USPTO Issues Guidance Related to Patent-Related Timing Deadlines Under the CARES Act
On March 31, 2020, the United States Patent and Trademark Office (“USPTO”) issued a notice entitled “Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (“Notice”). A copy of the Notice is linked here.
The Notice advises that certain deadlines for patent application and reexamination proceedings that fall
“…due between, and inclusive of, both March 27, 2020 and April 30, 2020, will be extended 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (b), below.”
Not all deadlines are extended nor, in some cases, for all applicants. Some deadlines are only extended for small or micro entities.
The deadlines extended for patent application and reexamination proceedings are listed on page 2 of the Notice. Some deadlines that are extended include issue fee and maintenance fee payment deadlines. The maintenance fee deadline, however, is only extended for small and micro entities. Deadlines for filing non-provisional and/or PCT applications and national phase applications are not extended.
Additionally, as is clear from the passage quoted above, the filing must be accompanied by a statement that a person associated with the filing or fee has been “personally affected” by the outbreak in a way that “materially interfered” with the timely filing or payment. While it is hoped that these standards will not be difficult to meet (office closures are included as an example of something that personally affects someone), we cannot ensure that will be the case.
The Notice similarly extends deadlines for select filings before the Patent Trial and Appeal Board. The select filings are listed on page 3 of the Notice. Even though the list of select filings is limited, the Notice advises that requests for extensions of time for all other situations not listed can be made “where the COVID-19 outbreak has prevented or interfered with a filing before the Board,” and provides a phone number and email addresses for making such requests. Although the Notice does not explicitly say so, it is expected a statement that a person associated with the filing or fee has been “personally affected” by the outbreak in a way that “materially interfered” with the timely filing or payment must accompany the filing.
The Notice reminds the public that, in its March 16, 2020 notice, the USPTO waived the petition to revive fee when applicants were unable to timely file a response to an office communication due to the COVID-19 outbreak.
Finally, the Notice invites public comments, and provides an email address and phone numbers for doing so.