USPTO Announces Extension of Certain Patent Deadlines

Impact of COVID-19 Pandemic on Patent Offices and Federal Courts -- March 31 UPDATE

By Donald Zuhn –-

In a USPTO Alert distributed earlier today, the U.S. Patent and Trademark Office announced the availability of extensions to the time allowed to file certain patent-related documents and to pay certain required fees.  The extensions are a result of the temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which was signed by President Trump on March 27, 2020.  Declaring that "[i]nventors and entrepreneurs are the lifeblood of our economy, and we recognize that many of them are having difficulty as a result of COVID-19," USPTO Director Andrei Iancu noted that the Office was working to provide as much relief as possible to its stakeholders.  Director Iancu recognized that the Office was "especially mindful of the outsized impact on small businesses and independent inventors, and we have provided additional relief for these groups," adding that the Office's ultimate goal was "to ensure not only that inventors and entrepreneurs can weather the storm, but that they can also hit the ground running once it passes."

The Office provided more specific details regarding the patent-related extensions in a "Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act."  In the Notice, the Office explains that pursuant to § 12004 of the CARES Act, the time to file certain patent-related documents or fees which otherwise would have been due on or after March 27, 2020 is being extended.  As the result of the President's declaration on March 13, 2020 of a national emergency under the National Emergencies Act due to the COVID-19 outbreak, and pursuant to the CARES Act, 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.

Thus, the Notice states 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."  The Notice sets forth the deadlines for which relief may be obtained:

i.  reply to an Office notice issued during pre-examination processing by a small or micro entity;
ii.  reply to an Office notice or action issued during examination or patent publication processing;
iii. issue fee;
iv.  notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
v.  appeal brief under 37 C.F.R. § 41.37;
vi.  reply brief under 37 C.F.R. § 41.41;
vii.  appeal forwarding fee under 37 C.F.R. § 41.45;
viii.  request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;
ix.  response to a substitute examiner's answer under 37 C.F.R. § 41.50(a)(2);
x.  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);
xi.  maintenance fee, filed by a small or micro entity; or
xii.  request for rehearing of a PTAB decision under 37 C.F.R. § 41.52

Only the deadlines that are set forth above, and which occur on March 27, 2020 to April 30, 2020, will be entitled to relief under the Office's Notice.  The relief being afforded by the Office is that applicable deadlines will be extended 30 days from the initial date on which the reply or fee was due, "provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak" as defined in the Notice.  The Notice defines a delay in filing or payment as being due to the COVID-19 outbreak:

[I]f 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.

With respect to the deadlines set forth in the Notice, the Office points out that an Office notice issued during pre-examination processing (item i) includes, for example, 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; that an Office notice or action issued during examination (item ii) includes, for example, an Office action (either final or non-final) and Notice of Non-Compliant Amendment; and that an Office notice or action issued during patent publication processing (item ii) includes, for example, a Notice to File Corrected Application Papers issued by the Office of Data Management.

The Office's Notice also provides additional relief before the PTAB.  In particular, 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:

i.  a request for rehearing of a PTAB decision under 37 C.F.R. § § 41.125(c), 41.127(d), or 42.71(d);
ii.  a petition to the Chief Judge under 37 C.F.R. § 41.3; or
iii.  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 indicates 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 [email protected] (for AIA trials), [email protected] (for PTAB appeals) or [email protected] (for interferences).

The Notice also states that "[a]s the USPTO remains open for the filing of documents and fees, 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.

The Notice does not impact the Office's March 16 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.

Patent-related inquiries regarding the Office's notice can be directed by e-mail to [email protected] or by telephone to the Office of Patent Legal Administration at 571-272-7704 or 571-272-7703 for reexamination.  PTAB-related inquiries regarding the Office's notice can be directed by e-mail to [email protected] for AIA trials, to [email protected] for PTAB appeals, or to [email protected] for interferences, or by telephone to 571-272-9797.

The Office also announced extensions of time for filing certain trademark-related documents and to pay certain required trademark-related fees.  Details regarding those extensions can be found here.

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

Patent Docs will continue to monitor and report on patent-related developments related to the COVID-19 pandemic.  In addition, we encourage our readers to let us know about developments related to the COVID-19 pandemic at other patent offices.

For additional information regarding this and other related topics, please see:

• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts -- March 29 UPDATE," March 29, 2020
• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts -- March 26 UPDATE," March 26, 2020
• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts -- March 19 UPDATE," March 19, 2020
• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts -- March 18 UPDATE," March 18, 2020
• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts -- March 17 UPDATE," March 17, 2020
• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – UPDATED," March 16, 2020
• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts," March 15, 2020

Comments

[Dan Feigelson]

They could have just said all deadlines are pushed off by 30 days, or pushed off until a certain date, like other countries have done, but no, this is the USPTO, it knows better, it can't learn from anyone else, it had to make it complicated. And unclear.

I'm looking for the part of the announcement that says, "This material will be incorporated into the next USPTO professional licensing exam. Examinees will now be responsible for three sets of laws, pertaining to three different time periods: pre-AIA, AIA, and corona."

In the words of the late Shel Silverstein, "Some kind of help is the kind of help we all can do without."

[Suzannah K. Sundby]

Why the heck is the relief ONLY FOR SMALL and MICRO ENTITIES for Responses to Missing Parts (and other pre-exam notices) and maintenance fee payments?

Aren’t patent practitioners and others who are involved in handling the same for both their large and small entity clients still personally affected the same way such that the outbreak may materially interfere with their timely submission for ALL their clients?

What rises to the level of "personally affected" and "materially interfered"? By having those subjective requirements, the USPTO sets us up for possible invalidity attacks, i.e., that an extension should not have been granted because the given person's situation was not good enough, e.g., wasn't hospitalized for COVID or didn't have a family member die from COVID.

[Umair A. Qadeer]

Office Action response deadlines are delayed, but new application filing deadlines are not. So what about the situation where I am submitting a new application in lieu of an Office Action response?

How does the waiver apply to co-pendency? If I have an Office Action response shortened statutory deadline in a parent application on April 15, can I submit a new application claiming priority to the parent application on May 15 without paying an extension of time fee? If so, would I submit a petition for an extension of time, but not pay the fee (or reduce the fee amount by one month)?

I have already reached out to the USPTO for clarification. Hopefully it will translate into formal guidance.

As Dan suggested, tt would have been nice if there simply was a blanket waiver instead of this approach.