Patents and Patent Trial and Appeal Board (PTAB) FAQs: Extension of Deadlines under the CARES Act (updated May 4)

Patents and PTAB Joint FAQs

Question 1: How do I take advantage of the period of relief for certain Patents and PTAB related deadlines? (Updated May 4, 2020)

For deadlines in patent applications, reexamination proceedings, and proceedings before the PTAB, other than trial proceedings, if an eligible document or fee was or is due between (and inclusive of) March 27, 2020, and May 31, 2020, the filing will be considered timely if filed on or before June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. 

For a trial proceeding before the PTAB, if an eligible filing was or is due between (and inclusive of) March 27, 2020, and April 30, 2020, the filing will be considered timely if made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. For filings due after April 30, 2020, contact PTAB for a request for relief.

Question 2: Does the statement that the delay in filing or payment was due to the COVID-19 outbreak need to be verified or in the form of a declaration or affidavit? (Updated May 4, 2020)

No, the statement need not be verified or provided in affidavit or declaration form. Applicants or parties providing such statements to the Office are reminded that, pursuant to 37 CFR § 1.4(d)(4), they constitute a certification under 37 CFR § 11.18(b) and that violations of 37 CFR § 11.18(b) may be subject to sanctions pursuant to 37 CFR §§ 11.18(c) and (d).

Question 3: How do I determine my new Patents and PTAB related filing or payment deadline? (Posted May 4, 2020)

For deadlines in patent applications, reexamination proceedings, and proceedings before the PTAB, other than trial proceedings, if the original due date for the filing or payment was between (and inclusive of) March 27, 2020, and May 31, 2020, the new filing or payment deadline is on June 1, 2020.

Question 4: Can the statement that you were personally affected by the COVID-19 outbreak be included in the paper you are filing, such as in the last paragraph of a response to an Office action, or must it be included in a separate paper? (Updated May 4, 2020)

In order to assist the Office in identifying a request for relief, it is preferred that the statement be included in a separate paper. To this end, the Office has created form PTO/SB/449 titled “Statement of Delay Due to COVID-19 Outbreak,” which is available on the Patents forms page. If the statement is in the paper you are filing, it will be accepted; however, it should be made in a conspicuous manner.

Question 5: What appeal-related filings are eligible for the period of relief? (Updated May 4, 2020)

The following appeal-related filings are eligible for the period of relief:

  • notice of appeal
  • appeal brief
  • reply brief
  • appeal forwarding fee
  • request for an oral hearing before the PTAB
  • response to a substitute examiner’s answer
  • amendment in connection with a new ground of rejection by the PTAB
  • request for rehearing of a PTAB decision in an ex parte appeal
  • petition to the Chief Judge

Question 6: Are all entities entitled to all CARES Act extensions? (Updated May 4, 2020)

No. Certain forms of relief are limited to small and micro entities. Please review the Notice of Extended Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Patent Applicants and Patentees for details. See MPEP 509.03 for information on claiming small entity status and MPEP 509.04 for information on claiming micro entity status. See MPEP 2550(I) for information on claiming entitlement to an entity status discount for paying a maintenance fee. Note that the small or micro entity status need not have been established prior to the date of the Extended CARES Act notice.

Question 7: Are all entities entitled to a period of relief for payment of an issue fee? (Updated May 4, 2020)

Yes.

Question 8: What filings and fees are eligible for a relief only if made by a small or micro entity? (Updated May 4, 2020)

  • replies to an Office notice issued during pre-examination processing, e.g.:
    • reply to a notice of omitted items
    • reply to a notice to file corrected application papers
    • reply to a notice of incomplete application
    • reply to a notice to comply with nucleotide sequences requirements
    • reply to a notice to file missing parts of application (including, without limitation, the payment of the filing fees)
    • reply to a notification of missing requirements
  • a maintenance fee payment

Question 9: What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak? (Updated May 4, 2020)

A delay is due to the COVID-19 outbreak when the outbreak materially interfered with the filing of a paper or fee. Note that “materially” as used in the CARES Act notice is intended to have its plain meaning of “substantially or considerably” and is not intended to invoke other legal standards, such as the “material event” standard used in financial reporting regulations.

Question 10: What circumstances qualify as a material interference with the filing of a paper or fee? (Posted April 6, 2020)

Circumstances that qualify as materially interfering include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or other similar circumstances.

Question 11: Who must have been affected in order to take advantage of the period of relief? (Updated May 4, 2020)

The person affected by the outbreak may be a practitioner, applicant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing or fee.

Question 12: Is the USPTO open for filing documents and fees even though its offices are closed to the public? (Posted April 6, 2020)

Yes, the USPTO is open for filing documents and fees. The USPTO strongly encourages customers to file documents and fees via EFS-Web. For information on EFS-Web and other forms of filing, see General Information and Correspondence.

Question 13: Has the USPTO provided any other relief for Patents filers in view of the COVID-19 outbreak in addition to extending due dates for filing papers or fees? (Updated May 4, 2020)

Yes. The USPTO provides relief in the form of a waiver of the petition fee for the revival of patent applications (and reexamination proceedings), that became abandoned (or terminated or limited) on or before May 31, 2020, as a result of the COVID-19 outbreak.

The USPTO also has waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card; see the Office’s notice of March 30, 2020.

Question 14: If I have a question about CARES Act extensions, whom do I contact? (Updated May 4, 2020)

The USPTO welcomes comments or inquiries regarding this notice. Please use the following:

  • Send an email to Covid19PatentsRelief@uspto.gov
  • If email submission is not feasible, please call the Office of Patent Legal Administration at 571-272-7704 (for patent applications) or 571-272-7703 (for reexamination proceedings), or the PTAB at 571-272-9797.

Question 15: Can I obtain an extension of time for a filing or fee not already provided in one of the relief notices? (Posted May 4, 2020)

If you wish to request a waiver of a non-statutory deadline or a fee for patent applications, reexaminations and other proceedings, beyond what is set out in the relief notices, you must file a petition to the Director. The specific type of petition would depend on the facts of the situation and the relief sought. Please see MPEP 1002 regarding the rules and procedures for petitions. For more information contact:

For PTAB AIA trial and interference situations beyond what is set out in the relief notices, please contact the PTAB at (571) 272-9797 or by email at:

Question 16: Will the USPTO further extend the CARES Act relief? (Updated May 4, 2020)

The USPTO will continue to evaluate the evolving situation around the COVID-19 outbreak and the impact on the USPTO’s operations and stakeholders. If the USPTO extends the CARES Act relief, the USPTO will provide timely notice. 

Question 17: Will these FAQs be modified? (Posted April 6, 2020)

The USPTO will continue to evaluate the evolving situation and will update these FAQs as needed.

PTAB Specific FAQs

Note: the April 28 notice did not extend trial-related deadlines to June 1. With the exception of the FAQs below, please see the original notice and FAQs for information regarding the original 30-day relief period applied to trial-related deadlines. For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, parties should make a request for an extension of time by contacting the PTAB.

Question 18: Will the PTAB extend the three-month deadline for issuing a decision on institution under 35 U.S.C. §§ 314(b) and 324(c)? (Posted May 4, 2020)

In general, a decision on institution will be issued within three months after a patent owner preliminary response to a petition (or waiver of the preliminary response by the patent owner) is filed. Where a patent owner does not file a preliminary response or a waiver, the PTAB will issue a decision on institution within three months after the last date on which such a response could have been filed. For example, where a preliminary response was due on April 15, 2020, and could have been filed with a COVID-19 outbreak statement on May 15, 2020, the PTAB will issue a decision on institution by no later than August 15, 2020.

Question 19: What is the due date for a request for rehearing in an AIA trial proceeding? (Posted May 4, 2020)

Requests for rehearings in AIA trial proceedings that were due between (and inclusive of both) March 27, 2020, and April 30, 2020, will be considered timely if filed within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing was due to the COVID-19 outbreak. For all other situations, a party should contact the PTAB and request an extension of time before the expiration of the deadline sought to be extended.