04.03.2020

|

Updates

The director of the United States Patent and Trademark Office (USPTO) announced on March 31, 2020, a 30-day extension of statutory deadlines for filing certain patent-related documents and paying associated fees so long as certain requirements are met. Authorization to do so in response to the COVID-19 outbreak is provided in the Coronavirus Aid, Relief, and Economic Security CARES Act. The 30-day extension applies to deadlines falling on, and between, March 27, 2020 and April 30, 2020, and is available by filing a request accompanied with a statement that the extension was necessary due to the COVID-19 outbreak.

Requirements to Obtain a 30-Day Delay

1. File request for the 30-day delay

2. File statement stating that the delay in filing or payment was due to the COVID-19 outbreak. The statement[1] should include an assertion such as the following:

The delay in filing or payment is due to the COVID-19 outbreak. A person associated with the instant filing or fee was personally affected by the COVID-19 outbreak through one or more of 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.

Qualifying Deadlines—Patent Applications and Reexaminations

1. Reply to a USPTO notice issued during pre-examination processing by a small or micro entity. Qualifying USPTO notices include the following:

    • 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 an Application
    • Notification of Missing Requirements

2. Reply to a USPTO notice or action issued during examination or processing of a patent publication. Qualifying USPTO notices include the following:

    • Non-Final Office Action
    • Final Office Action
    • Notice of a Non-Compliant Amendment
    • Notice to File Corrected Application Papers issued by the Office of Data Management

3. Issue fee

4. Notice of Appeal

5. Appeal Brief

6. Reply Brief

7. Appeal forwarding fee

8. Response to a substitute examiner's answer

9. Maintenance fees filed by a small or micro entity

Qualifying Deadlines—The Patent Trial and Appeal Board

1. Request for an oral hearing

2. Amendments when reopening prosecution in response to, or request rehearing of, a Board decision that includes a new ground of rejection

3. Request for rehearing of a Board decision

4. Additional relief before the Board may be available upon request (see USPTO waiver extension notice):

If the request is related to a filing having a deadline falling on or between, March 27, 2020, and April 30, 2020, and the filing was, or may be delayed, as stated in the concurrently filed statement, the Board will provide an extension for:

5. In the event that the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings, the Board may also extend subsequent deadlines in inter partes reexamination proceedings and institution of post-grant reviews.

6. For all other situations with a filing due during the period beginning on March 27, 2020, and ending on April 30, 2020, a request for an extension can be made by contacting the PTAB:

Contact Information and Additional Resources

The USPTO remains open for filing documents and paying fees. See page 3 of the USPTO waiver extension notice.

Comments and patent related questions concerning this notice should be sent to:

Additional USPTO notices regarding COVID-19 can be found here.

Endnotes

[1] The USPTO’s March 31, 2020, notice defines the 30-day extension as a “delay in filing or payment due to the COVID-19 outbreak as follows: “[t]he 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.” See Notice at Section (1)(b).

© 2020 Perkins Coie LLP