CORONAVIRUS: Patent Frequently Asked Questions
UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.
The Patent Office is allowing certain filing and fee deadlines to be extended due to the coronavirus pandemic in the US. Below are common and frequently asked questions about this change:
Question 1: Coronavirus has prevented me from meeting my deadline. What can I do?
The US Patent and Trademark Office has instituted a 30-day extension of time for some patent deadlines. You may be able to benefit.
Question 2: How do I take advantage of the 30-day extension of time?
If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered timely when made within 30 days of the original due date. However, to qualify, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Only certain situations will qualify as delays due to the outbreak. More information is available at the official Notice of Waiver of Patent-Related Timing Deadlines under CARES.
Question 3: Are there any requirements about how the statement has to be made or presented?
The statement does not have to be verified or submitted in the form of an affidavit or declaration. It must, of course, be truthful, and it is recommended that you keep detailed internal records should there later be a question as to the nature of the delay.
Also, rather than including the statement within a normal filing, it is recommended that the statement be included in a separate paper. While the statement can be included in the paper lodged with the Patent Office, it may be initially missed by the Office and delays could result before it is accepted. If included within a filing, it should be made in a conspicuous manner.
Question 4: What qualifies as “a delay due to the outbreak?”
At this time, it is not clear exactly which situations will qualify as being due to the outbreak.
The applicant, agent, owner, petitioner, inventor, or attorney must be personally affected by the outbreak, so being sick will certainly qualify. However, it is less certain whether they actually have to be sick themselves. The rule identifies that one must be affected by the outbreak, not necessarily the disease. So it is possible that having to stay home to take care of a kid whose school was closed could be a qualifying reason (though it should be noted that the Office has not specifically identified this as qualifying reason). If an office closure, cash flow interruption, travel delays, or inaccessibility of files or other materials causes the delay, this will also qualify. The new rule further states that “similar circumstances” to the above will qualify if they materially interfered with the on-time filing or payment. While it does not appear that the Office requires details regarding how the outbreak delayed the filing, it may be a good idea to provide some basic information about the delay
Question 5: When does an extension start??
Day 1 of the 30-day extension of time is the first day after the original due date, in other words, the first day after the original due date.
Question 6: What if the 30-day extension of time ends on a Saturday, Sunday, or federal holiday?
If the 30-day extension of time ends on a Saturday, Sunday, or federal holiday, the extended deadline falls on the next regular business day.
Question 8: Are there any fees associated with extension?
No. The extension does not cost anything. The only fees that may be due are those associated with the filing or fee payment which is being extended.
Question 9: What appeal-related filings are eligible for a 30-day extension of time?
The following appeal-related filings are eligible for a 30-day extension of time:
- notice of appeal
- appeal brief
- reply brief
- appeal forwarding fee
- request for an oral hearing before the PTAB
- response to a substitute examiner’s answer
- amendment in connection with a new ground of rejection by the PTAB
- request for rehearing of a PTAB appeal decision
Question 10: Are all entities entitled to all CARES Act extensions?
No. Certain forms of relief are limited to small and micro entities.
Question 11: Which filing and fee extensions are only available to small and micro entities?
- replies to an Office notice issued during pre-examination processing, e.g.:
- reply to a notice of omitted items
- reply to a notice to file corrected application papers
- reply to a notice of incomplete application
- reply to a notice to comply with nucleotide sequences requirements
- reply to a notice to file missing parts of application (including, without limitation, the payment of the filing fees)
- reply to a notification of missing requirements
- a maintenance fee payment
Question 12: What PTAB filings are eligible for a 30-day extension of time?
- request for rehearing of a PTAB decision in an AIA trial or interference proceeding
- petition to the Chief Judge
- patent owner preliminary response in a trial proceeding, or any related responsive filing
In the event that the USPTO extends a deadline for a patent owner preliminary response or any related filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).
For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request for an extension of time can be made by contacting the PTAB.
Question 13: What PTAB filings are not eligible for an extension of time?
At this time, PTAB is not extending any statutory deadlines for filing an AIA petition under either 35 U.S.C. §§ 315(b) or 321(c).
Question 14: Has the Patent and Trademark Office provided any other relief in view of the COVID-19 outbreak?
Yes. The USPTO has waived the fee for petitions to revive applications that became abandoned because applicants could not meet the deadline for responding to an Office communication due to the COVID-19 outbreak. The Office has also waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.
Question 15: Will the USPTO extend the CARES Act relief beyond April 30?
At the time of this writing, the Patent and Trademark Office has not announced further extensions. However, I believe another 30-day extension is highly likely to be granted should the virus continue to keep the economy depressed for a few more weeks.
Question 16: If I have a question about CARES Act extensions, whom do I contact?
The USPTO has a help email dedicated to COVID, but I have found that emails sent to general email addresses at the USPTO never get returned. You can also contact the Office of Patent Legal Administration at 571-272-7704 (or 571-272-7703 for reexamination), or contact Arizona patent attorney Tom Galvani at 602-281-6481.