The Coronavirus Aid, Relief, and Economic Security Act ("CARES Act") allows the United States Patent and Trademark Office (USPTO) to extend the time to file certain patent-related documents or fees. Specifically, subsection 12004(a) of the CARES Act provides that the USPTO, “may toll, waive, adjust, or modify, any timing deadline ... in effect during the emergency period ... ,” when:
[T]he Director of the USPTO determines that the emergency related to such period:
- materially affects the functioning of the Patent and Trademark Office;
- prejudices the rights of applicants, registrants, patent and trademark owners, or others appearing before the Office; or
- prevents applicants, registrants, patent and trademark owners, or others appearing before the Office from filing a document or fee with the Office.
The Director has determined that the COVID-19 emergency 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. Accordingly, the USPTO has stated that due dates between, and inclusive of, both March 27, 2020, and April 30, 2020, will be extended 30 days from the initial date due for the following proceedings:
- reply to an Office notice issued during pre-examination processing) by a small or micro entity;
- reply to an Office 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 Patent Trial and Appeal Board (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; or
- request for rehearing of a PTAB decision under 37 C.F.R. § 41.52.
Importantly, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak and the person associated with the filing was personally affected by the COVID-19 outbreak 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.
The Patent Trial and Appeal Board also provided a 30-day extension of time for delays due to the COVID-19 outbreak as defined above for certain (i) requests for rehearing of a PTAB decision, (ii) petitions to the Chief Judge, or (iii) patent owner preliminary responses in a trial proceeding or related responsive filings.
Seyfarth Shaw's patent practice group continues to actively monitor the USPTO’s response to the COVID-19 pandemic. While the USPTO has provided assistance to inventors, applicants, and patent owners affected by the COVID-19 pandemic, compliance with all filing requirements and other actions is still required. Failure to comply may result in petition fees or abandonment. We are available to assist if you have any questions. For other COVID-19 information on a variety of legal topics, please visit our Resource Center.
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