Extraordinary Situation May Extend Some Trial Schedules

Yesterday the USPTO issued guidance on the Coronavirus outbreak, explaining that it considered the effects of the Covid 19 pandemic to be an “extraordinary situation” within the meaning of 37 C.F.R.§ 1.183 and 37 C.F.R. 2.146 (trademarks).  The guidance waived revival fees for ex parte patent/trademark applications and patent reexamination matters that went abandoned as a result of missing a deadline.

The guidance did not address AIA Trial Proceedings.  The agency’s position that the pandemic is an “extraordinary situation,” however, is sure to result in party requests to extend 12-month PTAB trial schedules.

As a reminder 35 U.S.C § 316(a)(11) provides that:

[T]he final determination in an inter partes review [shall] be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months. . . .

The Director has delegated the authority to extend the one-year period to the Chief Administrative Patent Judge. See 37 C.F.R. § 42.100(c). In particular, 37 C.F.R. § 42.100(c) provides:

An inter partes review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Judge. . . .

The Board would be hard pressed to argue that “good cause” for a trial extension is not met by the “extraordinary situation” it recently acknowledged for patent owners and applicants.  That said, clearly, the agency would have made a pronouncement by now if it was expecting to extend active PTAB trials as a matter of course.  In fact, the Board has already made clear that oral hearings will be conducted telephonically (as the CAFC has also done).  On the other hand, for those proceedings in discovery, the inability/risk for experts and/or practitioners to travel for deposition is significant.

To date the agency has been quite judicious in dipping into the available extension period, doing it only on rare occasions (mostly Aqua Products & SAS scenarios).  But, my expectation is the Board will be more flexible in extending schedules for those PTAB trials in the midst of depositions.