August 11, 2020

Volume X, Number 224

August 11, 2020

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August 10, 2020

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USPTO Extends CARES Act Deadline Relief

The United States Patent and Trademark Office (USPTO) has extended the period for deferring certain deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). The relief still applies only to those “personally affected by the COVID-19 outbreak,” but now affected applicants and patent owners can defer certain deadlines until June 1, 2020.

Deferring Patent Office Deadlines Under the CARES Act

As reported in this article, Section 12004 of the CARES Act granted the USPTO temporary authority to extend statutory deadlines. The USPTO’s original notice issued March 31, 2020, explained how the agency is exercising that authority for patent-related deadlines, which deadlines can be deferred, and what applicants need to do to obtain relief. As explained in this article, practitioners and stakeholders should note that (1) only certain deadlines are eligible for this relief, (2) only certain parties are eligible to claim this relief, and (3) some requests for extensions of deadlines in PTAB proceedings may need to be made in advance. 

The April 28 notice supersedes the March 31 notice and makes a few changes. Most of the substantive details are the same, except for provisions pertaining to deadlines in PTAB proceedings. Deadlines for a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d) or a petition to the Chief Judge under 37 C.F.R. § 41.3 no longer require a “request” if the filing is accompanied by the required statement that the delay in filing was due to the COVID-19 outbreak. On the other hand, it appears that deadlines for a patent owner preliminary response falling after April 30 only can be deferred under the “additional relief” protocol that requires a specific request and case-by-case approval. 

Reviving Abandoned Applications Without A Fee

The April 28 notice also revises the relief pertaining to applications that became abandoned “as a result of the COVID-19 outbreak,” originally discussed in this article. Now, this relief is limited to eligible applications and reexamination proceedings that became abandoned (or terminated or limited) on or before May 31, 2020, as a result of the COVID-19 outbreak. This notice also “harmonizes the statement that must be provided” to take advantage of the revival fee relief to be the same as that required for the CARES Act deadline relief.

The revival fee relief is available to “applicants or patent owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment ... having a due date of May 31, 2020, or earlier (when taking into account all available extensions of time under 37 C.F.R. 1.136(a)).” The USPTO will “waive the petition [to revive] fee in 37 C.F.R. § 1.l 7(m)” if the petition is accompanied by the required statement that the delay in filing or payment was “due to the COVID-19 outbreak,” i.e., that “a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through 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.”

The notice urges applicants and patent owners to seek revival “promptly,” and notes that document code PET.RELIEF can be used for submissions via the USPTO’s patent electronic filing systems (EFS-Web or Patent Center).

Answering Questions About COVID-19 Relief

The USPTO prefers that questions about these COVID-19 relief programs be emailed to Covid19PatentsRelief@uspto.gov. The USPTO also has a CARES Act Frequently Asked Question page that soon will be updated in view of the April 28 notice. 

© 2020 Foley & Lardner LLPNational Law Review, Volume X, Number 126

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About this Author

Courtenay C. Brinckerhoff, intellectual property  law attorney, Foley & Lardner  Law Firm
Partner

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s...

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