USPTO News Briefs - June 2020

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USPTO and JPO Issue Joint Message

Yesterday, Director Andrei Iancu of the U.S. Patent and Trademark Office and Commissioner Akira Matsunaga of the Japan Patent Office issued a joint message to express the Offices' "most heartfelt sympathies to the victims of the novel coronavirus (COVID-19) and their families," and "hope that everyone affected recovers soon and that the spread of COVID-19 infection will end as soon as possible."  Noting that the pandemic has had a significant negative impact on the global economy, the two Offices also pointed out that the pandemic has served as a reminder of the importance of innovations that support our society.  The two Offices also reminded stakeholders of their "close cooperative relationship" to "establish[] various initiatives to support inventors worldwide."  The Offices conclude the joint message by expressing their belief that "we will be able to overcome this crisis by promoting and utilizing innovative technologies."

USPTO to Allow Electronic Filing of PTE Applications

In an official notice issued last week, the U.S. Patent and Trademark Office announced that because it considered the effects of the COVID-19 pandemic to be an "extraordinary situation" within the meaning of 37 C.F.R. § 1.183, the Office would permit patentees to file initial Patent Term Extension applications that meet certain criteria via EFS-Web or Patent Center.  In particular, the official notice states that "the prohibition against filing initial patent term extension applications in accordance with 37 CFR 1.740 or 37 CFR 1.790 via the USPTO patent electronic filing systems is hereby waived until further notice."  The notice also states that "the requirements in 37 CFR 1.740(b) and 37 CFR 1.790(b) for two additional copies of the initial extension application are waived until further notice."  In order to be entitled to a filing date for an initial patent term extension application filed via EFS-Web or Patent Center, the notice sets forth the following requirements:

  1. An appropriate document description:
    a. "Patent Term Extension Application Under 35 USC 156" (Doc Code TERM.REQ) must be selected for an initial submission under 35 U.S.C. 156(d)(l) (governed by 37 CFR 1.740), or
    b. "PTE Interim Patent Extension filed" (Doc Code TERM.REQ.ITM) must be selected for an initial submission under 35 U.S.C. 156(d)(5) (governed by 37 CFR 1.790);
  2. An email address in the contact information to facilitate contact with the applicant's representative; and
    3. The applicable fee:
    a. the fee set forth in 37 CFR 1.20(j) for submission of an initial application for patent term extension under 37 CFR 1.740, or
  3. the fee set forth in 37 CFR 1.20(j) for submission of an initial application for interim patent term extension under 37 CFR 1.790.

While the notice indicates that the waiver will be "effective only until the USPTO provides further notice," the Office also indicates that it is making efforts to allow for electronic filing of PTE applications on a permanent basis.

USPTO Makes COVID-19 Statement Form Available

In a Patent Alert e-mail distributed last month, the U.S. Patent and Trademark Office announced the release of a form to assist applicants with making the required statement of delay due to the COVID-19 pandemic (see "USPTO Announces Further Extension of Certain Patent Deadlines").  The Office noted that the "Statement of Delay Due to COVID-19 Outbreak" form (PTO/SB/449) is being released in response to requests from applicants for guidance on how best to make the required statement as well as to assist the Office in processing those requests.

USPTO to Allow Electronic Filing of Plant Patent Applications

In an official notice issue last month, the U.S. Patent and Trademark Office announced that because it considered the effects of the COVID-19 pandemic to be an "extraordinary situation" within the meaning of 37 C.F.R. § 1.183, the Office will temporarily permit the filing of plant patent applications and follow-on documents via the EFS-Web or Patent Center until further notice.  More details about the Office's temporary waiver can be found in the official notice.  However, as with the PTE application waiver described above, the Office indicates that it is making efforts to allow for electronic filing of plant patent applications on a permanent basis.

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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