April 28th Announcement removed the 30-day extension provision previously provided in the March 31st Announcement. Per the USPTO’s guidance, if additional time was needed, any available extensions of time would then be calculated from June 1.

The May 27 and June 29 Notices provide further extensions for small and micro entities only, with the latest relief extending certain fee deadlines falling on and between March 27 and September 29, 2020, to September 30, 2020. Other extensions of time and relief remains available to those who need it, on a case-by-case basis. The USPTO further clarified that all petitions to waive the fee for petitions to revive under 37 C.F.R. 1.17(m) must be filed by July 31, 2020.

Those seeking to utilize these extensions should remain mindful that they are designed only for those directly affected by the pandemic. A delayed filing or payment must include a statement of delay attesting to the fact that the CORONAVIRUS outbreak materially interfered with the ability to meet one of the deadlines outlined below. Per the USPTO’s guidance, this includes, but is not limited to, office closures, cash flow interruptions, inaccessibility to files and materials, travel delays, personal or family illness, or other similar circumstances. Those not materially affected by the CORONAVIRUS outbreak should adhere to all original deadlines to avoid abandonment of a patent application or forfeiture of patent rights.

The following patent deadlines are subject to the 30-day extension

Patents and Patent Applications

  • Deadline to reply to Office notices issued during pre-examination processing (small or micro entities only);
  • Deadline to reply to Office notices or actions issued during patent examination—including final or non-final Office actions and notices of non-compliant amendments—or patent publication processing;
  • Deadline to pay issue fee; or
  • Deadline to pay maintenance fee (small or micro entities only).

Reexamination Proceedings

  • Deadline to file a notice of appeal to the Patent Trial and Appeal Board (PTAB), per 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  • Deadline to file an appeal brief following the filing of a notice of appeal, per 37 C.F.R. § 41.37;
  • Deadline to pay appeal forwarding fee, per 37 C.F.R. § 41.45;
  • Deadline to request an oral hearing before the PTAB, per 37 C.F.R. § 41.47;
  • Deadline to respond to a substitute examiner’s answer in response to a remand by the PTAB for further consideration of a rejection, per 37 C.F.R. § 41.50(a)(2);
  • Deadline to submit a claim amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground for rejecting a pending claim, per 37 C.F.R. § 41.50(b); or
  • Deadline to request a rehearing of a PTAB decision, per 37 C.F.R. § 41.52.

Other PTAB Deadlines

  • In instances where a valid request for an extension is filed, the USPTO has directed the PTAB to also provide a 30-day extension for:
    • Deadline to request a rehearing of a PTAB decision on a motion, judgment, or petition, per 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d);
    • Deadline to file a petition to the Chief Administrative Patent Judge regarding a question of policy, per 37 C.F.R. § 41.3;
    • Deadline for the patent owner to file a preliminary response to a petition for inter partes or post-grant review, per 37 C.F.R. §§ 42.107 or 42.207; or
    • Deadline for the patent owner to file any other related responsive filings in an inter partes or post-grant review proceeding, per 37 C.F.R. §§ 42.107 or 42.207.
  • If the deadline for the patent owner’s preliminary response or related responsive filings in a trial proceeding is extended, the PTAB may—but is not required to—also extend deadlines for the institution of an inter partes or post-grant review, per 35 U.S.C. §§ 314(b) and 324(c).

Situations Not Covered Above:

The Patent Notice instructs that for filings before the PTAB not otherwise covered above, individuals personally affected by the CORONAVIRUS outbreak should contact the PTAB directly at 571-272-9797 or e-mail the appropriate division:

All filing and payment deadlines not specifically amended by the USPTO should continue to be treated as unaltered and standing. While all USPTO offices remain closed to the public, the USPTO remains open for business, including for the filing of documents and payment of fees. In-person meetings, including hearings and examiner interviews, continue to be conducted virtually. We will continue to provide additional updates as the USPTO issues additional guidelines relating to the coronavirus.

Many foreign patent offices also continue to implement and amend their own special procedures and adjustments to respond to the coronavirus pandemic as the situation evolves.

  1. NOTE: This alert does not cover the trademark portion of the USPTO’s extension.
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