Recognizing the continued impact of the COVID-19 pandemic on many applicants and inventors, on June 29, 2020, the USPTO announced further extensions for small and micro entities to pay certain patent-related fees. In effect, certain deadlines that would have been deemed timely if filed between March 27, 2020 and July 1, 2020 under prior extensions will now be considered timely if paid on or before September 30, 2020. However, the USPTO noted that some relief provided in past extensions is ending as businesses begin to resume operations. An overview of the USPTO’s earlier extension of deadlines to file certain patent- and trademark-related documents and fees can be found in a May 28, 2020 Lathrop GPM IP alert, available here. While additional relief may be considered on a case-by-case basis, patent applicants should be mindful of all upcoming deadlines and whether additional fees may be avoided in view of the USPTO’s actions.
The USPTO’s new extension, provided in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), modifies prior extensions issued by the USPTO on March 31, 2020, April 28, 2020, and May 27, 2020. However, the new extension only relates to the following fee payments for small and micro entities:
- Basic filing fee, search fee, examination fee, and late filing surcharge;
- Basic national fee;
- Issue fee; or
- Maintenance fee.
Such fees will be deemed timely if filed on or before September 30, 2020 and accompanied by a statement verifying that any delay in payment was due to the COVID-19 pandemic. A delay is due to the COVID-19 outbreak if someone associated with the filing or payment, including applicants, inventors, and attorneys, was personally affected by the outbreak through reasons such as office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances that materially interfered with timely filing or payment.
Notably, the USPTO’s notice does not extend any deadlines for substantive actions, such as filing applications or responding to Office Actions. Other extensions of time and relief are still available on a case-by-case basis if submitted with a petition and the applicable fees. Further, the USPTO will continue to waive the petition fee for filing a petition to revive any patent or application that became abandoned because a filing or payment could not be timely submitted due to the COVID-19 outbreak. However, in accordance with the USPTO’s June 29, 2020 notice, all petitions to waive this petition fee must be filed by July 31, 2020.
The USPTO noted further that it does not expect to issue any further broad-based extensions. However, the USPTO will continue to monitor the effect of the ongoing COVID-19 outbreak, especially on small businesses and individuals, and evaluate any impact on the USPTO’s operations.
The USPTO’s Official Notice for patent matters can be found here.
