Amid concerns from inventors, applicants and their representatives that the COVID-19 outbreak is creating hardships in maintaining the prosecution and protection of patents and trademarks, the Director of the United States Patent and Trademark Office (USPTO) issued on March 31, 2020, a Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). This Notice follows several other actions by the USPTO to address the uncertainty and difficulties being created by the pandemic, including waiver of fees associated with reviving applications abandoned due to the outbreak. These and other COVID-19 topics of interest are being compiled on the USPTO’s website. The World Intellectual Property Organization is similarly maintaining a website for COVID-19 updates.

The CARES Act, a congressional response to the economic impact of the outbreak, includes a provision that grants temporary authority to the USPTO Director to “toll, waive, adjust, or modify” certain timing deadlines if the events surrounding the emergency (1) materially affect the functioning of the USPTO; (2) prejudice the rights of applicants, registrants, patent and trademark owners, or others appearing before the USPTO; or (3) prevent applicants, registrants, patent and trademark owners, or others appearing before the USPTO from filing a document or fee with the Office.¹

While the USPTO remains open and is well-suited for remote work of its examining corps, the Director determined that the situation has prejudiced the rights of applicants, patent owners or others appearing before the USPTO in patent matters and has prevented applicants, patent owners or others appearing before the USPTO in patent matters from filing a document or fee with the Office. The Director cited the disruption to businesses, law firms and inventors stemming from the shutdowns, quarantines and stay-at-home orders that are currently in place around the country.

Relief is granted in the form of a 30-day extension for many deadlines that fall on or between March 27, 2020 and April 30, 2020. A list of those deadlines that may be extended is found below and notably includes due dates for responses to non-final and final Office Actions, Issue Fees, Maintenance Fees (for a micro or small entity), and several appeal-related deadlines before the USPTO. In addition, certain Patent Trial and Appeal Board (PTAB) deadlines are extendible by 30 days, including requests for rehearing of a PTAB decision, petitions to the Chief Judge, and patent owner preliminary responses.

Extendible Deadlines in Patent Application and Reexamination Proceedings

• Reply to a USPTO notice issued during pre-examination processing by a small or micro entity

• Reply to a USPTO notice or action issued during examination or patent publication processing

• Issue Fee

• Notice of Appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31

• Appeal Brief under 37 C.F.R. § 41.37

• Reply brief under 37 C.F.R. § 41.41

• Appeal forwarding fee under 37 C.F.R. § 41.45

• Request for an oral hearing before the PTAB under 37 C.F.R. § 41.47

• Response to a substitute examiner's answer under 37 C.F.R. § 41.50(a)(2)

• Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b)

• Maintenance fee, filed by a small or micro entity

• Request for rehearing of a PTAB decision under 37 C.F .R. § 41.52.

Extendible Deadlines in PTAB Proceedings

• Request for rehearing of a PTAB decision under 3 7 C.F .R. §§ 41.125(c), 41.127(d) or 42.71(d)

• Petition to the Chief Judge under 37 C.F.R. § 41.3

• Patent owner preliminary response in a trial proceeding under 3 7 C.F.R. §§ 42.107 or 42.207, or any related responsive filings

• In the event that the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

Deadlines that importantly are not extendible under the USPTO Notice include deadlines for claiming priority to an already-filed application, as might be done in a non-provisional, continuation, divisional or continuation-in-part application.

Further, unlike some other international jurisdictions that have granted blanket extensions, the 30-day extension in the United States will only be granted if the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. According to the Notice, the extension will be granted:

if 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.

While the exception appears to broadly cover most situations that could arise as a result of the outbreak, it is yet to be determined how strictly it will be applied by the USPTO.

Overall, while there will certainly be situations in which requesting an extension under this Notice will be necessary and helpful, we generally recommend working to meet current deadlines without extensions to the degree possible.

Endnote