IP Alerts

April 1, 2020

Yesterday, the USPTO announced extensions to the time allowed to file certain patent-related documents and to pay certain required fees that would have been due on or after March 27, 2020. This action by the USPTO, made in accordance with section 12004 of the Coronavirus Aid, Relief, and Economic Security (CARES) Act, provides that 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, as detailed below.
 

Patent Applications and Reexamination Proceedings

Due dates for the following submissions in patent applications and reexamination proceedings that would have been due March 27, 2020, through April 30, 2020, will be extended 30 days from the initial due date, provided that the filing is accompanied by a statement (provided below) that the delay in filing or payment was due to the COVID-19 outbreak:

• Reply to an office notice issued during pre-examination processing (including, e.g., 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 of Application, and Notification of Missing Requirements) by a small or micro-entity
• Reply to an office notice or action issued during examination (including, e.g., a final or non-final office action and Notice of Non-Compliant Amendment), or patent publication processing (including, e.g., Notice to File Corrected Applications Papers)
• 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
• Request for rehearing of a PTAB decision under 37 C.F.R. § 41.52.

The following statement must be submitted to be eligible for the above-referenced 30-day extension:

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.
 

Patent and Appeal Board

For PTAB proceedings, upon a request to the USPTO affirming that a filing due March 27, 2020, through April 30, 2020, was or may be delayed due to the COVID-19 outbreak as defined in the statement above, the PTAB will provide a 30-day extension of time for the following:

• Request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d)
• Petition to the Chief Judge under 37 C.F.R. § 41.3
• Patent owner preliminary response in a trial proceeding under 37 C.F .R. §§ 42.107 or 42.207, or any related responsive filings.

Notably, if the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).)

For all other PTAB-related situations where the COVID-19 outbreak has prevented or interfered with a filing before the PTAB, an extension of time can be requested by calling the PTAB at 571-272-9797 or via email at

• Trials@uspto.gov (for AIA trials)
• PTAB_Appeals_Suggestions@uspto.gov (for PTAB appeals), or
• InterferenceTrialSection@uspto.gov (for interferences).

Finally, in addition to the relief outlined above, the USPTO previously waived the fee under 37 C.F.R. § 1.17(m) for petitions to revive applications under 37 C.F.R. § 1.137, when applicants were unable to timely reply to an office communication due to the COVID-19 outbreak, as described in the USPTO’s notice released on March 16, 2020.

For more information on these developments, please contact Fitch Even partner David M. Kogan, author of this alert.

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