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USPTO Announces Possible Extensions Under CARES Act

On March 31, 2020, the United States Patent and Trademark Office (USPTO) announced extension of certain submissions and fees under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) as signed by President Trump on March 27.

If the following three steps are met, then the USPTO shall provide a 30-day extension of time.

STEP 1             Are you affected by the COVID-19 outbreak?

STEP 2             When is the submission or fee due?

STEP 3             What is the submission or fee that is due?

Please note that the USPTO provides for other situations to be considered as well (i.e., the relief under the CARES Act is not necessarily limited only to the steps detailed below).

STEP 1             Are you affected by the COVID-19 outbreak?

Is “a person associated with the filing or payment of fee” to the USPTO “personally affected by the COVID-19 outbreak”?

  • Examples of “person associated” include, but is not limited to, the following: the patent attorney, the patent agent, the applicant, the patent owner, the third-party requester, the inventor, etc.

  • Examples of “personally affected include, but is not limited to, the following: office closures, cash flow interruptions, inaccessibility of files, travel delays, personal or family illness, etc.

If the answer to STEP 1 is YES, then proceed to STEP 2.

STEP 2             When is the submission or fee due?

Is there a submission or a fee that is due for a patent application or a patent at the USPTO from March 27, 2020, to April 30, 2020?

If the answer to STEP 2 is NO, then you do not qualify for the time extension under the CARES Act (as notified by the USPTO on March 31, 2020).

If the answer to STEP 2 is YES, then proceed to STEP 3.

STEP 3             What is the submission or fee that is due?

For all entity types of applicants and patent owners, the following submission and fee qualify for the relief:

1. Reply to an Office notice or action issued during examination or patent publication processing;

2. Payment of issue fee;

3. Notice of appeal;

4. Appeal brief;

5. Reply brief;

6. Appeal forwarding fee;

7. Request for an oral hearing before the PTAB;

8. Response to a substitute examiner’s answer;

9. Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection; or

10. Request for rehearing of a PTAB decision.

Additionally, if the applicant or the patent owner is a small or micro entity, the following submission and fee also qualify for the relief:

  1. Reply to an Office notice issued during pre-examination processing by the USPTO; or

  2. Maintenance fee.

If any of the answers to STEPS 1-3 above is NO, you may still qualify for the 30-day extension of time under the CARES Act. For example, in PTAB proceedings, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing can still be made by contacting the PTAB directly.

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About this Author

Alexander J. Kim Intellectual Property Attorney Greenberg Traurig Law Firm Minneapolis
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Alex Kim protects companies’ inventions by acquiring patents and the associated monopoly rights for the companies.

Alex has wide-ranging experience in prosecuting patent applications in front of the United States Patent and Trademark Office. Alex knows how to strategize domestic and international intellectual property rights so that the companies can be positioned to reach their business goals.

Alex has a background in physics, chemistry, biophysics, computational biology, and physiology. He has deep knowledge across a...

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