From March to June 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. 

In view of the COVID-19 pandemic imposing significant hardships on small businesses and individual inventors even as businesses reopen or resume business, the USPTO issued another notice under the CARES Act on June 29, 2020.  This newly issued notice is limited to small and micro entities and establishes that certain filings or payments due from March 27, 2020 to September 29, 2020 will be considered timely filed if they are filed on or before September 30, 2020 with a qualifying COVID-19 statement.

Other forms of relief previously available to large entities and previously applied to other filings and payments for small and micro entities are now only available on a case-by-case basis through fee waivers.  Additionally, due to updated USPTO requirements, stakeholders will no longer be able to waive the fee to file a petition to revive abandoned patent applications if the abandonment was due to COVID-19 after July 31, 2020.

In order to obtain the relief offered by the June 29th update, 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 September 29, 2020 are considered timely filed on or before September 30, 2020 by filing a COVID-19 statement?

• Basic filing fees, search fees, examination fees and late filing surcharges in response to office notices issued during pre-examination proceeding;
• Basic national stage fees;
• Issue fees;
• Maintenance fees.

Which deadlines for small and micro entities falling from March 27, 2020 to September 29, 2020 are not extendable?

• 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;
• Replies to office notices, non-final office actions, final office actions, and notices of non-compliant amendments during examination or patent publication processing;
• Certain 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, and replies to notifications of missing requirements).
• 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.
• Various PTAB filings (including requests for rehearing of a PTAB decision in an AIA trial or interference proceeding, and petitions to the Chief Judge);
• 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).

At this time, the USPTO has indicated that they do not intend to further extend the deadline to file certain patent, patent application, and PTAB related filings or payments.

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.