Impact of COVID-19 Pandemic on Patent Offices – June 14 Update

In a notice posted on its website on Thursday, June 11, the U.S. Patent and Trademark Office announced that it was extending the time period for petitioning for certain rights of priority or benefit, as well as waiving the corresponding petition fee. As the result of the President's declaration on March 13, 2020 of a national emergency under the National Emergencies Act due to the COVID-19 pandemic, the notice indicates that USPTO Director Andrei Iancu "determined that the emergency prejudiced the rights of applicants, patent owners, or others appearing before the USPTO in patent matters and may have prevented them from filing documents or fees with the Office," and that the effects of the COVID-19 pandemic created an extraordinary situation for affected patent applicants and patentees. Therefore, the USPTO, pursuant to the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) and 37 C.F.R. § 1.183, is providing an extension for petitioning for the restoration of certain rights of priority or benefit.

The notice explains that to be entitled to a claim of priority to or benefit of a prior-filed foreign or provisional application, an application seeking priority or benefit must be filed within twelve months (or six months in the case of a design application claiming foreign priority) of the prior-filed foreign or provisional application. After that period expires, U.S. patent law allows an applicant to two more months to file an application seeking priority or benefit along with a petition for restoration of the right to claim priority to or benefit of a prior-filed foreign or provisional application under 37 C.F.R. §§ 1.55(c) or 1.78(b), provided that the delay in filing the application seeking priority or benefit was unintentional.

The notice extends the two-month period described above such that for certain nonprovisional applications claiming the benefit of a prior-filed foreign application under 35 U.S.C. § 119(a) or claiming the benefit of a prior-filed provisional application under 35 U.S.C. § 119(e), the two-month period under §§ 119(a) or 119(e) will run until the later of July 31, 2020, or the expiration of the two-month period set forth in §§ 119(a) or 119(e). The extension provided by the notice only applies to nonprovisional applications for which the 12-month time period under 35 U.S.C. §§ 119(a) or 119(e) ended or will end between March 27, 2020, and July 30, 2020, inclusive of both dates, and provided that the nonprovisional application seeking priority of a prior-filed foreign or provisional application is accompanied by either a petition under 37 C.F.R. § 1.55(c) or a petition under 37 C.F.R. § 1.78(b), and a statement that the failure to timely file the application was due to the COVID-19 outbreak as defined in the Office's notice of April 28, 2020. The notice also indicates that if the above requirements are met, the Office will waive the petition fee under 37 C.F.R. § 1.17(m) (currently $2,000 for large entities) for the petition under 37 C.F.R. § 1.55(c) or § 1.78(b).

As we reported with respect to the Office's notice of April 28, 2020, the Office 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.

(see "USPTO Announces Further Extension of Certain Patent Deadlines").

In addition to the relief described above for certain nonprovisional applications claiming the benefit of a prior-filed foreign or provisional application under 35 U.S.C. §§ 119(e) or 119(a), the Office is also providing some relief for certain International applications in which a petition under 37 C.F.R. § 1.452 has been filed to restore the right of priority. In particular, with respect to International applications for which the time period for filing the International application ended or will end between March 27, 2020, and July 30, 2020, inclusive of both dates, if the application is filed within the two-month period set forth in 37 C.F.R. § 1.452, and is accompanied by a petition under 37 C.F.R. § 1.452 and a statement that the failure to timely file the application was due to the COVID-19 outbreak as defined in the Office's notice of April 28, 2020, the Office will waive the petition fee under 37 C.F.R. § 1.17(m).

The notice advises applicants who file a petition under 37 C.F.R. §§ 1.55(c), 1.78(b), or 1.452 in accordance with the above provisions via the USPTO's patent electronic filing systems (EFS-Web or Patent Center) to use document code PET.RELIEF for the petition. The Office also highly recommends that applicants use form PTO/SB/449 to make the required statement that the delay in filing was due to the COVID-19 outbreak.

Comments and inquiries regarding the notice can be directed by e-mail to Covid19PatentsRelief@uspto.gov or by telephone (if e-mail submission of comments is not feasible) to the Office of Patent Legal Administration at 571-272-7704.