The United States Patent and Trademark Office (“USPTO”) on March 16 announced relief available to customers affected by the coronavirus disease (“COVID-19”) outbreak. In an Official Notice, the USPTO indicated that it considers the effects of the COVID-19 outbreak to be within the meaning of an “extraordinary situation” as provided in 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark customers. As a result, for customers who are unable to timely reply to a USPTO communication due to the effects of the outbreak, resulting in an application being held abandoned, the USPTO will waive the petition fee when the customer files the reply with a petition under 37 CFR 1.137(a).
The inclusion of a copy of the Official Notice with the reply will serve as a representation that the delay in filing the reply was because of the effects of the COVID-19 outbreak and serve as a request for waiver of the petition fee. The petition must also include a statement that the delay in filing the reply to the USPTO communication was because the practitioner, applicant, or an inventor, was personally affected by the COVID-19 outbreak causing them to be unable to file a timely reply. The Official Notice further advises that any customer seeking to file a petition to revive under 37 CFR 1.137(a) with a request to waive the petition fee due to the COVID-19 outbreak do so promptly accompanied by the required reply and a copy of the Official Notice. In particular, a petition under 37 CFR 1.137(a) must be filed no later than two months of the issuance of a notice of abandonment or notification that prosecution has been terminated.
It is important to note that the Official Notice does not grant any waivers or extensions of time for requirements set by statute. Examples of such statutory requirements include:
- the period for filing a non-provisional patent application claiming the benefit of a foreign filed application under 35 USC 119(a)-(d);
- the period for filing a non-provisional application claiming the benefit of a prior filed provisional application under 35 USC 119(e);
- the co-pendency requirement of 35 USC 120 that requires a child application, such as a continuation or divisional application, to be filed prior to issuance of the parent application;
- the three-month time period for paying the issue fee under 35 USC 151;
- and the two-month time period, from the date of patentee service, for the requester to file a reply to a statement by the patentee in ex parte reexamination as provided in 35 USC 304
Deadlines related to these statutory requirements must still be met by patent applicants and owners.
Since the current pandemic is a continually evolving situation, we can expect the USPTO to issue further directives or notices as circumstances change. We will be monitoring these developments and recommend that practitioners be aware of such developments, so that they can help applicants cope with the public health crisis without sacrificing their intellectual property rights.