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USPTO Permitting Extending Patent Deadlines Amid COVID-19

  • Apr 21 2020

Amid the stress of the COVID-19 pandemic, many things have taken a backseat to the health and safety of the American public. The circumstances accompanying the effort to slow the spread of the virus have caused a variety of other delays as well. 

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) shared that it is allowing patent applicants to request an extension regarding the time allotted to file specific documents and to pay particular fees while the emergency is ongoing in the U.S. Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the USPTO Director has been granted the temporary authority to do so. 

Under the CARES Act, the USPTO is given the ability to waive, adjust, or modify many deadlines, and its own regulations as the pandemic continues. USPTO Director, Andrei Iancu, has found that the circumstances surrounding the coronavirus have prejudiced the rights of patent applicants (and owners) to a point where he has deemed invoking his temporary authority as justified.

Certain Deadlines May Be Extended 

Under the emergency extension, an individual who is unable to meet certain patent deadlines because of COVID-19 may have eligibility to receive a limited waiver of such deadlines. Such deadlines and fees include:

Reply to an Office notice issued during pre-examination processing by a small or micro entity such as:

  • Notice of Omitted Items
  • Notice to File Corrected Application Papers 
  • Notice of Incomplete Application
  • Notice to Comply with Nucleotide Sequence Requirements
  • Notice to File Missing Parts of Application
  • Notification of Missing Requirements
  • Reply to an Office notice or action issued during examination or patent publication processing
  • Final or non-final Office action
  • Notice of Non-Compliant Amendment
  • Issue fee
  • Notice of appeal 
  • Appeal brief 
  • Reply brief 
  • Appeal forwarding fee 
  • Request for an oral hearing before the Patent Trial and Appeal Board (PTAB) 
  • Response to a substitute examiner’s answer 
  • Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection 
  • Maintenance fee, filed by a small or micro entity; or
  • Request for rehearing of a PTAB decision 

Who is Eligible for an Extension?

Due dates that are eligible for an extension as of now include those from March 27, 2020, to (and including) April 30, 2020. These deadlines will be extended by “30 days from the initial date it was due.”

To obtain an extension, the patent filing must also include a statement as to how the individual 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.”

Scully, Scott, Murphy & Presser Can Help Protect Your Inventions and Your Rights

If you or a loved one has an issue with filing your patent or paying your fees on time, or if you have an existing patent that you believe is being infringed upon, it is in your best interest to consult with a knowledgeable and experienced patent attorney in order to determine your best options. 

At Scully, Scott, Murphy & Presser, our qualified patent attorneys can help you to navigate the patent application process or can help to defend your patent and your rights regarding any infringement. To learn more about the patent prosecution process or to schedule a free consultation, contact us today!

Posted in: Patents