The USPTO Issued A Notice of Waiver For Patent Related Timing Under The CARES Act

Thursday, April 02, 2020

The U.S. Patent and Trademark Office issued on March 31, 2020 a Notice of Waiver for Patent Related Timing under the CARES Act.  A copy of the Notice is at the bottom of this page.

The Notice provides for the extension of many deadlines for certain actions and/or fees that are due between now through and including April 30, 2020, where a certification statement is filed stating the extra time is needed as a result of the COVID-19 pandemic.  The extensions are without fees and are up to 30 days from the initial date it was due.  The extendable deadlines are listed on page 2 of the attached Notice, and include, among other things, any:

  • reply to an Office notice or action;
  • issue fee;
  • notice of appeal; appeal brief; reply brief; and
  • appeal forwarding fee.

Moreover, please note that the following are not extendable under the Notice:

  • maintenance fees for large entities;
  • patent application filing or associated filing fees;
  • the deadline to covert a provisional application to a non-provisional;
  • the 12-month deadline to file a foreign priority case or the 30-month deadline to file a §371 national phase of a PCT; and
  • any deadlines already under an extension of time.

In order to extend a deadline, we will need to make the certification statement required by the Notice.  The certification statement is made on a case-by-case basis.

The certification statement is associated with the Applicant being “personally affected” by the COVID-19 outbreak such that the outbreak “materially interfered with timely filing or payment” of that action or fee as a result of, for example, “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances”.  We recommend this certification be used judiciously since if any patents obtained using this deferral are litigated, we expect defense counsel will challenge the certification statement as untrue.  Even if the patent owner were to prevail on this issue, the uncertainty and/or cost may not be cost justified.

It appears that the most probable circumstance under which patent owners may be able to make the certification statement for the entire time period (through and including April 30) would be based on “cash flow interruptions” as indicated by the Notice.  Other listed reasons for making the certification statement are found on page 2 of the Notice and include office closure and illness.  Please contact us if you would like to consider making this certification.   Once again, it is likely that if a patent obtained using this deferral is litigated, defense counsel will challenge the certification statement as untrue.  As such, the potential benefit of a 30-day deferment should be considered relative to the later uncertainty and/or cost in defending such a challenge.

Please let us know if you have any specific questions on this Notice, and how best to support you through the pandemic, or any other matter.

View the Notice