USPTO Extends Due Dates Through CARES Act

On March 31, 2020, the Director of the USPTO announced that extensions of time would be allowed to file certain patent documents and to pay certain required fees, as a result of temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).  Links to the USPTO’s announcement and patent notice are included.

Specifically, the due date for any:

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

ii. reply to an Office notice or action issued during examination or patent publication processing (e.g., during examination includes an Office action (either final or non-final) and Notice of Non-Compliant Amendment; publication processing includes a Notice to file Corrected Application Papers issued by the Office of Data Management);

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

that was due between March 27, 2020 and April 30, 2020 (and including those dates), will be extended 30 days from the initial date it was due.  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.” 

As an update, the USPTO released a Frequently Asked Questions and answers regarding the CARES Act extensions of time.  A link to the FAQs can be found here. Notably, the USPTO will continue to update the FAQs as needed with this evolving situation.