The USPTO Considers the Effects of the Coronavirus Outbreak to be an “Extraordinary Situation:” What That Means for Patent Applicants and Patent Owners

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The coronavirus pandemic is affecting nearly all aspects of life around the globe. Recognizing the disruptive nature resulting from the spread of the virus and containment efforts, the United States Patent and Trademark Office (“USPTO”) is providing fee waivers for certain applicants that cannot meet filing deadlines to maintain their intellectual property rights. On March 16, 2020, the USPTO issued a Notice that provides patent applicants and patent owners assistance by designating the effects of the coronavirus outbreak an “extraordinary situation.” The designation of the outbreak as an “extraordinary situation” which is a defined term in the regulations, allows the USPTO to suspend and waive regulatory requirements or permit petitions to do so. 

The official USPTO Notice (the “Notice” can be accessed here) provides that:

The [USPTO] considers the effects of the Coronavirus outbreak that began in approximately January 2020 to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees reexamination parties, and trademark owners.

We provide insights and explanation on how the USPTO is using the “extraordinary situation” tool to help patent applicants and patent owners.

The Notice only provides for the waiver of certain petition fees

The USPTO’s designation of the effects of the coronavirus as an “extraordinary situation” does not provide carte blanche to miss dates or fail to pay fees. The USPTO Notice provides for the waiving of petition fees to revive only in the following limited circumstances: (i) patent applications that were abandoned or (ii) a reexamination prosecution that was terminated or limited, as permitted under 37 CFR 1.137(a). 

To qualify for the fee waiver, the petition under 37 1.137(a) must include a statement that “the delay in filing the reply required to the outstanding Office communication was because  the practitioner, applicant, or at least one inventor was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.” We note that the term “personally affected by” does not require confirmation that a practitioner, applicant, or at least one inventor actually contracted the coronavirus. No other patent fees, such as filing fees, have been extended or waived.

In order to be entitled to the waiver of the petition fee under 37 CFR 1.17(m), a petition to revive under 37 CFR 1.137(a) must be filed either (1) within two months after receiving a notice of abandonment or notification that reexamination has been terminated or limited or (2) within six months after the application became abandoned or the reexamination prosecution was terminated or limited, provided that no notice or notification was received.

Importantly, at this time, patent filing dates and deadlines have not been extended. 

USPTO cannot waive statutory limitations

The Notice emphasized that certain time periods and deadlines are statutory and thus cannot be extended by the Director based on the “extraordinary situation” designation:

1. the period set forth in 35 U.S.C. § 119(a)-(d) to file a nonprovisional patent application claiming the benefit of a prior filed foreign application;
2. the period set forth in 35 U.S.C. § 119(e) during which a nonprovisional application claiming the benefit of a prior filed provisional application must be filed in order to obtain benefit of the provisional application's filing date;
3. the copendency requirement of 35 U.S.C. § 120 between a parent application which issues as a patent and a later filed child application, which requires that the child application be filed prior to issuance of the parent application;
4. the three-month time period to pay the issue fee set forth in 35 U.S.C. § 151; and
5. the 35 U.S.C. § 304 two-month time period from the date of patentee service, for a requester to file, in an ex parte reexamination, a reply to a statement filed by the patentee.

How to properly file a petition in light of the Notice

To obtain waiver of the petition fee under 37 CFR 1.17(m), a petitioner should follow the following steps when submitting a revival petition under 37 CFR 1.137(a). 

1. File the petition within 2 months of receiving the notice of abandonment or notification that the reexamination prosecution has been terminated or limited (or if such a notice or notification was not received, within 6 months after the date the application became abandoned the reexamination prosecution has been terminated or limited);
2. Include a copy of the USPTO Notice of “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak”;
3. Include a statement that the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply;
4. Include the reply or response to the USPTO communication; and
5. Do not include the petition fee under 37 CFR 1.137(a).

The COVID-19 crisis is a fluid situation generating a multitude of issues on a daily basis. Seyfarth remains operational during these times and is closely watching this situation around the clock. Seyfarth is prepared to protect your interests, help you mitigate risks and liabilities, and keep you informed regarding the latest implications related to the COVID-19 crisis. Visit our COVID-19 Resource Center for more information.