May 25, 2020

USPTO Takes Case-By-Case Approach to COVID-19 Deadline Extensions

The United States Patent and Trademark Office (USPTO) has now announced how it will exercise its authority under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain statutory deadlines. Unlike other patent offices that have taken an across-the-board approach and extended all deadlines falling within a certain window to a later date, the USPTO is taking a case-by-case approach that applies only to those “personally affected by the COVID-19 outbreak.”

Patent Office Extensions of Time 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 announcement on March 31, 2020, explains how the agency is exercising that authority for patent-related deadlines. Three things practitioners and stakeholders should note are (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 relief available for deadlines in patent application and reexamination proceedings is as follows:

(a) The due date for any:

i. reply to an Office notice issued during pre-examination processing by a small or micro entity;

ii. reply to an Office notice or action issued during examination or patent publication processing;

iii. issue fee;

iv. notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;

v. appeal brief under 37 C.F.R. § 41.37;

vi. reply brief under 37 C.F.R. § 41.41;

vii. appeal forwarding fee under 37 C.F.R. § 41.45;

viii. request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;

ix. response to a substitute examiner's answer under 37 C.F.R. § 41.50(a)(2); 

x. amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);

xi. maintenance fee, filed by a small or micro entity; or

xii. request for rehearing of a PTAB decision under 37 C.F.R. § 41.52

that was due between, and inclusive of, both March 27, 2020 and April 30, 2020, will be extended 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (b), below.

The “due to” and “personally affected by” COVID-19 requirements are explained as follows:

(b) A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if 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 relief available for deadlines in PTAB proceedings is as follows:

(a) Upon a request to the USPTO affirming that a filing due between, and inclusive of both, March 27, 2020 and April 30, 2020 was or may be delayed due to the COVID-19 outbreak as defined above in subsection (l)(b), the PTAB shall provide a 30-day extension of time for:

i. a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d);

ii. a petition to the Chief Judge under 37 C.F.R. § 41.3; or

iii. a patent owner preliminary response in a trial proceeding under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive filings.

According to the announcement, if the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

Additional relief from PTAB deadlines may be available upon request by contacting the relevant section of the PTAB:

AIA trials: Trials@uspto.gov

PTAB appeals: PTAB_Appeals_Suggestions@uspto.gov

Interferences: InterferenceTrialSection@uspto.gov

Explaining the USPTO’s Case-By-Case Approach

As set forth in the USPTO press release, Director Andrei Iancu offered some explanations for the USPTO’s case-by-case approach to extending deadlines under the CARES Act:

“Inventors and entrepreneurs are the lifeblood of our economy, and we recognize that many of them are having difficulty as a result of COVID-19," said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Andrei Iancu. "As a result, we are working to provide as much relief as possible to our stakeholders, consistent with our ability to maintain the USPTO’s fee-funded operations. We are especially mindful of the outsized impact on small businesses and independent inventors, and we have provided additional relief for these groups. Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can also hit the ground running once it passes.”

This statement suggests that while, for example, the European Patent Office and Canadian Intellectual Property Office have issued across-the-board extensions of the time, the USPTO has not done so because it needs to keep receiving user fees in order to maintain operations.

© 2020 Foley & Lardner LLP

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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...

202.295.4094
George Quillen, Patent interference litigator, appeals, prosecution, Foley and Lardner
Partner

George E. Quillin is a partner and intellectual property lawyer with Foley & Lardner LLP. Mr. Quillin litigates patent interferences and patent appeals, and counsels clients in patent prosecution. He is a member of the firm’s IP Litigation, Mechanical & Electromechanical Technologies and Appellate Practices.

202-672-5413