USPTO Extends Patent Deadlines for Small and Micro Entities

From March to May of 2020, the United States Patent and Trademark Office (“USPTO”) responded to the COVID-19 outbreak by offering various forms of relief to stakeholders.  The widest ranging of these relief efforts was issued under the CARES Act and relates to how certain patent and trademark deadlines would be handled by the USPTO. 

The CARES Act relief initially provided relief for all business entities facing COVID-19 via, upon a proper showing, extending the deadline for certain patent, patent application, and Patent Trial and Appeal Board (“PTAB”) related  filings or payments originally due between March 27 to May 31, 2020 to be considered timely filed on or before June 1st, 2020.

In view of the COVID-19 pandemic imposing significant hardships on small businesses and individual inventors, on May 27, 2020, the USPTO issued another notice under the CARES Act stating that certain filing or payments due by small and micro entities will be now considered timely filed if they are filed on or before July 1, 2020 with a qualifying COVID-19 statement.

This additional relief only applies to small and micro entities such that the prior relief granted to large entities is no longer available.  Rather, large entities will only be able to obtain relief, in the form of fee waivers, on a case-by-case basis.

In order to obtain the relief offered by the CARES Act, qualifying small and micro entity applicants and patent owners need to file a COVID-19 statement with those filings or payments.  A COVID-19 statement pertains to the delay in filing or payment being due to the COVID-19 outbreak by 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.  A USPTO form that can be used to make such a statement can be found here.

A summary of the permitted patent-related deadline extensions provided by the USPTO is detailed below.

Which deadlines for small and micro entities falling from March 27, 2020 to June 30, 2020 are considered timely filed on or before July 1, 2020 by filing a COVID-19 statement?

  • Replies to office notices, non-final office actions, final office actions, and notices of non-compliant amendments during examination or patent publication processing;
  • Issue fees;
  • Appeal-related filings, including:
    • notices of appeal,
    • appeal briefs,
    • reply briefs, 
    • appeal forwarding fees,
    • requests for an oral hearing before the PTAB,
    • responses to a substitute examiner's answer,
    • amendments in connection with a new ground of rejection by the PTAB, and
    • requests for rehearing of a PTAB appeal decision);
  • Various PTAB filings (including requests for rehearing of a PTAB decision in an AIA trial or interference proceeding, and petitions to the Chief Judge);
  • Maintenance fees;
  • Replies to office notices during pre-examination processing, including:
    • replies to notices of omitted items,
    • replies to notices to file corrected application papers,
    • replies to notices of incomplete application,
    • replies to notices to comply with nucleotide sequences requirements,
    • replies to notices to file missing parts of application (including, without limitation, the payment of the filing fees), and
    • replies to notifications of missing requirements).

Which deadlines falling from March 27, 2020 to June 30, 2020 are not extendable for small and micro entities?

  • The deadline to file a non-provisional patent application claiming the benefit of a previously-filed foreign patent application;
  • The deadline to file a non-provisional application that obtains the benefit of a provisional application’s priority date;
  • Any co-pendency requirements between the parent application and a later-filed child application.
  • A patent owner’s preliminary response in a trial proceeding, or any related responsive filings due after April 30, 2020 which did not otherwise qualify for the existing 30-day extension of time for filings due from March 27, 2020 through April 30, 2020.

The USPTO continues to evaluate the changing circumstances surrounding COVID-19.

If you have any questions regarding USPTO deadline extensions or other intellectual property issues, please contact Holby Abern and Kenneth Matuszewski or your Neal Gerber Eisenberg attorney.

The content above is based on information current at the time of its publication and may not reflect the most recent developments or guidance. Neal Gerber Eisenberg LLP provides this content for general informational purposes only. It does not constitute legal advice, and does not create an attorney-client relationship. You should seek advice from professional advisers with respect to your particular circumstances.