USPTO Announces Additional Extension of Certain Patent Deadlines for Small and Micro Entities

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP

Impact of COVID-19 Pandemic on Patent Offices – June 29 Update

In a notice posted on its website yesterday, the U.S. Patent and Trademark Office announced that it was further extending the time to pay certain required fees, but only for certain types of entities.  As with the initial extensions announced by the Office on March 31, 2020 (see "USPTO Announces Extension of Certain Patent Deadlines"), the extension of those deadlines announced by the Office on April 28, 2020 (see "USPTO Announces Further Extension of Certain Patent Deadlines"), and the further extension of those deadlines announced by the Office on May 27, 2020 (see "USPTO Announces Further Extension of Certain Patent Deadlines for Small and Micro Entities"), 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.

According to the Office's latest notice, the additional extensions apply to deadlines for the payment of certain required fees that would have been otherwise due between March 27 and September 29, 2020, which "will be considered timely if paid on or before September 30, 2020," provided that the payment is accompanied by a statement that the delay in payment was due to the COVID-19 outbreak, as defined in the Office's April 28, 2020 noticeHowever, as in the Office's May 27, 2020 notice, the Office's latest notice makes it clear that the additional extensions are "[f]or small and micro entities only" (emphasis added).  The Office's latest notice also restricts the extensions to the deadlines for the payment of the following required fees:

a) basic filing fee, search fee, examination fee, and late filing surcharge (37 CFR § 1.16(f), 1.16(g), or 1.492(h)) due in reply to an Office notice issued during pre-examination processing;
b) basic national fee;
c) issue fee; or
d) maintenance fee;

In addition to the fee deadline extensions listed above, the Office's notice states that "other extensions of time and other relief remain available to those who need it on a case-by-case basis."  According to the notice, Applicants can submit one of three petitions together with the applicable petition fee (unless the fee is waived):

a) extensions of time under 37 CFR § 1.136 remain available for filing replies to Office actions and notices issued during patent application processing or examination;

b) petitions under 37 CFR § 1.137 to revive an application remain available if an inability to file or pay patent-related documents or fees by their due date has resulted in the abandonment of an application or termination or limiting of prosecution in a reexamination proceeding; and

c) petitions under 37 CFR § 1.378 to accept a delayed maintenance payment remain available if a maintenance fee has not been paid by its due date.

For petitions to revive, the Office notes that for all entities, the Office will continue to provide relief in the form of a waiver of the petition fee for the revival of applications that became abandoned, or reexamination proceedings that became terminated or limited, as a result of the COVID-19 outbreak.  However, the Office's latest notice sets a deadline of July 31, 2020, for the submission of any petition under 37 CFR § 1.137 that will be eligible for the fee waiver.  Applicants will still have to file a statement with their petition to revive indicating that the delay in filing or payment was due to the COVID-19 outbreak as defined in the April 28, 2020 notice.

The Office's latest notice also indicates that for proceedings before the Patent Trial and Appeal Board, requests for an extension of time where the COVID-19 outbreak has prevented or interfered with a PTAB filing can be made by contacting the PTAB at 571-272-9797 or by e-mail at (for AIA trials), (for PTAB appeals), or (for interferences).

The Office's latest notice concludes by stating that "[t]he USPTO recognizes that the COVID-19 pandemic continues to impose various hardships, especially on small businesses and individuals, and will continue to evaluate the evolving situation around the COVID-19 outbreak and the impact on the USPTO's operations and stakeholders."  Nevertheless, the Office notes that it "does not anticipate any further broad-based extensions beyond what is outlined in this Notice."

Patent-related inquiries regarding the Office's latest notice can be directed by e-mail to or by telephone to the Office of Patent Legal Administration at 571-272-7704.

Patent Docs will continue to monitor and report on patent-related developments related to the COVID-19 pandemic.  In addition, we encourage our readers to let us know about developments related to the COVID-19 pandemic at other patent offices.

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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