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USPTO extends certain CARES Act relief for small and micro entities

June 29, 2020

The United States Patent and Trademark Office (USPTO) recognizes that the COVID-19 pandemic has imposed significant hardships on many of our stakeholders. As a result, the USPTO has waived certain fees under existing authority through the March 16 notice, and has extended certain patent and Patent Trial and Appeal Board (PTAB) deadlines three times under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), through the March 31 notice, the April 28 notice, and the May 27 notice.

As businesses begin to reopen or resume operations, some stakeholders will continue to require relief, particularly small businesses and individuals. By the notice issued today (the June 29 notice), under the CARES Act authority and its existing authority, the USPTO has extended from July 1, 2020, to September 30, 2020, the time for small and micro entities to pay certain patent-related fees that would otherwise have been due on or after March 27, 2020. The small and micro entity fees eligible for an extension until September 30, 2020, include: basic filing fees, issue fees, maintenance fees, and other fees as set forth in the June 29 notice. In addition to this extension, and although some of the other relief provided in past notices is ending, other extensions of time and other relief remain available to those who need it on a case-by-case basis.

As explained in the May 27 notice and the April 28 notice, the USPTO has also waived the fee for filing a petition for the revival of applications that became abandoned, if accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. The June 29 notice clarifies that such petitions must be filed by July 31, 2020, to be eligible for the petition fee waiver.

The USPTO will continue to evaluate the evolving situation around the COVID-19 outbreak and the impact on the USPTO’s operations and stakeholders. At this time, the USPTO does not anticipate any further blanket extensions beyond what is articulated in today’s notice.

Following are the details on the latest extension:

(1) CARES Act Relief for Certain Fee Payments by Small and Micro Entities:

For small and micro entities only, any:

    1. a) basic filing fee, search fee, examination fee, and late filing surcharge (37 CFR § 1.16(f), 1.16(g), or 1.492(h)) due in reply to an Office notice issued during pre examination processing;
    2. b) basic national fee;
    3. c) issue fee; or
    4. d) maintenance fee;

due between, and inclusive of both, March 27, 2020, and September 29, 2020, will be considered timely if paid on or before September 30, 2020, provided that the payment is accompanied by a statement that the delay in payment was due to the COVID-19 outbreak, as defined in the April Notice.

(2) Relief by Petitions for an Extension of Time, Petitions to Revive, and Petitions to Accept Delayed Maintenance Fee

In addition to the relief in section ( 1) above, other extensions of time and other relief remain available to those who need it on a case-by-case basis. Such requests can be submitted through one of the following petitions, together with the applicable petition fees (unless waived pursuant to section (3) below):

    1. a) extensions of time under 37 CFR § 1.136 remain available for filing replies to Office actions and notices issued during patent application processing or examination;
    2. b) petitions under 3 7 CFR § 1.13 7 to revive an application remain available if an inability to file or pay patent-related documents or fees by their due date has resulted in the abandonment of an application or termination or limiting of prosecution in a reexamination proceeding; and
    3. c) petitions under 37 CFR § 1.378 to accept a delayed maintenance payment remain available if a maintenance fee has not been paid by its due date.

(3) Waiver of the Petition to Revive Fee

As explained in the April 28, 2020 notice, and extended in the May 27, 2020 notice, the USPTO has waived the fee for petitions to revive for patent applicants or patent owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment such that the application became abandoned or the reexamination prosecution became terminated or limited. By this notice, the USPTO requires that all such petitions to waive the petition fee in 37 CFR § l .17(m) be filed by July 31, 2020.

The notice entitled “May 2020 Update Regarding Certain Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Applicants, Patent Owners, and Others,” published May 27, 2020, did not specify a time limit within which a petition under 37 CFR § l .137(a) must be filed to be eligible for the waiver of the petition fee in 37 CPR§ 1.17(m). This notice supersedes the May notice to the extent that any petition under 37 CFR § l.137(a) must be filed by July 31, 2020, to be eligible for the waiver of the petition fee in 37 CFR § 1.17(m).

(4) PTAB

For proceedings before the PTAB, a request for an extension oftime where the COVID-19 outbreak has prevented or interfered with a filing before the PT AB can be made by contacting the PTAB at (571) 272-9797 or by email at Trials@uspto.gov (for AIA trials), PTAB_Appeals_ Suggestions@uspto.gov ( for PT AB appeals), or InterferenceTrialSection@uspto.gov (for interferences).