| Mail Issues, Office Closures, Postal Emergencies, etc. |
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(34) Relief Available to Patent and Trademark Applicants,
Patentees and Trademark Owners Affected by the
Catastrophic Events of March 11, 2011 in Japan
The United States Patent and Trademark Office (USPTO) considers the
effects of the earthquake and resulting tsunami in Japan on March 11, 2011,
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. Since this catastrophic event
occurred outside the United States and did not result in a postal service
interruption in the United States Postal Service, the USPTO has no authority
to designate a postal service emergency as authorized by 35 U.S.C. 21(a).
For patent applications and reexamination proceedings pending in the USPTO
as of March 11, 2011, having one or more inventors, an assignee, or a
correspondence address in areas of Japan affected by the earthquake and
tsunami, in which a reply or response to an Office action (final, non-final,
or other), a notice of allowance, or other Office notice (hereinafter
collectively referred to as "Office communication") is outstanding, and for
which the statutory or non-statutory time period set for response has not yet
expired, the USPTO will, on applicant's request, or a reexamination party's
request, withdraw the Office communication and reissue it. The request must
be made prior to expiration of the statutory or non-statutory time period set
for response and within sufficient time so that withdrawal and reissuance of
the Office communication occur prior to expiration of the statutory or non-
statutory time period (as permitted to be extended under 37 CFR 1.136(a), or
as extended under 37 CFR 1.550(c) or 1.956). The request must be made by
using form PTO/SB/425 (when available) or by making a request accompanied by
a copy of this notice. The inclusion of a copy of this notice will be treated
as a representation that the need for the reissuance of the Office
communication was due to the effects of the earthquake and resulting tsunami
of March 11, 2011. The request should be sent via EFS-Web or by mail directed
to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450. Form PTO/SB/425 will be available in EFS-Web and on the USPTO
Web site at http://www.uspto.gov/forms/index.jsp. The use of form PTO/SB/425
is encouraged to facilitate processing of the request.
For patentees who were unable to timely pay a patent maintenance fee due
to the effects of the earthquake and resulting tsunami on March 11, 2011, the
USPTO will waive the surcharge in 37 CFR 1.20(h) for paying a maintenance fee
during the six-month grace period following the window to pay the maintenance
fee and the surcharge in 37 CFR 1.20(i) for accepting a delayed maintenance
fee payment when the patentee files the maintenance fee payment with a
petition to accept a delayed maintenance fee under 37 CFR 1.378(c). See 37
CFR 1.183.
Patentees who seek to pay a maintenance fee during the six-month grace
period following the window to pay the maintenance fee with a request to
waive the surcharge in 37 CFR 1.20(h), must mail the payment and request to:
Director of the United States Patent and Trademark Office, Attn: Maintenance
Fee, 2051 Jamieson Avenue, Suite 300, Alexandria, VA 22314; or via facsimile
to: 571-273-6500.
The request must be made by using form PTO/SB/425 (when available) or by
making a request accompanied by a copy of this notice. The inclusion of a
copy of this notice with the payment of the maintenance fee during the grace
period will be treated as a representation that the late payment of the fee
was due to the effects of the earthquake and tsunami of March 11, 2011, and
as a request for sua sponte waiver of the surcharge under 37 CFR 1.20(h).
This waiver may only be appropriately requested where the original window of
time to pay the maintenance fee without the surcharge required by 37 CFR
1.20(h) expired on or after March 11, 2011, and the delay in paying the fee
was due to the effects of the earthquake and tsunami of March 11, 2011.
The USPTO advises patentees who need to file a petition to accept a
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delayed maintenance fee payment due to the effects of the earthquake and
tsunami of March 11, 2011, where the maintenance fee payment was required to
have been paid after March 10, 2011, to promptly file a petition under 37 CFR
1.378(c) (using USPTO form PTO/SB/66 - Petition to Accept Unintentionally
Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c))
accompanied by the applicable maintenance fee payment (but not the surcharge
under 37 CFR 1.20(i)) and either a copy of this notice or form PTO/SB/425.
The inclusion of a copy of this notice will be treated as a representation
that the delay in payment of the maintenance fee was due to the effects of
the earthquake and resulting tsunami of March 11, 2011, and as a request for
sua sponte waiver of the surcharge under 37 CFR 1.20(i). The petition must
filed by March 11, 2012, in order to be entitled to a waiver of the surcharge
under 37 CFR 1.20(i).
Patentees are reminded that a petition to accept a delayed maintenance fee
payment under 37 CFR 1.378(c) must be filed within twenty-four months from
the expiration date of the patent. See 35 U.S.C 41(c). A petition to accept a
delayed maintenance fee payment filed later than twenty-four months after the
expiration date of the patent must be filed under 37 CFR 1.378(b) and include
a showing that the delay in payment was unavoidable. A petition to accept a
delayed maintenance fee payment due to the effects of the earthquake and
tsunami may be submitted via EFS-Web or by mail directed to Mail Stop
Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
For applicants who file a nonprovisional application on or after March 11,
2011, and prior to April 12, 2011, without an executed oath or declaration or
payment of the basic filing fee, search fee, and/or examination fee due to
the earthquake and tsunami of March 11, 2011, the USPTO will waive the
surcharge set forth in 37 CFR 1.16(f) for the late filing of the oath or
declaration or basic filing fee, search fee, and/or examination fee. Patent
applicants seeking waiver of the surcharge must include either form
PTO/SB/425 or a copy of this notice, along with the executed oath or
declaration or the basic filing fee, search fee, or examination fee. The
inclusion of a copy of this notice will be treated as a representation that
the late filing of the oath or declaration or the basic filing fee, search
fee, or examination fee was due to the effects of the earthquake and tsunami
of March 11, 2011, and as a request for sua sponte waiver of the surcharge
under 37 CFR 1.16(f). The reply to the Notice to File Missing Parts requiring
the oath or declaration or the filing fees may be submitted via EFS-Web or by
mail directed to Mail Stop Missing Parts, Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313-1450.
Patent-related inquiries concerning this notice may be directed to the
Office of Patent Legal Administration at (571) 272-7704 ((571) 272-7703 for
reexamination), or by e-mail at PatentPractice@uspto.gov.
For trademark applications and registrations with a correspondence or
owner address in areas of Japan affected by the earthquake and tsunami as of
March 11, 2011, in which a an Office action (final, non-final, or other), a
notice of allowance, or other Office notice requiring a response (hereinafter
collectively referred to as "Office communication") is outstanding, the USPTO
will, upon request, withdraw the Office communication and reissue it. The
request must be made prior to the deadline for responding to the Office
communication, and indicate that the need for the reissuance of the Office
communication is due to the effects of the earthquake and resulting tsunami
of March 11, 2011. The request should be sent via e-mail to
TMFeedback@uspto.gov or by mail to Commissioner for Trademarks, P.O. Box
1451, Alexandria, VA 22313-1451. If necessary, changes of correspondence
address should be provided.
For trademark applications and registrations with a correspondence or
owner address in areas of Japan affected by the earthquake and tsunami as of
March 11, 2011, that were abandoned or cancelled due to inability to timely
respond to a trademark-related Office communication due to the effects of the
earthquake and resulting tsunami on March 11, 2011, the USPTO will waive the
petition fee (set by regulation, rather than statute) to revive the abandoned
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application or cancelled registration. Either a petition by regular mail to
the address set forth in the preceding paragraph, or the Trademark Electronic
Application System (TEAS) "Request for Reinstatement" form should be used,
and must include a verified statement that the failure to respond to the
Office communication was due to the effects of the earthquake and resulting
tsunami.
Trademark-related inquiries concerning this notice may be directed to the
Trademark Office of Petitions by telephone at (571) 272-8950, by facsimile at
(571) 273-8950, or by e-mail at TMFeedback@uspto.gov.
The USPTO cannot grant waivers or extensions of dates or requirements set
by statute. For example, the following patent-related time periods cannot be
extended by the Director: (1) 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; (2) the twelve-month time 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; (3) 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; (4) the
three-month time period to pay the issue fee set forth in 35 U.S.C. 151;
(5) 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; and (6) the 35 U.S.C. 314(b)(2) thirty-day
time period from the date of service, for a requester to file, in an inter
partes reexamination, written comments addressing issues raised by an Office
action or the patentee's response to the action. The following statutory
trademark-related time periods cannot be extended and statutory fees cannot
be waived by the Director: (1) the 36-month period set forth in 15 U.S.C.
1051(d) within which a statement of use must be filed and the associated
fee(s); (2) the periods set forth in 15 U.S.C. 1058, 1141(k) for filing
affidavits of continued use or excusable nonuse and the associated fee(s);
(3) the period set forth in 15 U.S.C. 1059 for filing a renewal and the
associated fee(s); and (4) the periods set forth in 15 U.S.C. 1063 and 1064
for filing an opposition or cancellation proceeding at the Trademark Trial
and Appeal Board.
DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1365 OG 170]