| Mail Issues, Office Closures, Postal Emergencies, etc. |
Referenced Items (6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45, 46, 47, 48, 49, 50, 51, 52, 53, 54, 55, 56, 57, 58, 59, 60, 61, 62, 63, 64, 65, 66, 67, 68, 69, 70, 71, 72, 73, 74, 75, 76, 77, 78, 79, 80, 81, 82, 83, 84, 85, 86, 87, 88, 89, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 100, 101, 102, 103, 104, 105, 106, 107, 108, 109, 110, 111, 112, 113, 114, 115, 116, 117, 118, 119, 120, 121, 122, 123, 124) |
(67) Notice of Extended Waiver of Patent-Related Timing Deadlines under the
Coronavirus Aid, Relief, and Economic Security Act and Other Relief
Available to Patent Applicants and Patentees
In accordance with section 12004 of the Coronavirus Aid, Relief, and
Economic Security Act (CARES Act), the United States Patent and Trademark
Office (USPTO or Office) is further extending the time to file certain
patent-related documents or fees that would otherwise have been due on or
after March 27, 2020.
In addition, the USPTO is clarifying the relief available for patent
applicants or patent owners who were unable to timely submit a filing or
payment in reply to an Office communication due to the COVID-19 outbreak,
which resulted in the application being held abandoned or the reexamination
prosecution terminated or limited.
This notice supersedes the March 31, 2020, notice titled "Notice of
Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid,
Relief, and Economic Security Act." This notice also supersedes the
March 16, 2020, notice titled "Relief Available to Patent and Trademark
Applicants, Patentees and Trademark Owners Affected by the Coronavirus
Outbreak" to the extent discussed below.
I. CARES Act
Subsection 12004(a) of the CARES Act provides that the USPTO 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 the emergency period described in subsection
12004(e) of the CARES Act, if the Director of the USPTO determines that the
emergency related to such period: (1) materially affects the functioning of
the Office; (2) prejudices the rights of applicants, registrants, patent
and trademark owners, or others appearing before the Office; or (3)
prevents applicants, registrants, patent and trademark owners, or others
appearing before the Office from filing a document or fee with the Office.
On March 13, 2020, the President declared a national emergency under the
National Emergencies Act as a result of the COVID-19 outbreak. The Director
of the USPTO has determined that the emergency has prejudiced the rights of
applicants, patent owners, or others appearing before the USPTO in patent
matters and has prevented applicants, patent owners, or others appearing
before the USPTO in patent matters from filing a document or fee with the
Office. Among other things, the spread of the virus has significantly
disrupted the operations of numerous businesses, law firms, and inventors.
Small businesses and independent inventors, who frequently have less access
to capital and for whom patent-related fees may constitute a more
significant expense, may face particular difficulties. Accordingly, a
person who is unable to meet patent-related timing deadlines due to the
COVID-19 outbreak may be eligible for a waiver of certain deadlines, as
further described below.
(1) CARES Act Relief in Patent Applications and Reexamination and Other
Proceedings
(a) Any:
i. reply to an Office notice issued during pre-examination
processing¹ by a small or micro entity;
ii. reply to an Office notice or action issued during
examination² or patent publication processing;³
iii. issue fee;
iv. notice of appeal under 35 U.S.C. § 134 and 37 C.F.R.
§ 41.31;
v. appeal brief under 37 C.F.R. § 41.37;
vi. reply brief under 37 C.F.R. § 41.41;
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vii. appeal forwarding fee under 37 C.F.R. § 41.45;
viii. request for an oral hearing before the Patent Trial and
Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
ix. response to a substitute examiner's answer under 37 C.F.R.
§ 41.50(a)(2);
x. amendment when reopening prosecution in response to, or
request for rehearing of, a PTAB decision designated as
including a new ground of rejection under 37 C.F.R.
§ 41.50(b);
xi. maintenance fee, filed by a small or micro entity;
xii. request for rehearing of a PTAB decision under 37 C.F.R.
§ 41.52;
xiii. request for rehearing of a PTAB decision under 37 C.F.R.
§§ 41.125(c) or 41.127(d); or
xiv. petition to the Chief Judge under 37 C.F.R. § 41.3
due between, and inclusive of both, March 27, 2020, and May 31,
2020, will be considered timely if filed on or before June 1,
2020, provided that the filing or payment is accompanied by a
statement that the delay in filing or payment was due to the
COVID-19 outbreak as defined in subsection (b) below.
(b) A delay in filing or payment is due to the COVID-19 outbreak for
the purposes of this notice if a practitioner, applicant, patent
owner, petitioner, third-party requester, inventor, or other
person associated with the filing or fee 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.
(2) Additional Relief before the PTAB
(a) Upon a request to the USPTO affirming that a filing due between,
and inclusive of, March 27, 2020, and April 30, 2020, was or may.
be delayed due to the COVID-19 outbreak as defined above in
subsection (1)(b), the PTAB shall provide a 30-day extension of
time for a patent owner preliminary response in a trial proceeding
under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive
filings. Note that this relief applies through April 30, 2020,
and relief sought after that date should be requested as
described in subsection I.3, below.
(b) In the event that the USPTO extends a deadline for a patent owner
preliminary response or any related responsive filings under
subsection (2)(a), the PTAB may also extend the deadlines provided
in 35 U.S.C. §§ 314(b) and 324(c).
(3) PTAB Situations Not Covered Above
For all other situations, a request for an extension of time where the
COVID-19 outbreak has prevented or interfered with a filing before the
Board can be made by contacting the PTAB at (571) 272-9797 or by email at
Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov (for
PTAB appeals), or InterferenceTrialSection@uspto.gov (for interferences).
II. Other Relief Available to Patent Applicants and Patentees-Petitions to
Revive
The following incorporates and supersedes the "Patent-Related
Correspondence - Petitions to Revive" section of the March 16, 2020, notice
titled "Relief Available to Patent and Trademark Applicants, Patentees and
Trademark Owners Affected by the Coronavirus Outbreak" as described below.
In this section, the USPTO continues to provide relief in the form of a
waiver of the petition fee for the revival of applications (and
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reexamination proceedings), but limits the eligible applications and
reexamination proceedings to those that became abandoned (or terminated or
limited) on or before May 31, 2020, as a result of the COVID-19 outbreak.
This section also harmonizes the statement that must be provided to take
advantage of the revival fee relief with the statement that must be
provided to take advantage of the above CARES Act relief, i.e., the
statement as defined in subsection I.1.b above.
The USPTO considers the effects of the COVID-19 outbreak to be an
"extraordinary situation" within the meaning of 37 C.F.R. § 1.183 for
affected patent applicants and patentees.
For patent applicants or patent owners who, because of the COVID-19
outbreak, were unable to timely submit a filing or payment in reply to an
Office communication having a due date of May 31, 2020, or earlier (when
taking into account all available extensions of time under 37 C.F.R.
§ 1.136(a)), such that the application became abandoned or the
reexamination prosecution became terminated or limited, the USPTO will
waive the petition fee in 37 C.F.R. § 1.17(m) when the patent applicant or
patent owner files the reply with a petition under 37 C.F.R. § 1.137(a)
and a statement that the delay in filing or payment was due to the COVID-19
outbreak as defined in subsection (1)(b) above. See 35 U.S.C. § 41(a)(7).
The inclusion of the statement that the delay in filing or payment was due
to the COVID-19 outbreak will be treated as a request for sua sponte waiver
of the petition fee under 37 C.F.R. § 1.17(m).
The USPTO advises any patent applicant or patent owner who seeks to
file a petition to revive under 37 C.F.R. § 1.137(a) with a request to
waive the petition fee under 37 C.F.R. § 1.17(m) due to the effects of the
COVID-19 outbreak, to promptly file the petition under 37 C.F.R. § 1.137(a)
(including the required statement) accompanied by the required reply (but
not the petition fee under 37 C.F.R. § 1.17(m)). A petition to revive under
37 C.F.R. § 1.137(a) due to the effects of the COVID-19 outbreak may be
submitted via the USPTO patent electronic filing systems (EFS-Web or Patent
Center) using document code PET.RELIEF or by mail directed to Mail Stop
Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-
1450.
III. The USPTO Remains Open for the Filing of Documents and Fees
The USPTO is open for the filing of patent documents and fees.
Specifically, patent documents and fees may be submitted to the USPTO via:
(1) the USPTO patent electronic filing systems (EFS-Web or Patent Center)
(MPEP § 502.05); (2) the United States Postal Service (USPS) by Priority
Mail Express® under 37 C.F.R. § 1.10 (MPEP § 513) or with a certificate of
mailing under 37 C.F.R. § 1.8 (MPEP § 512); (3) hand-delivery to the
Customer Service Window (MPEP § 501); and (4) facsimile transmission
(MPEP § 502.01). AIA trial documents may be submitted to the USPTO via the
PTAB E2E electronic filing system under 37 C.F.R. § 42.6, and interference
documents may be submitted to the USPTO via the Interference Web Portal
under 37 C.F.R. § 41.106(d)(2). As the USPTO remains open for the filing of
documents and fees, the waiver set forth in this notice is available only
if the delay was due to the COVID-19 outbreak as defined above. The USPTO
will continue to evaluate the evolving situation around the COVID-19
outbreak and the impact on the USPTO's operations and stakeholders.
¹ This includes, for example, a 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, and Notification of Missing Requirements.
² This includes, for example, an Office action (either final or non-final)
and Notice of Non-Compliant Amendment.
³ This includes, for example, a Notice to File Corrected Application Papers
issued by the Office of Data Management.
In addition to the relief provided herein, the USPTO has previously
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waived the requirements for an original handwritten signature for certain
correspondence with the Office of Enrollment and Discipline and certain
payments by credit card, as described in the Office's March 30, 2020,
notice.
IV. Comments and Contact Information
Comments and patent-related inquiries concerning this notice may be sent
by email to Covid19PatentsRelief@uspto.gov. If email submission of comments
is not feasible due to lack of access to a computer and/or the internet,
please call the Office of Patent Legal Administration at (571) 272-7704
((571) 272-7703 for reexamination) for special instructions.
April 28, 2020 ANDREI IANCU
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1476 OG 52]