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Volume XII, Number 136

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May 13, 2022

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PTO Extends Time to Petition for Restoration of Right of Priority or Benefit

The US Patent and Trademark Office (PTO) extended the time to petition for restoration of the right of priority or benefit to certain prior-filed applications. Pursuant to the Coronavirus Aid, Relief, and Economic Security Act and 37 CFR § 1.183, the PTO also waived the associated petition fees.

For any nonprovisional application seeking priority of a prior-filed foreign application for which the 12-month time period under 35 USC § 119(a) (or six-month time period under 35 USC § 172) ended between, and inclusive of both, March 27, 2020, and July 30, 2020, the PTO will permit the two-month time period under § 119(a) for restoring the right of priority to a foreign application to run until the later of July 31, 2020, or the expiration of the two-month period set forth in § 119(a), and will waive the petition fee for a petition under 37 CFR § l.55(c), if the petition under § 1.55(c) is filed with a statement that the failure to timely file the application was due to the Coronavirus (COVID-19) outbreak.

For any nonprovisional application seeking benefit of a prior-filed provisional application for which the 12-month time period under § 119(e) ended between, and inclusive of both, March 27, 2020, and July 30, 2020, the PTO will permit the two-month time period under § 119(e) for restoring the benefit of a provisional application to run until the later of July 31, 2020, or the expiration of the two-month period set forth in 35 USC § 119(e), and will waive the petition fee for a petition under 37 CFR § l.78(b), if the petition under § 1.78(b) is filed with a statement that the failure to timely file the application was due to the COVID-19 outbreak.

For any international application, the PTO will waive the petition fee for a petition under 37 CFR § 1.452 to restore the right of priority for which the time period for filing the international application ended between, and inclusive of both, March 27, 2020, and July 30, 2020, provided that the application is filed within the two-month period set forth in § 1.452, and the petition under § 1.78(b) is filed with a statement that the failure to timely file the application was due to the COVID-19 outbreak.

A delay in filing or payment is due to the COVID-19 outbreak if a practitioner, applicant, patent owner, petitioner, inventor or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including via 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.

© 2022 McDermott Will & EmeryNational Law Review, Volume X, Number 176
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About this Author

Bernard P. Codd, McDermott WIll Emery Law Firm, Intellectual Property Attorney
Partner

Bernard P. Codd is a partner in the law firm of McDermott Will & Emery LLP and is based in the Washington, D.C., office.  He focuses his practice on patent prosecution and opinions in the areas of semiconductor device and manufacturing, battery, fuel cell, photolithography, chemical, metallurgy, and polymer technologies.

202-756-8182
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