The tragedy unfolding in Japan currently is nearly unthinkable. One of the most powerful earthquakes ever recorded, followed by a tsunami which has devastated the country and brought the nation to the brink of nuclear disaster. At this time of crisis most, if not all, are focused on only the essentials. But life goes on elsewhere and with the law, particularly patent law, what that means is on top of this tragedy companies and inventors in Japan might find rights they have compromised in the United States. There is little that the United States Patent and Trademark Office can do, but yesterday they announced that they would offer whatever accommodations they can under the law. This is typical for natural disasters, and accommodations were given during Hurricane Katrina and several of the most recent earthquakes in California, although those are now years ago.
“Our thoughts and prayers are with the people of Japan who continue to suffer from the effects of the earthquake and resulting tsunami,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The USPTO is offering assistance in the form of flexibility on deadlines to the full extent allowable under our laws to Japanese applicants.”
In the Official Gazette (OG) notice published yesterday the Office outlined the special accommodations available to patent and trademark applicants and owners affected by the catastrophic events that took place in Japan on March 11, 2011. In order to do this the USPTO has determined that the Japanese catastrophe is an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146, which allows for the Office to make allowances for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. However, because this catastrophic event occurred outside the United States and did not result in a postal service interruption of the United States Postal Service, the USPTO has no authority to designate a postal service emergency as authorized by 35 U.S.C. 21(a). The fact that the USPTO cannot declare a postal emergency limits what allowances can be made because in the event of a postal emergency the USPTO can treat as filed any paper that would have been deposited with the United States Postal Service but for postal service interruptions or emergencies as designated by the Director.
The USPTO is providing relief, such as:
For patent applicants and owners:
- For patent applications and reexamination proceedings pending in the USPTO as of March 11, 2011, having one or more inventors, an assignee or a correspondence address in areas of Japan affected by the earthquake and tsunami, in which a reply to an Office action (final, non-final, or other), a notice of allowance, or other Office notice is outstanding, and for which the statutory or non-statutory time period set for response has not yet expired, the USPTO will, on applicant’s request, withdraw the Office communication and reissue it, which will reset the time for responding. The request must be made prior to expiration of the statutory or non-statutory time period set for response and within sufficient time so that withdrawal and reissuance of the Office communication occur prior to expiration of the statutory or non-statutory time period (as permitted to be extended under 37 CFR 1.136(a), or as extended under 37 CFR 1.550(c) or 1.956). The request must be made by
using form PTO/SB/425 (when available) or by malting a request accompanied by a copy of the notice.
- For patentees who were unable to timely pay a patent maintenance fee due to the effects of the earthquake and resulting tsunami on March 11, 2011, the USPTO will waive the surcharge for paying a maintenance fee during the six-month grace period following the window to pay the maintenance fee and the surcharge for accepting a delayed maintenance fee payment when the patentee files the maintenance fee payment with a petition to accept a delayed maintenance fee. The Office Notice goes on to explain that if the maintenance fee payment cannot be made within the required time patent owners can always file a petition to accept a delayed maintenance fee payment under 37 CFR 1.378(c) must be filed within twenty-four months from the expiration date of the patent. See 35 U.S.C 41(c). A petition to accept a delayed maintenance fee payment filed later than twenty-four months after the expiration date of the patent must be filed under 37 CFR 1.378(b) and include a showing that the delay in payment was unavoidable.
- For applicants who file a nonprovisional application on or afler March 11,201 1, and prior to April 12,201 1, without an executed oath or declaration or payment of the basic filing fee, search fee, and/or examination fee due to the earthquake and tsunami of March 11,201 1, the USPTO will waive the surcharge set forth in 37 CFR 1.16(f) for the late filing of the oath or declaration or basic filing fee, search fee, and/or examination fee.
Patent applicants seeking waiver of the surcharge must include either form PTO/SB/425 or a copy of the notice, along with the executed oath or declaration or the basic filing fee, search fee, or examination fee.
For trademark applicants and owners:
- For trademark applications and registrations with a correspondence or owner address in areas of Japan affected by the earthquake and tsunami as of March 11, 2011, in which a an Office action (final, non-final, or other), a notice of allowance, or other Office notice requiring a response is outstanding, the USPTO will, upon request, withdraw the Office communication and reissue it, which will reset the time for responding.
- For trademark applications and registrations with a correspondence or owner address in areas of Japan affected by the earthquake and tsunami as of March 11, 2011, that were abandoned or cancelled due to inability to timely respond to a trademark-related Office communication due to the effects of the earthquake and resulting tsunami on March 11, 2011, the USPTO will waive the petition fee (set by regulation, rather than statute) to revive the abandoned application or cancelled registration.
Unfortunately, the USPTO cannot grant waivers or extensions of dates or requirements set by statute. For example, the Office cannot extend the following:
- 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.
- The twelve-month time 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.
- 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.
- The three-month time period to pay the issue fee set forth in 35U.S.C. 151.
- 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.
- The 35 U.S.C. 3 14(b)(2) thirty-day time period from the date of service, for a requester to file, in an inter partes reexamination, written comments addressing issues raised by an Office action or the patentee’s response to the action.
There is also a list of things that the Office cannot extend for trademark applicants and owners because the statute does not allow for such flexibility. These include:
- The 36-month period set forth in 15 U.S.C. 105 1(d) within which a statement of use must be filed and the associated fee(s).
- The periods set forth in 15 U.S.C. 1058, 1141(k) for filing affidavits of continued use or excusable non-use and the associated fee(s).
- The period set forth in 15 U.S.C. 1059 for filing a renewal and the associated fee(s); and (4) the periods set forth in 15 U.S.C. 1063 and 1064 for filing an opposition or cancellation proceeding at the Trademark Trial and Appeal Board.
For more information please refer to the USPTO’s announcement. For inquiries relating to patent matters contact Office of Patent Legal Administration at (571) 272-7704, or by e-mail at PatentPractice@uspto.gov. Trademark related inquiries should be directed to the Trademark Office of Petitions by telephone at (571) 272-8950, or by
e-mail at TMFeedback@uspto.gov.