On March 31, 2020, the United States Patent and Trademark Office (“USPTO”) issued a notice permitting 30-day extensions to the time allowed to file certain patent-related documents and to pay certain required fees. Gibbons previously analyzed the first USPTO coronavirus guidance. For this second guidance, the USPTO determined, under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), 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.” The USPTO thus provided parties with the ability to extend certain patent deadlines if the party is personally affected by the COVID-19 outbreak.
The USPTO notice expressly provides that three Patent Trial and Appeal Board (PTAB) deadlines may be extended for 30 days upon request:
- a request for rehearing of a PTAB decision;
- a petition to the Chief Judge under 37 C.F.R. § 41.3; and
- a patent owner preliminary response in a trial proceeding.
“For all other situations, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing before the Board can be made by contacting the PTAB.” Relief under the notice is available if the deadline falls between March 27, 2020 and April 30, 2020, provided that the party seeking the extension 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.”
The USPTO notice also provides relief from certain deadlines falling between March 27, 2020 and April 30, 2020 for affected parties in patent application and reexamination proceedings. An affected applicant may extend the due date by 30 days for any:
- 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 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.
The notice stresses that the Patent Office remains open for business. The USPTO will “continue to evaluate the evolving situation around COVID-19 and the impact on the USPTO’s operations and stakeholders.”
As the USPTO issues further guidance related to patent procurement and enforcement, Gibbons will provide updates accordingly.