The U.S. Patent and Trademark Office issued a notice on April 28, 2020 further extending the deadlines already extended by the March 31, 2020 Notice of Waiver for Patent Related Timing under the CARES Act. This notice supersedes the March 31, 2020 notice. A copy of the notice is attached.
The Notice provides for the extension of many deadlines for certain actions and/or fees that are due between March 27, 2020 through and including May 31, 2020, where a certification statement is filed stating the extra time is needed as a result of the COVID-19 pandemic. The extensions are without fees and are up to June 1, 2020. The extendable deadlines are listed on page 2 of the attached Notice, and include, among other things, any:
- reply to an Office notice or action;
- issue fee;
- notice of appeal; appeal brief; reply brief; and
- appeal forwarding fee.
Moreover, please note that the following are not extendable under the Notice:
- maintenance fees for large entities;
- patent application filing or associated filing fees;
- the deadline to covert a provisional application to a non-provisional;
- the 12-month deadline to file a foreign priority case or the 30-month deadline to file a §371 national phase of a PCT; and
- any deadlines already under an extension of time.
In order to extend a deadline, we will need to make the certification statement required by the Notice. The certification statement is made on a case-by-case basis.
The certification statement is associated with the Applicant being “personally affected” by the COVID-19 outbreak such that the outbreak “materially interfered with timely filing or payment” of that action or fee as a result of, for example, “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances”. We recommend this certification be used judiciously since if any patents obtained using this deferral are litigated, we expect defense counsel will challenge the certification statement as untrue. Even if the patent owner were to prevail on this issue, the uncertainty and/or cost may not be cost justified.
