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USPTO Extends Filing and Fee Payment Dates under CARES Act

Alert
04.02.2020
By Steven Kazmierski, Ph.D.

Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the USPTO Director authorized a 30-day extension for filing dates and fee payment for those who are unable to meet patent-related deadlines due to the COVID-19 pandemic. The 30-day extension applies to filings or fees due between, and including, March 27, 2020 and April 30, 2020. Because the USPTO remains open for filing and fee payment, the 30-day time extension is only available if the delay is due to the COVID-19 outbreak.

Relief is available in patent application and reexamination proceedings and in proceedings before the Patent Trial and Appeal Board (PTAB). In patent application and reexamination proceedings, the due date is extended 30 days from the initial date it was due for any:

i. Reply to an office notice issued during pre-examination processing by a small or micro entity

ii. Reply to an office notice or action issued during examination or patent publication proceeding

iii. Issue fee

iv. Notice of appeal under 35 USC § 134 and 37 CFR § 41.31

v. Appeal brief under 37 CFR § 41.37

vi. Reply brief under 37 CFR § 41.41

vii. Appeal forwarding fee under 37 CFR § 41.45

viii.Request for an oral hearing before the PTAB under 37 CFR § 41.47

ix. Response to a substitute examiner's answer under 37 CFR § 41.50(a)(2)

x. 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 CFR § 41.50(b)

xi. Maintenance fee, filed by a small or micro entity

xii. Request for rehearing of a PTAB decision under 37 CFR § 41.52

The filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 pandemic. A delay in filing or payment is due to the COVID-19 pandemic 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 pandemic such that the pandemic materially interfered with timely filing or payment. Situations where a person is personally affected by the COVID-19 pandemic include office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness and other circumstances.

In PTAB proceedings, a 30-day extension of time is available upon a request affirming that a filing due between, and including, March 27, 2020 and April 30, 2020, was or may be delayed due to the COVID-19 pandemic. The due date can be extended for:

i. A request for rehearing of a PTAB decision under 37 CFR §§ 41.125(c), 41.127(d), or 42.71(d)

ii. A petition to the Chief Judge under 37 CFR § 41.3

iii. A patent owner preliminary response in a trial proceeding under 37 CFR §§ 42.107 or 42.207, or any related responsive filings

If the USPTO extends a deadline for a patent owner preliminary response in a trial proceeding or any related responsive filings, the PTAB may also extend the deadlines provided in 35 USC §§ 314(b) and 324(c). A party may request an extension of time for other situations not specifically stated in (i)-(iii) by contacting the PTAB. 

In cases where deadlines were missed before March 27, 2020, applicants can take advantage of the USPTO's March 16, 2020 notice that it will waive the fee under 37 CFR § 1.17(m) for petitions to revive applications under 37 CFR § 1.137 when applicants were unable to timely reply to an office communication due to the COVID-19 outbreak. 

Internationally, national patent office responses cover a spectrum of the offices being closed to operating completely normally. Many national patent offices are also providing extensions of time due to the COVID-19 pandemic. World Intellectual Property Organization continues operating normally without any planned extension. Some national patent offices are allowing extensions, but with specific exceptions. For any specific country or regional patent office, we recommend checking directly with the patent office of interest.

For more information on the filing dates under the CARES Act, please contact Steven Kazmierski, Robert Bain, Jeannie Boettler, Jason Conway and Samir Mehta or the Stinson LLP contact with whom you regularly work.

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