In view of the COVID-19 pandemic, the United States Patent and Trademark Office (USPTO) recently announced that its offices will be closed to the public “until further notice.”1 However, the USPTO also assured the public that USPTO “operations will continue without interruption."2 Accordingly, applicants can continue to file related documents with the USPTO (e.g., patent applications, trademark applications, and responses to USPTO communications). Applicants can also hold interviews and oral hearings with the USPTO by video or telephone.3
Additionally, the USPTO has provided numerous accommodations for applicants that have been affected by the COVID-19 pandemic. As explained in more detail below, such accommodations for affected applicants include:
(I) a 30-day extension of certain patent-related and trademark-related filing deadlines that fall between March 27 and April 30;
(II) waiver of revival fees for (a) abandoned patent applications, (b) terminated or limited re-examination proceedings, (c) abandoned trademark applications, and (d) cancelled/expired trademark registrations; and
(III) waiver of original handwritten signature requirements for (a) registration to practice before the USPTO in patent cases, (b) enrollment and disciplinary investigations, (c) disciplinary proceedings, and (d) non-electronic payments by credit card.4
I. USPTO extends certain filing deadlines for those affected by COVID-19
The USPTO has exercised temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to provide a 30-day extension of various patent-related and trademark-related deadlines that fall between March 27 and April 30 for applicants affected by the COVID-19 pandemic.5 Table 1 summarizes the patent-related and trademark-related deadlines that can be extended under USPTO’s temporary authority.
Extendible patent-related deadlines
Reply to a USPTO notice issued during pre-examination proceedings by a small or micro entity1
Reply to a USPTO notice or action issued during examination2
Reply to a USPTO notice or action issued during patent publication processing3
Issue fee payment
Numerous deadlines related to proceedings before the Patent Trial and Appeal Board (PTAB)4
Maintenance fee payment filed by a small or micro entity
Extendible trademark-related deadlines
Response to an Office action, including a notice of appeal from a final refusal
Statement of use or request for extension of time to file a statement of use
Notice of opposition or request for extension of time to file a notice of opposition
Priority filing basis
Transformation of an extension of protection to the United States into a U.S. application
Affidavits of use or excusable nonuse
Table 1. Summary of patent-related and trademark-related deadlines that can be extended for 30 days for applicants affected by COVID-19. The deadlines must fall between March 27 and April 30.
In order to obtain an extension of time for an applicable deadline, applicants must request the extension along with a statement that the delay was “due to the COVID-19 outbreak.”10 Fortunately, the USPTO has broadly identified such COVID-19-related delays to include instances where “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” through various occurrences, such as “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.”11
Unfortunately, extensions of time are not available for all deadlines affected by the COVID-19 pandemic. For instance, original filing deadlines, PCT or national-stage filing deadlines, deadlines to file a non-provisional patent application claiming domestic benefit from a provisional patent application, and deadlines to file an inter-partes review petition are not covered.
II. USPTO waives revival fees for matters abandoned or affected due to COVID-19
The USPTO has also agreed to waive revival fees for the revival of matters that were abandoned or affected as a result of applicant’s inability to reply to a USPTO communication due to the COVID-19 pandemic.12 Such abandoned or affected matters include: (1) abandoned patent applications, (2) terminated or limited re-examination proceedings, (3) abandoned trademark applications, and (4) cancelled/expired trademark registrations.13 Table 2 provides a summary of the requirements and deadlines for requesting a waiver of revival fees for matters abandoned or affected due to COVID-19.
||Matter abandoned or affected due to COVID-19
Patent applications and re-examination proceedings
||Trademark applications and registrations
|Requirements to waive revival fees
- Reply to the outstanding Office communication
- A petition to revive
- A request for waiver of the petition fee
- A statement that the delay in filing the reply required to the outstanding Office communication 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
- A petition to revive
- A statement explaining how the failure to respond to the Office communication was due to the effects of the COVID-19 outbreak
|Deadline for requesting the waiver of revival fees
- Two months from the issue date of the notice of abandonment of patent application or notice of termination or limitation of re-examination (“Notice”)
- Six months from the date of patent application abandonment or termination/limitation of re-examination if the applicant did not receive the Notice.
- Two months from issue date of the notice of abandonment or cancellation (“Notice”)
- Six months after the date of abandonment, cancellation or expiration if the applicant did not receive the Notice
Table 2. Requirements and deadlines for requesting a waiver of revival fees for matters abandoned or affected due to COVID-19.
III. USPTO waives original handwritten signature requirements until further notice
In view of the COVID-19 outbreak, the USPTO is also waiving the requirements for original handwritten signatures until further notice.14 Accordingly, original handwritten signatures will not be required for the following documents that previously required them: (1) registration to practice before the USPTO in patent cases; (2) enrollment and disciplinary investigations; (3) disciplinary proceedings; and (4) payments by credit cards where the payments are not being made via the USPTO’s electronic filing systems.15
Even though the USPTO is currently closed to the public, the USPTO remains operational. Furthermore, the CARES Act provides the Director of the USPTO with broad discretionary authority to “toll, waive, adjust, or modify, any timing deadline” established by patent or trademark statute or regulation. The numerous accommodations already provided by the USPTO should provide applicants that have been affected by the COVID-19 pandemic with flexibility. However, applicants should appreciate that, since the COVID-19 outbreak is a fluid situation, additional changes to the USPTO’s operations and/or further accommodations could be forthcoming.
5 March 31, 2020 USPTO press release entitled “USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act”.
6 Such extensions can include 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.
7 Such extensions can include a final or non-final Office Action and a Notice of Non-Compliant Amendment.
8 Such extensions can include a Notice to File Corrected Application Papers issued by the Office of Data Management.
9 Such extensions are: (a) the filing of a Notice of Appeal; (b) the filing of an Appeal Brief; (c) the filing of a Reply Brief; (d) payment of the appeal forwarding fee; (e) request for an oral hearing before the PTAB; (f) response to a substitute examiner's answer; (g) amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection; (h) request for a rehearing of a PTAB decision; (i) request for rehearing of a PTAB decision; (j) a petition to the Chief Judge; and (k) a patent owner preliminary response in a trial proceeding, or any related responsive filings.
10 See USPTO Patent and Trademark notices provided in the March 31, 2020 USPTO press release.
12 USPTO’s March 16, 2020 Notice entitled “Relief to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak.”
14 FR 17502, Vol. 85, No. 61. March 30, 2020.
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