Most Patent/Trademark Prosecution Dates Extendible – Some PTAB

The United States Patent and Trademark Office (USPTO) today announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27.  Today’s announcement is in addition to earlier announced accommodations.

You can find the patent notice (here) and the trademark notice (here).

As to the PTAB, the relief is mostly limited to the preliminary proceeding as trial dates can be adjusted by the parties themselves.  The Notice explains:

Additional Relief before the Patent Trial and Appeal Board

Upon a request to the USPTO affirming that a filing due between, and inclusive of both, March 27, 2020 and April 30, 2020 was or may be delayed due to the COVID-19 outbreak (as defined elsewhere in the Notice), the PTAB shall provide a 30-day extension of time for:

i. a request for rehearing of a PTAB decision under 37 C.F.R. § § 41.125( c ), 41.127(d), or 42.71(d);

ii. a petition to the Chief Judge under 37 C.F.R. § 41.3; or

iii. a patent owner preliminary response in a trial proceeding under 3 7 C.F.R. §§ 42.107 or 42.207, or any related responsive filings.

In the event that the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

In essence a PO can push out its POPR (iii, above), which could in turn push out the Decision to Institute (DI).  For COVID-19 issues threatening depositions, or an oral hearing, the Board is considering these on a case-by-case basis.

As to the basis for the delay it generous enough to cover just about everyone operating in this environment.  The Notice defines it as:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee 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.

On the patent side, the following prosecution dates are extendible

Relief in patent application and reexamination proceedings

The due date for any:

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);

x1. maintenance fee, filed by a small or micro entity; or

xii. request for rehearing of a PT AB decision under 37 C.F.R. § 41.52 that was due between, and inclusive of, both March 27, 2020 and April 30, 2020, will be extended 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak (defined above).

With the Governor of Virginia expecting to keep current controls in place until June 10th (current position), and the PTO being subject to these controls, this may not be the last such Notice.