The United States Patent and Trademark Office (USPTO) is offering further extensions to certain deadlines falling between March 27 and May 31 to applicants affected by COVID-19. Eligible filings and fees will be considered timely if filed on or before June 1, 2020 and accompanied by a statement that the delay was due to the outbreak. This extension period is in addition to the previous 30-day extension period announced March 31, 2020. The Notice also clarified the relief available for patent applicants or owners whose applications were abandoned or reexamination proceedings terminated due to an inability to timely submit a filing due to the COVID-19 outbreak.
Under the new extension period, applicants affected by COVID-19 may file certain documents and fees, which would have otherwise been due between March 27 and May 31, on June 1 – provided that the document is accompanied by a statement that the delay was due to the COVID-19 outbreak. A delay is due to the COVID-19 outbreak where a person associated with the filing or fee was personally affected by the COVID-19 outbreak. This includes office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances that materially interfere with timely filing or payment.
Most documents filed in the prosecution of a patent application are eligible for this extension. A complete list is available in the original Notice, and includes office action replies, issue fee payments, maintenance fee payments, and documents related to appeals. Interestingly, only Small or Micro Entities are entitled to extensions of time for pre-examination notices, such as a notice of omitted items or a notice to file corrected application papers.
Additionally, certain deadlines before the Patent Trial and Appeal Board (PTAB) shall be extended on request, including: a request for rehearing, a petition to the Chief Judge, a patent owner preliminary response or related responsive filings. The Notice allows practitioners to request extensions to PTAB deadlines not explicitly enumerated in the Notice.
Importantly, the extension does not apply to some deadlines. Deadlines that are not extended include but are not limited to: filing dates for new patent applications, deadlines for filing a non-provisional application claiming priority to a provisional filing, and deadlines for PCT or national stage applications.
The Notice also clarified the relief available for patent applicants or owners who were unable to timely submit a filing or payment in reply to an Office communication due to the COVID-19 outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited. Specifically, the USPTO will waive the petition fee for the revival of applications and reexamination proceedings. However, only applications and reexaminations that became abandoned or terminated on or before May 31, 2020 as a result of the COVD-19 outbreak are eligible, and the petition must be filed with a statement that the delay in filing or payment was due to the COVID-19 outbreak.
United States Patent and Trademark Office, USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act
United States Patent and Trademark Office, Notice of Extended Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Patent Applicants and Patentees