The impact of COVID-19 continues to reach far and wide, with several patent offices and court systems worldwide changing their procedures for at least the near future to address the crisis.
The USPTO has posted several notices over the past week outlining their response and have set up a website where they will post all current and future notices regarding COVID-19.
In short, the USPTO has closed all of their buildings to the public until further notice but all USPTO operations are continuing with some modification. For example, all Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) proceedings will be conducted remotely by video or telephone. Similarly, in-person Examiner Interviews are not permitted and will be also conducted remotely.
Unlike patent offices in other jurisdictions that have extended application deadlines such as the EPO and CIPO, the USPTO is bound by statutory requirements that set certain non-extendible deadlines. In other words, the USPTO does not have the authority to lift or extend these deadlines.
However, the USPTO considers the effects of COVID-19 to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. As a result, the USPTO is waiving petition fees in certain situations for customers impacted by COVID-19. In particular, for patent and trademark applicants/owners who were unable to timely reply to an Office communication due to COVID-19, which resulted in the application or registration or proceeding being held abandoned, canceled, or terminated, the USPTO will waive the petition fee to revive. In order for the fee to be waived, the petition must include a statement that the delay in filing was because the practitioner, applicant, or at least one inventor was personally affected by the COVID-19 outbreak such that they were unable to file a timely reply. The petition must be filed no later than two months from the date of the notice of abandonment in order to be entitled for the fee waiver. If the applicant/owner did not receive a notice of abandonment, the petition must be filed no later than six months after the date the application became abandoned/terminated in order to be entitled for the fee waiver. More details can be found in the USPTO’s office notice.
Importantly, certain statutory time limits cannot by extended by petition. Examples provided in the USPTO notice include:
- the period set forth in 35 U.S.C. § 119(a)-(d) to file a nonprovisional patent application claiming the benefit of a prior-filed foreign application;
- the period set forth in 35 U.S.C. § 119(e) during which a nonprovisional application claiming the benefit of a prior filed provisional application must be filed in order to obtain benefit of the provisional application’s filing date;
- the copendency requirement of 35 U.S.C. § 120 between a parent application which issues as a patent and a later filed child application, which requires that the child application be filed prior to issuance of the parent application;
- the three-month time period to pay the issue fee set forth in 35 U.S.C. § 151; and
- the 35 U.S.C. § 304 two-month time period from the date of patentee service, for a requester to file, in an ex parte reexamination, a reply to a statement filed by the patentee.
We will continue to monitor all USPTO notices regarding the COVID-19 pandemic and will report any important developments as they arise.