The United States Patent and Trademark Office (“USPTO”) has further extended the time to file certain patent-related documents or pay fees due to the COVID-19 outbreak. This extension supersedes prior USPTO waivers of patent-related deadlines. USPTO Director Andrei Iancu has determined that “[s]mall 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.” Therefore, “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….”
Certain documents or fees that would have been due between March 27, 2020 and May 31, 2020 will be considered timely if filed on or before June 1, 2020 “provided that the filing or payment is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.” The statement qualifies “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.”
These documents and fees include:
- For a small or micro entity, a reply to a USPTO notice issued during pre-examination processing (such as a Notice of Omitted Items, Notice to File Corrected Application Papers, Notice of Incomplete Application or Notice to Comply with Nucleotide Sequence Requirements);
- Reply to an Office notice or action issued during examination or patent publication processing (such as a response to an Office Action or Notice to File Corrected Application Papers issued by the Office of Data Management);
- An issue fee;
- A notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31; and
- For a small or micro entity, a maintenance fee
Other documents and fees include certain documents related to patent prosecution appeals (such as an appeal brief, a reply brief, or an appeal forwarding fee) and certain documents related to Patent Trial and Appeal Board (“PTAB”) proceedings (such as a request for an oral hearing.)
A full list of the documents to which the waiver applies is at https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-Act-2020-04.pdf
A 30-day extension of time may also be available for a Patent Owner Preliminary Response in a PTAB proceeding that was due between March 27, 2020 and April 30, 2020.
For other questions tied to the fallout from the COVID-19 pandemic, please visit our COVID-19 resource page.
This alert does not purport to be a substitute for advice of counsel on specific matters.
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