The Director of the U.S. Patent and Trademark Office on March 31, 2020 signed a notice waiving certain deadlines for patent-related filings, if the missed deadline resulted from situations relating to COVID-19. Due dates between March 27 and April 30 are extended for some filings including:
- Reply to notice from pre-examination processing by a small or micro entity (notably not applicable to large-entity); Notice of Omitted Items, File Corrected Application Papers, Incomplete Application, Nucleotide Sequence Requirements, Missing Parts of Application, and Missing Requirements;
- Reply to substantive Office action (includes, e.g., final or Non-final and Non-Compliant Amendment);
- Issue fee;
- Notice of appeal;
- Appeal brief;
- Reply brief;
- Appeal forwarding fee;
- Request for an oral hearing before PTAB;
- Response to a substitute examiner's answer;
- Amendment when reopening prosecution;
- Maintenance fee, (small or micro entity only); or
- Request for rehearing of a PTAB decision under.
The deadlines are extended 30 days from the initial date it was due. Each filing must include a statement that the delay in filing or payment was due to the COVID-19 outbreak.
Similar relief is due in Reexamination Proceedings. PTAB filing extensions are automatic for some limited filings -- request for rehearing, petition to chief judge, and patent owner preliminary response and related responsive filings. However, a request for extension of time for any other situation may be submitted by telephone or email to the appropriate section.
A delay in filing or payment is due to the COVID-19 outbreak if a practitioner, applicant, owner, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including 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 Office remains open for filing documents and fees, either by EFS, USPS Express Mail, fax and the service window at the Patent Office in Alexandria, Virginia. Only COVID-19-related delays are subject to this waiver.
We anticipate the Patent Office will accept all COVID-19 certification statements, absent an obvious misrepresentation, as the intent of the notice is to provide relief to applicants during the pandemic - not a significant hurdle to overcome in the current pandemic environment. However, as in any filing with the PTO, applicants are cautioned not to make intentional misstatements when filing documents, as it could cause the invalidation of a patent later.
The full text of the Director's notice can be downloaded here.
If you have any questions, please contact our COVID-19 Task Force or our Intellectual Property Practice Group.
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