USPTO Offers Relief to Japanese Applicants

By Donald Zuhn --

Last week, the U.S. Patent and Trademark Office announced that it would be offering relief to persons affected by the 9.0-magnitude earthquake that struck about 250 miles northeast of Tokyo on March 11 and the resulting tsunami.  In particular, the Office stated that it would withdraw and reissue any outstanding Office notice in a patent application or reexamination proceeding having one or more inventors, an assignee, or a correspondence address in areas of Japan affected by the earthquake and tsunami.

In a notice published in the Official Gazette, the Office said it considered the effects of the earthquake and tsunami to be an "extraordinary situation" within the meaning of 37 C.F.R. § 1.183 and 37 C.F.R. § 2.146 for affected applicants.  Saying that the Office's "thoughts and prayers are with the people of Japan who continue to suffer from the effects of the earthquake and resulting tsunami," USPTO Director David Kappos noted that the Office was "offering assistance in the form of flexibility on deadlines to the full extent allowable under our laws to Japanese applicants."

The relief applies to situations "in which a reply or response to an Office action (final, non-final, or other), a notice of allowance, or other Office notice . . . is outstanding, and for which the statutory or non-statutory time period set for response has not yet expired."  The notice states that the Office will withdraw and reissue such notices upon an applicant's or reexamination party's request, to be made using Form PTO/SB/425 (or by including a copy of the Office's notice regarding the relief) "prior to expiration of the statutory or non-statutory time period set for response and within sufficient time so that withdrawal and reissuance of the Office communication occur prior to expiration of the statutory or non-statutory time period."

The Office also noted that it will waive the surcharge under 37 C.F.R. § 1.20(h) or (i) for affected patentees who were unable to timely pay a maintenance fee that was due on or after March 11.  In addition, the Office will waive the surcharge under 37 C.F.R. § 1.16(f) for affected applicants who did not file an oath or declaration, or basic filing fee, search fee, and/or examination fee when filing a nonprovisional application on or after March 11.  To obtain the above relief, applicants must use Form PTO/SB/425 or include a copy of the Office's notice regarding the relief.

The notice explains that the Office cannot grant waivers or extensions of dates or requirements set by statute, and therefore, cannot extend the following time periods:

(1) the period set forth in 35 U.S.C. 119(a)-(d) to file a nonprovisional patent application claiming the benefit of a prior-filed foreign application; (2) the twelve-month time period set forth in 35 U.S.C. 119(e) during which a nonprovisional application claiming the benefit of a prior filed provisional application must be filed in order to obtain benefit of the provisional application's filing date; (3) the copendency requirement of 35 U.S.C. 120 between a parent application which issues as a patent and a later filed child application, which requires that the child application be filed prior to issuance of the parent application; (4) the three-month time period to pay the issue fee set forth in 35 U.S.C. 151; (5) the 35 U.S.C. 304 two-month time period from the date of patentee service, for a requester to file, in an ex parte reexamination, a reply to a statement filed by the patentee; and (6) the 35 U.S.C. 314(b)(2) thirty-day time period from the date of service, for a requester to file, in an inter partes reexamination, written comments addressing issues raised by an Office action or the patentee's response to the action.

Thus, the Office's notice does not apply to these statutory dates or requirements.

Additional details for obtaining the relief being offered to affected applicants by the USPTO can be found in the Office's notice.  The notice also provides information about relief that is being offered to affected trademark applicants.

Comments

[Jhrutka]

So which is it? Prior to the expiration of the time for reply or within sufficient time to issue a reissuance? No guidance, bad rule. Especially since the filing of the petition should be a place holder. That is, for example, the PTO normally takes a month to issue a notice of abandonment. There has to be sufficient time within that time period to note that there was a petition timely filed and use those dates as a place holder.