U.S. PTO COVID-19 Update: Patent Office Extensions Through May 31, 2020

Spilman Thomas & Battle, PLLC

Spilman Thomas & Battle, PLLC

The Director of the U.S. Patent and Trademark Office on April 28, 2020 signed a Notice of Extended Waiver for certain deadlines associated with patent-related filings, if the missed deadline resulted from situations relating to COVID-19. Due dates between March 27 and May 31, 2020 are extended until June 1, 2020. The order supersedes a previous order dated March 13, 2020 and includes the same list of applicable filings as follows:

  • Reply to notice from pre-examination processing by a small or micro entity (notably not applicable to large-entity); Notice of Omitted Items, File Corrected Application Papers, Incomplete Application, Nucleotide Sequence Requirements, Missing Parts of Application, and Missing Requirements;
  • Reply to substantive Office action (includes, e.g., Final or Non-final and Non-Compliant Amendment);
  • Issue fee;
  • Notice of appeal;
  • Appeal brief;
  • Reply brief;
  • Appeal forwarding fee;
  • Request for an oral hearing before Patent Trial and Appeal Board ("PTAB");
  • Response to a substitute examiner's answer;
  • Amendment when reopening prosecution;
  • Maintenance fee, (small or micro entity only); or
  • Request for rehearing of a PTAB decision. 

The deadlines falling in the waiver period March 27 through May 31 will be considered timely if filed on or before June 1, 2020. Each filing must include a statement that the delay in filing or payment was due to the COVID-19 outbreak.
Relief is also provided in PTAB Proceedings. 

Upon a request to the USPTO affirming that a filing due between, and inclusive of, March 27, 2020 and April 30, 2020, the PTAB has provided 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. Note this relief applies through April 30, 2020, and relief sought after that date should be requested as in all other situations.
In the event the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings, the PTAB may also extend the deadlines for instituting inter partes and post-grant review. For all other situations, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing before the Board can be made by contacting the PTAB. The April 28 Notice continues to provide relief in the form of a waiver of the petition fee for the revival of applications (and reexamination proceedings), but limits the eligible applications and reexamination proceedings to those that became abandoned, terminated, or limited on or before May 31, 2020, as a result of the COVID-19 outbreak.
A delay in filing or payment is due to the COVID-19 outbreak if a practitioner, applicant, owner, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, 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.
The Patent Office remains open for filing documents and fees, either by EFS, USPS Express Mail, fax, and the service window at the Patent Office in Alexandria, Virginia. Only COVID-19 related delays are subject to this waiver. 
We anticipate the Patent Office will accept all COVID-19 certification statements, absent an obvious misrepresentation, as the intent of the Notice is to provide relief to applicants during the pandemic--not a significant hurdle to overcome in the current pandemic environment. However, as in any filing with the PTO, applicants are cautioned not to make intentional misstatements when filing documents, as it could cause the invalidation of a patent later.   
The full text of the Director's Notice can be downloaded here.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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