TAKEAWAY: While certain deadlines between March 27 and April 30, 2020 are eligible for relief at the U.S. Patent and Trademark Office, priority deadlines remain non-extendable.
The CARES Act authorized the U.S. Patent and Trademark Office to extend deadlines for pending matters for applicant delays due to the effects of the coronavirus. Under that authority, the USPTO issued a Notice of Waiver permitting a 30-day extension of certain deadlines between March 27 and April 30, 2020, for applicant delays due to 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.”
Among the deadlines eligible for extension are replies to Office actions, issue fees, notices of appeal, and amendments when reopening prosecution further to a decision from the Patent Trial and Appeal Board (PTAB). To avail themselves of this relief, applicants must submit a statement indicating that the delay in filing or payment was due to the COVID-19 outbreak. Relief for certain deadlines such as payment of filing fees (e.g., in reply to a Notice to File Missing Parts) and patent maintenance fees is only available to small and micro entity applicants. The USPTO has published a list of FAQs to address common questions.
Certain critical patent deadlines are not extendable under the relief granted. To name a few — the one-year priority deadline for filing an application claiming priority to a provisional or foreign application, and the one-year grace period for filing a U.S. application after an inventor’s own disclosure are not extendable under this waiver. While there are existing regulations providing a two-month period for restoring a priority right, it is important to note that, in such cases, applicants must establish that the delay in claiming priority was unintentional, which is different from the COVID-19 “material interference” standard.
When seeking relief under the CARES Act, applicants should retain evidence documenting how the COVID-19 outbreak “materially interfered” with making a timely filing or payment. Of note, this ability to seek relief does not displace means of deferring action, such as paying extension fees where available. Applicants who have the means may consider paying extension fees rather than make a statement on the record regarding the cause of the delay — statements that may come under scrutiny during litigation.