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How the CARES Act Affects Patent Related Deadlines

In accordance with the CARES (Coronavirus Aid, Relief, and Economic Security) Act, the USPTO has extended some patent-related deadlines.

Subsection 12004(a) of the CARES Act gives the Director of the United States Patent and Trademark Office (USPTO) the authority to toll, waive, adjust, or modify any timing deadlines of patent-related filings in effect during the emergency period described in subsection 12004(e) of the CARES Act. The Director has since determined that the COVID-19 emergency has prejudiced the patent rights of applicants, patent owners or others appearing before the USPTO. Therefore, any person or company who is unable to meet certain patent-related timing deadlines due to the COVID-19 outbreak may be eligible for a 30-day extension of the filing deadline.

To qualify for the deadline extension, the filing must have an original deadline falling on or between March 27, 2020 and April 30, 2020. Further, the filing must be “accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.”

In the Notice of Wavier of Patent-Related Timing Deadlines under the CARES Act issued by the USPTO, it is stated in Section (1)(b) that:

“[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.” (emphasis added). 

In other words, the 30-day deadline extension may be used as long as the delay is materially related to an interaction with COVID-19, but appears to have a broad scope on the type of interaction that causes the delay.

The qualifying patent-related filings which may take advantage of the 30-day extension, include any:

  1. Reply to an Office notice issued during pre-examination processing by a small or micro entity;
    1. Example: Notice of Omitted Items, Notice to File Corrected Application Papers, Notice of incomplete Application, Notice to File Missing Parts of Application, and Notification of Missing Requirements
  2. Reply to an Office notice or action issued during examination or patent publication processing;
    1. Example: Non-Final or Final Office Action Response and Notice of Non-Compliant Amendment
  3. Issue fee;
  4. Notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  5. Appeal brief under 37 C.F.R. § 41.37;
  6. Reply brief under 37 C.F.R. § 41.41;
  7. Appeal forwarding fee under 37 C.F.R. § 41.45;
  8. Request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;
  9. Response to a substitute examiner's answer under 37 C.F.R. § 41.50(a)(2);
  10. 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);
  11. Maintenance fee, filed by a small or micro entity; or
  12. Request for rehearing of a PTAB decision under 37 C.F.R. § 41.52.

Note that based on the above list, the USPTO has granted greater relief for small and micro entities.  Some relief (such as deadline extensions for Maintenance Fee Payments) is granted to only small and micro entities, other relief (such as deadline extensions for filing Responses to Office Actions, Appeal Briefs and Issue Fee Payments) is granted to all patent applicants affected by COVID-19.

Additionally, the USPTO has provided relief for certain Patent Trial and Appeal Board (PTAB) filings due on or between March 27, 2020 and April 30, 2020, as defined by Section (1)(b) provided above. The qualifying PTAB filings include:

  1. A request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d) or 42.71(d);
  2. A petition to the chief judge under 37 C.F.R. § 41.3; or
  3. 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 other PTAB situations may be eligible for extension on an ad-hoc basis by contacting the PTAB.

Additionally, the fee under 37 C.F.R. § 1.17(m) for a petition to revive an application under 37 C.F.R. § 1.137 remains waived, provided that applicants are unable to timely reply to an office communication due to the COVID-19 outbreak.

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Authors

Lisa Adams

Member

Lisa Adams is an intellectual property attorney at Mintz who advises clients on a wide range of IP matters, including patent portfolio development, clearance to market analyses, acquisitions, diligence, and post-grant proceedings at the US Patent and Trademark Office.
Nicholas M. Eadie is a registered patent attorney at Mintz with a mechanical engineering background. He focuses on patent prosecution and counseling, litigation support, and providing patentability opinions.