CARES Act May Offer Short-term Relief for Patent Owners on Certain Filing and Fee Deadlines in April 2020

COVID-19
April 1, 2020
 

Although the Patent Office remains open for the electronic and physical filing of patent documents and the payment of patent-related fees during the current COVID-19 national emergency, the U.S. Patent and Trademark Office (USPTO) is using authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to offer a waiver of certain filing and fee payment deadlines associated with obtaining and maintaining patent applications and issued patents.

The USPTO has determined that the COVID-19 outbreak has prejudiced the rights of patent applicants, patent owners, and other persons appearing before the USPTO in patent matters and that the outbreak has prevented such stakeholders from filing documents or paying fees. The COVID-19 outbreak and/or the public and private measures taken to help contain the outbreak have significantly disrupted the operations of businesses, law firms and inventors. Particularly hard hit are small businesses and independent inventors, for whom patent-related fees may constitute a much more significant expense relative to larger entities, and who often have far less access to financial resources.

Irrespective of entity size, the COVID-19 outbreak is adversely impacting the ability of all stakeholders to meet patent-related filing and fee payment deadlines and thus threatens the protectability of valuable intellectual property. Accordingly, temporary relief is being offered in the form of a waiver of certain deadlines for making filings and fee payments otherwise due on or after March 27, 2020 and through April 30, 2020 for those adversely impacted by the COVID-19 outbreak. Importantly, when those eligible eventually make the filing/payment, they must include a sworn statement that the delay is due to the COVID-19 outbreak. Please note that while some of the relief being offered by the Patent Office is available to all stakeholders, some of the relief is available only to smaller entities or individuals. 

Specifically, the waiver is available for and to the following:

Deadlines relating to patent applications and reexaminations

  • Replies to office actions and notices:
    • Pre-Examination notices (small and micro entities only) – e.g., notices related to missing parts, missing requirements, omitted items, filing of corrected application papers, incomplete application, and compliance with nucleotide sequencing requirements;
    • Examination actions and notices – e.g., office actions (either final or non-final) and notices of non-compliant amendment; and
    • Patent publication processing notices – e.g., notices to file corrected application papers issued by the Office of Data Management;
  • Issue fees;
  • Maintenance fees (small and micro entities only); and
  • Appeals to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. §134:
    • Notices of appeal;
    • Appeal briefs;
    • Reply briefs;
    • Appeal forwarding fees;
    • Requests for an oral hearing before the PTAB;
    • Responses to a substitute examiner’s answer;
    • Amendments when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection; and
    • Requests for rehearing of a PTAB decision.

Deadlines relating to PTAB practice

  • A request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.12(c), 41.127(d), or 42.71(d);
  • A petition to the Chief Judge under 37 C.F.R. § 41.3; and
  • A patent owner preliminary response in an Inter Partes Review or Post-Grant Review, or any related responsive filings.*

*Note that if the PTAB extends the deadline for the patent owner preliminary response (or any related responsive filings), then the PTAB also may extend the Institution Decision deadline.

How long is the waiver in effect? 

For now, the waiver covers deadlines falling on or after March 27, 2020 and through and including April 30, 2020.

How long is the waiver? 

For now, the waiver extends the deadline for 30 days from the original date for filing/payment.

Who qualifies for the waiver? 

Those patent applicants, patent owners, or other persons appearing before the USPTO on patent matters facing one of the deadlines indicated above that files the required sworn statement that the delay was due to the COVID-19 outbreak when making the otherwise late filing/payment.

What are the criteria for determining if the delay is due to the COVID-19 outbreak? 

If the COVID-19 outbreak personally affects either the patent applicant, the patent owner, a petitioner, a third-party requester, an inventor, someone “associated with the filing or fee” in question (someone who has required information or whose involvement is otherwise necessary), or the legal counsel for any of the foregoing, and as a result there is material interference with the ability to make a timely filing or payment, the delay can be attributed to COVID-19.

Examples of circumstances that can materially interfere with making a timely filing or payment include but are not limited to:

  • Office closures;
  • Cash flow interruptions;
  • Inaccessibility of files or other materials;
  • Travel delays; or
  • Personal or family illness.

What about other patent-related deadlines? 

Only the deadlines indicated above are covered by the waiver and only for some stakeholders in certain situations. For any other situations where the COVID-19 outbreak prevents or interferes with a timely patent-related filing, a request for an extension or reopening of time can be made by contacting the Patent Office or PTAB directly. 

What should you expect? 

Much of the operations of the Patent Office are conducted remotely and from locations spread across the country. So far we have not seen any material delays in the processing of filings made with the Patent Office that can be attributed to the COVID-19 outbreak. For now, we expect the Patent Office to continue processing filings as usual.

What should you do? 

Even if you believe that your ability to make a timely patent-related filing during April 2020 is legitimately impacted by the COVID-19 outbreak, consider whether a delay in making the filing/payment is truly necessary before deciding to rely on a waiver. It is generally in your interest to have your patent matters proceed through the Patent Office as quickly as possible, so we suggest that you reserve reliance on a waiver for those situations where a timely filing/payment is genuinely not practicable for a COVID-19 related reason. We, at Calfee, always remain available to counsel you through this National Emergency waiver process whether or not we are currently handling your patent matters.

What if you already missed a pre-March 27th deadline due to COVID-19? 

If you missed a patent filing or response deadline due to COVID-19 prior to March 27th, which has resulted in the abandonment of a patent application, please reach out to Calfee or your regular patent counsel. In certain cases, you may be able to revive the application by filing a petition including a statement explaining how the failure to make the necessary filing or response was due to the effects of the COVID-19 outbreak. The USPTO has waived the petition fee associated with all such petitions related to COVID-19. 


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For additional information on this topic, please contact your regular Calfee attorney or one of the attorneys listed below.

 
 
 
 
 
 
 
 
 

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