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Will The USPTO Extend Deadlines Under The CARES Act?

While a number of patent offices around the world have extended some, most, or all deadlines “in view of the disruptions to public life caused by the COVID-19 outbreak” as the EPO put it, the USPTO has not. Until last week, that was because the Director lacks statutory authority to extend deadlines set by statute. However, the CARES Act signed into law on Friday, March 27, 2020, grants the Director temporary authority to extend deadlines. Now we wait to see if he will do so.

Temporary Authority Under The CARES Act

Section 12004 of the ‘‘Coronavirus Aid, Relief, and Economic Security Act’’ (the “CARES Act”) is entitled “TEMPORARY AUTHORITY OF DIRECTOR OF THE USPTO DURING THE COVID–19 EMERGENCY.” The basic grant of authority to extend deadlines provides: 

(a) IN GENERAL.—During the emergency period described in subsection (e), the Director may toll, waive, adjust, or modify, any timing deadline established by title 35, United States Code, the Trademark Act, section 18 of the Leahy-Smith America Invents Act (35 U.S.C. 321 note), or regulations promulgated thereunder, in effect during such period, if the Director determines that the emergency related to such period— (1) materially affects the functioning of the Patent and Trademark Office; (2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or (3) prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office. 

As set forth in paragraph (b), “[i]f the Director determines that tolling, waiving, adjusting, or modifying a timing deadline under subsection (a) is appropriate, the Director shall publish publicly a notice to such effect."

As set forth in paragraph (c), the “emergency period” “includes the duration of the portion of the emergency declared by the President pursuant to the National Emergencies Act on March 13, 2020, as a result of the COVID–19 outbreak (and any renewal thereof) beginning on or after the date of the enactment of this section and the 60 day period following such duration.” 

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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...