Patent and Trademark Filing Deadlines Update | Martensen IP Law

In light of the coronavirus pandemic, we continue to monitor the status of U.S. Patent and Trademark Office (USPTO) operations to determine how any changes will affect our cases. So far, for U.S. patents:

Certain deadlines have been extended and fees waived based on whether the delay (or getting together other documents to comply with a deadline) is due to COVID19. These deadlines and fees include response to office actions, issue fees and petitions to revive. The most recent content from the USPTO is set out below.

As always, please contact us if you have any questions or concerns about your specific cases.

Details on Document Filing Deadline Extensions
The United States Patent Office and the European Union Patent Office recently extended filing deadlines. Details on both of these actions are provided below. Keep in mind that the fundamental rules of “first to file” remain in both jurisdictions.

The EPO has extended most deadlines expiring on or after 15 March 2020, until 17 April 2020.

The EUIPO has extended most deadlines expiring between 9 March 2020 and 30 April 2020, to 1 May 2020.

On March 31, 2020, the Director of the USPTO announced that extensions would be allowed for filing certain patent documents and paying certain required fees, as a result of temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).

Specifically, the due dates between March 27, 2020 and April 30, 2020 (and including those dates), for:

i. reply to an Office notice issued during pre-examination processing by a small or micro entity;

ii. reply to an Office notice or action issued during examination or patent publication processing;

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;

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) 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; or

xii. request for rehearing of a PTAB decision under 37 C.F.R. § 41.52

… will be extended 30 days from the initial due date. This 30-day extension is provided if the filing is accompanied by a statement that the “delay in filing or payment was due to the COVID-19 outbreak.” The USPTO defines “a delay in filing or payment due to the COVID-19 outbreak” as where an applicant/practitioner “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.”

The USPTO also includes a reminder that they are open for filing of documents and fees. For example, patent documents and fees may be submitted to the USPTO via: (1) the USPTO’s electronic filing system (EFS-WEB) (MPEP § 502.05); (2) the U.S. Postal Service or with a certificate of mailing (MPEP §§ 513, 512); (3) by hand-delivery to the Customer Service Window (MPEP § 501); and (4) facsimile transmission (MPEP § 502.01). Since the USPTO remains open for filing of documents and fees, the extension is available “only if the delay was due to the COVID-19 outbreak.”

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