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USPTO Announces Further Extension of Certain Patent Deadlines

Donald L. Zuhn, Jr. Ph.D.May 1, 2020 (snippets Alert)

In a notice[i] posted on its website on Tuesday, 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.  As with the initial extensions announced by the Office on March 31, 2020[ii] (see “USPTO Announces 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.  The additional extensions apply to deadlines for the filing of certain patent-related documents or payment of certain required fees that would have been otherwise due between March 27 and May 31, 2020, and which can now be extended to June 1, 2020.  In announcing the additional extensions, the Office noted that it would continue to evaluate the evolving situation around COVID-19 and the impact of the pandemic on its operations and stakeholders.

The Office provides more specific details regarding the additional patent-related extensions in a “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Act and Other Relief Available to Patent Applicants and Patentees”[iii] (“April 28 Notice”), which the Office noted superseded the following previously issued notices:

In the April 28 Notice, the Office explains that pursuant to § 12004 of the CARES Act, the Office is further extending the time to file certain patent-related documents or fees which otherwise would have been due on or after March 27, 2020 (and up to May 31, 2020).  The April 28 Notice also provides clarification regarding the relief available for patent applicants or patent 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 an application being held abandoned or a reexamination prosecution terminated or limited.

As in the March 31 Notice, the April 28 Notice explains that as a result of the President’s declaration of a national emergency on March 13, 2020, under the National Emergencies Act due to the COVID-19 outbreak, and pursuant to the CARES Act:

The Director of the USPTO has determined that the emergency has prejudiced the rights of applicants, patent owners, or others appearing before the USPTO in patent matters, and has prevented applicants, patent owners, or others appearing before the USPTO in patent matters from filing a document or fee with the Office.  Among other things, the spread of the virus has significantly disrupted the operations of numerous businesses, law firms, and inventors.  Small 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.

Thus, the April 28 Notice states that “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.”  The April 28 Notice sets forth the deadlines for which relief may be obtained:

  1. reply to an Office notice issued during pre-examination processing by a small or micro entity;
  2. reply to an Office notice or action issued during examination or patent publication processing;
  3. issue fee;
  4. notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  5. appeal brief under 37 C.F.R. § 41.37;
  6. reply brief under 37 C.F.R. § 41.41;
  7. appeal forwarding fee under 37 C.F.R. § 41.45;
  8. request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;
  9. response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
  10. amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
  11. maintenance fee, filed by a small or micro entity; or
  12. request for rehearing of a PTAB decision under 37 C.F.R. § 41.52;
  13. request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
  14. petition to the Chief Judge under 37 C.F.R. § 41.3.

(Items 13 and 14, which were separately addressed in the March 31 Notice, have been added to the list of applicable deadlines set forth in the April 28 Notice.)

Only the deadlines that are set forth above, and which occur on March 27, 2020 to May 31, 2020, will be entitled to relief under the April 28 Notice (the March 31 Notice covered deadlines occurring on March 27, 2020 to April 30, 2020).  In contrast with the March 31 Notice, which provided a 30-day extension from the initial date on which a reply or fee was due, the April 28 Notice states that:

[Applicable replies or fees] due between, and inclusive of both, 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 as defined in [the Notice].

As in the March 31 Notice, the April 28 Notice defines a delay in filing or payment as being “due to the COVID-19 outbreak”:

[I]f 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.

With respect to the deadlines set forth in the Notice, the Office points out that an Office notice issued during pre-examination processing (item i) includes, for example, a 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 Application, and Notification of Missing Requirements; that an Office notice or action issued during examination (item ii) includes, for example, an Office action (either final or non-final) and Notice of Non-Compliant Amendment; and that an Office notice or action issued during patent publication processing (item ii) includes, for example, a Notice to File Corrected Application Papers issued by the Office of Data Management.

As in the March 31 Notice, the Office’s April 28 Notice also provides additional relief before the PTAB.  In particular, upon a request to the USPTO affirming that a filing that was due on March 27, 2020 to April 30, 2020 which was or may be delayed due to the COVID-19 outbreak as defined in the Notice (see above), the PTAB shall provide a 30-day extension of time for a patent owner preliminary response in a trial proceeding under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive filings.  The April 28 Notice also indicates that for relief sought after April 30, 2020, and for any other situations not covered in the Notice, relief should be requested by contacting the PTAB at 571-272-9797 or by e-mail at Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov (for PTAB appeals), or InterferenceTrialSection@uspto.gov (for interferences).  With respect to the PTAB, the Notice also indicates that in the event that the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

The April 28 Notice also states that 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), as initially set forth in the Office’s March 16 Notice, but will limit this relief to applications and reexamination proceedings that became abandoned (or terminated or limited) on or before May 31, 2020, as a result of the COVID-19 outbreak. Thus:

For patent applicants or patent owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020, or earlier (when taking into account all available extensions of time under 37 C.F.R. § 1.136(a)), such that the application became abandoned or the reexamination prosecution became terminated or limited, the USPTO will waive the petition fee in 37 C.F.R. § 1.17(m) when the patent applicant or patent owner files the reply with a petition under 37 C.F.R. § 1.137(a) and a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in [the Notice; see above].  See 35 U.S.C. § 41(a)(7).  The inclusion of the statement that the delay in filing or payment was due to the COVID-19 outbreak will be treated as a request for sua sponte waiver of the petition fee under 37 C.F.R. § 1.17(m).

As in the March 31 Notice, the Office’s April 28 Notice also states that “[a]s the USPTO remains open for the filing of documents and fees, the waiver set forth in this notice is available only if the delay was due to the COVID-19 outbreak” as defined in the Notice.

Finally, the April 28 Notice includes a reminder that in addition to the relief provided in the Notice, the Office had previously waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card (see “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – April 2 UPDATE“).

Patent-related inquiries regarding the April 28 Notice can be directed by e-mail to Covid19PatentsRelief@uspto.gov or by telephone to the Office of Patent Legal Administration at 571-272-7704 or 571-272-7703 for reexamination.  PTAB-related inquiries regarding the April 28 Notice can be directed by e-mail to Trials@uspto.gov for AIA trials, to PTAB_Appeals_Suggestions@uspto.gov for PTAB appeals, or to InterferenceTrialSection@uspto.gov for interferences, or by telephone to 571-272-9797.

The Office also announced extensions of time for filing certain trademark-related documents and to pay certain required trademark-related fees.  Details regarding those extensions can be found hereSnippets will provide a more comprehensive summary of the trademark-related extensions in a subsequent article.

For the most up-to-date information regarding the impact of the COVID-19 pandemic on patent offices and Federal courts, we invite you to check our award-winning Patent Docs weblog, which you can view here.

Donald L. Zuhn, Jr., Ph.D. is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group. Dr. Zuhn has more than a decade of experience in all aspects of patent prosecution, litigation, counseling, and licensing. He represents a variety of clients, including biotechnology and pharmaceutical companies both large and small, and universities. zuhn@mbhb.com 

© 2020 McDonnell Boehnen Hulbert & Berghoff LLP

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[i] USPTO extends certain patent and trademark deadlines to June 1, USPTO, https://www.uspto.gov/about-us/news-updates/uspto-extends-certain-patent-and-trademark-deadlines-june-1 (last visited May 1, 2020)

[ii] USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act, USPTO, https://www.uspto.gov/about-us/news-updates/uspto-announces-extension-certain-patent-and-trademark-related-timing (last visited May 1, 2020)

[iii] Notice from Andrei Iancu, Director of the USPTO, for “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” (April 28, 2020), available at https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-Act-2020-04.pdf

[iv] Notice from Andrei Iancu, Director of the USPTO, for “Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act” (March 31, 2020), available at https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=

[v] Notice from Andrei Iancu, Director of the USPTO, for “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak,” (March 16, 2020), available at https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=