21May 2020

On April 28, 2020, the U.S. Patent and Trademark Office (USPTO) announced that certain patent-related documents and certain required fees could be submitted at a later time. These additional extensions apply to deadlines that would have been otherwise due between March 27 and May 31, 2020, and which are now considered timely if submitted by June 1, 2020. The USPTO will continue to evaluate and adjust the situation according to the impact of the pandemic on its operations.

The April 28 notice states that “a person who is unable to meet patent-related timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of certain deadlines.” 

The April 28 notice sets forth the deadlines for which relief may be obtained:

  1. reply to an Office notice issued during pre-examination processing by a small or micro entity;
  2. reply to an Office notice or action issued during examination or patent publication processing;
  3. issue fee;
  4. notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  5. appeal brief under 37 C.F.R. § 41.37;
  6. reply brief under 37 C.F.R. § 41.41;
  7. appeal forwarding fee under 37 C.F.R. § 41.45;
  8. request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;
  9. response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
  10. 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);
  11. maintenance fee, filed by a small or micro entity; or
  12. request for rehearing of a PTAB decision under 37 C.F.R. § 41.52;
  13. request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
  14. petition to the Chief Judge under 37 C.F.R. § 41.3.

Only the deadlines that are set forth above, and which originally occur between March 27, 2020 to May 31, 2020, will be entitled to relief as set forth according to the USPTO’s April 28 notice. Note: the previous notice addressed deadlines occurring between March 27, 2020 to April 30, 2020. In contrast with the March 31 Notice, the April 28 notice states that:

[Applicable replies or fees] due between, and inclusive of both, March 27, 2020, and May 31, 2020, will be considered timely if filed on or before June 1, 2020, provided that the filing or payment is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in [the Notice].

The USPTO points out that an Office notice issued during pre-examination processing (item i) includes, for example, a Notice of Omitted Items, Notice to File Corrected Application Papers, Notice of Incomplete Application, Notice to Comply with Nucleotide Sequence Requirements, Notice to File Missing Parts of Application, and Notification of Missing Requirements; that an Office notice or action issued during examination (item ii) includes, for example, an Office action (either final or non-final) and Notice of Non-Compliant Amendment; and that an Office notice or action issued during patent publication processing (item ii) includes, for example, a Notice to File Corrected Application Papers issued by the Office of Data Management.

The Office’s Notice also provides additional relief before the Patent Trial and Appeal Board (PTAB).  

The Office will continue to provide relief in the form of a waiver of the petition fee for the revival of applications (and reexamination proceedings), but will limit this relief to applications and reexamination proceedings that became abandoned (or terminated or limited) on or before May 31, 2020, as a result of the COVID-19 outbreak.

Please contact me at silvia@salvadorilaw.com with questions or comments. 

Silvia Salvadori, PhD

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com