Today, the United States Patent and Trademark Office (USPTO) offered new 30-day extensions to certain deadlines falling between March 27, 2020 and April 30, 2020 due to the coronavirus pandemic. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).
The CARES act allows government agencies, such as the USPTO, to provide relief for those affected by the COVD-19 outbreak. The USPTO has determined that the COVID-19 emergency has prejudiced the rights of those appearing before the USPTO and has prevented applicants from timely filing documents and fees. The Director noted that small businesses and independent inventors, who frequently have less access to capital and for whom patent-related fees may constitute a more significant expense, are likely to face particular difficulties. These deadline extensions are aimed to help mitigate some of the burden caused by the pandemic.
Filers must meet two requirements to take advantage of this 30-day extension period: the deadline must fall on or between March 27 and April 30, and the filing must be 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.
The extension period applies to most documents filed in the prosecution of a patent application. 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) falling between March 27 and April 30 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.
Despite the extensions, the USPTO remains open for filing documents and fees. Practitioners should endeavor to meet the deadlines without extension where possible. The USPTO has made operational adjustments to keep its employees and the public safe as it remains open for business. In-person meetings, such as hearings and examiner interviews, are being conducted virtually by phone and video until further notice.
Has COVID-19 affected your filings before the USPTO? Eastgate IP is here to help. Contact us to speak with a registered patent attorney today. Eastgate IP is committed to your safety – we continue to offer virtual consultations and secure electronic access to your documents to assist during these times.
Citations
- United States Patent and Trademark Office, Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act
- JDSupra, USPTO Announces Extension of Certain Patent and Trademark-Related Deadlines