July 5, 2020

Volume X, Number 187

July 03, 2020

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July 02, 2020

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USPTO Extends, Modifies 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) with important modifications. The most general relief now only applies to small and micro entities “personally affected by the COVID-19 outbreak,” although large entities can request relief on a case-by-case basis. The USPTO also is now permitting initial applications for patent term extension under 35 USC §156 to be filed electronically.

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 explaining how the agency would exercise that authority for patent-related deadlines was issued March 31, 2020. Those particulars were superseded by the USPTO’s April 28 notice, which revised some details and extended the deferral period to June 1, 2020. 

As set forth in the May 27, 2020 notice, the general ability to defer deadlines is extended for small and micro entities only to July 1, 2020. The notice states simply:

Specifically, for small and micro entities, filings that would have been deemed timely filed, if filed by June 1, 2020 pursuant to the CARES Act Notice dated April 28, 2020, will now be deemed timely filed if filed by July 1, 2020. 

Large entities still affected by COVID-19 can request relief on a case-by-case basis: 

For large entities, after May 31, 2020, relief will be available to those who need it on a case-by-case basis. Such requests can be submitted through a petition for an extension of time or a petition to revive. 

Additionally, for patent applicants of all sizes, the UPSTO will waive petition fees for revival of applications that became abandoned on or before June 30, 2020, due to the COVID-19 outbreak, pursuant to requirements discussed in this article.

Electronic Filing of Initial Patent Term Extension Applications 

In a separate notice, the USPTO announced that it is now (“until further notice”) permitting initial applications for patent term extension under 35 USC §156 to be filed electronically, via the USPTO’s electronic filing systems (EFS-Web or Patent Center). Consequently, the USPTO is waiving the requirements in 37 CFR §§ 1.740(b) and 1.790(b) to file two additional copies of the initial application for electronically filed applications. 

As summarized in the notice, this change gives applicants three ways to file initial patent term extension applications:

  1. via the USPTO’s electronic filing systems (EFS-Web or Patent Center);

  2. via the United States Postal Service by Priority Mail Express® under 37 CFR § 1.10 or with a certificate of mailing under 37 CFR § 1.8; or 

  3. by hand-delivery to the USPTO’s Customer Service Window.

The notice provides detailed information on electronic filing requirements, and should be consulted when filing an application for patent term extension electronically.

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

© 2020 Foley & Lardner LLPNational Law Review, Volume X, Number 153


About this Author

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

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...