USPTO Announces Further Extension of Certain Patent Deadlines for Small and Micro Entities

Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – May 27 UPDATE

By Donald Zuhn –-

In a notice posted on its website earlier today, the U.S. Patent and Trademark Office announced that it was further extending the time to file certain patent-related documents and to pay certain required fees, but only for certain types of entities.  As with the initial extensions announced by the Office on March 31, 2020 (see "USPTO Announces Extension of Certain Patent Deadlines") and the extension of those deadlines announced by the Office on April 28, 2020 (see "USPTO Announces Further Extension of Certain Patent Deadlines"), the additional extensions are the 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.

According to the Office's latest notice, the additional extensions apply to deadlines for the filing of certain patent-related documents or payment of certain required fees -- as described in the Office's April 28, 2020 notice -- that would have been otherwise due between March 27 and June 1, 2020, which "will now be deemed timely filed if filed by July 1, 2020."  However, the Office's latest notice makes it clear that the additional extensions are "[f]or small and micro entities only" (emphasis added).  For large entities, the Office's notice states that after May 31, 2020 (the ending date of the Office's April 28, 2020 extension), large entities "should seek relief on a case-by-case basis, through the filing of a petition for an extension of time or a petition to revive, accompanied by any required fee."  In announcing the additional extensions for small and micro entities, the Office stated that it "recognizes that the COVID-19 pandemic continues to impose various hardships, especially on small businesses and individual inventors, and will continue to evaluate the evolving situation around the COVID-19 outbreak and the impact on the USPTO's operations and stakeholders."

The Office's most recent notice also states that for all entities, the Office will continue to provide relief in the form of a waiver of the petition fee for the revival of applications (and reexamination proceedings).  This relief has now been extended to applications and reexamination proceedings that became, or will become, abandoned (or terminated or limited) on or before June 30, 2020, as a result of the COVID-19 outbreak.  Applicants will still have to file a statement with their petition to revive indicating that the delay in filing or payment was due to the COVID-19 outbreak as defined in the April 28 Notice.

The Office's latest notice also reminds applicants and patentees that "extensions of time under 37 CFR § 1.136 are available for filing replies to Office actions and notices issued during patent processing or examination . . . and petitions under 37 CFR § 1.378 to accept a delayed maintenance payment are available if a maintenance fee has not been paid by its due date."

Patent-related inquiries regarding the Office's latest 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.

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:

• "USPTO Announces COVID-19 Prioritized Examination Pilot Program," May 18, 2020
• "USPTO Announces Further Extension of Certain Patent Deadlines," April 30, 2020
• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – April 12 UPDATE," April 12, 2020
• "USPTO Answers FAQs on Extension of Patent Deadlines under CARES Act," April 6, 2020
• "Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – April 2 UPDATE," April 2, 2020
• "USPTO Announces Extension of Certain Patent Deadlines," March 31, 2020
• "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

[John Storella]

Don:
I have a somewhat different reading of the Notice. It says:
"Specifically, for small and micro entities, filings that would have been deemed timely filed, if filed by June 1, 2020 pursuant to the CARES Act Notice dated April 28, 2020, will now be deemed timely filed if filed by July 1, 2020".
Suppose an office action has a due date of June 2. A response filed on June 1 would be timely filed for this deadline. Therefore, the date to respond is extended to July 1.
What is your analysis?

[Donald Zuhn]

John:

Thanks for your comment. My reading of the USPTO's latest notice is that the Office has merely extended the applicable date of its original COVID-19-related extensions from June 1 to July 1, but ONLY for small and micro entities. Therefore, any deadlines for the actions specified in the Office's April 28 notice – again, ONLY for small and micro entities – that fall in June can be extended to July 1 with the submission of the required COVID-19 statement. I think that the omission of large entities from the latest round of extensions may be the reason why the notice was perhaps not as clear as the first two notices (at least to me).

Don

[John Storella]

Don:
Well, that would be the expected interpretation, but how do you get there from the text the statement? What am I missing?
John