Patents and PTAB Joint FAQs
Question 1: How do I take advantage of the 30-day extension of time for certain Patent- and PTAB-related deadlines?
If an eligible document or fee 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. See Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act.
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?
No, the statement need not be verified or provided in affidavit or declaration form. People 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).
Question 3: What is day 1 of the 30-day extension of time?
Day 1 of the 30-day extension of time is the first day after the original due date, i.e., the first day after the due date that would be in effect without the 30-day extension of time.
Question 4: What if the 30-day extension of time ends on a Saturday, Sunday, or federal holiday?
If the 30-day extension of time ends on a Saturday, Sunday, or federal holiday, the period for taking action is further extended to the next succeeding business day.
Question 5: 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?
In order to assist the Office in identifying a request for the 30-day extension of time, it is preferred that the statement be included in a separate paper. If the statement is in the paper you are filing, it will be accepted; however, it should be made in a conspicuous manner.
Question 6: What appeal-related filings are eligible for a 30-day extension of time?
The following appeal-related filings are eligible for a 30-day extension of time:
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 appeal decision
Question 7: Are all entities entitled to all CARES Act extensions?
No. Certain forms of relief are limited to small and micro entities. Please review the Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act for details.
Question 8: Are all entities entitled to a 30-day extension of time for payment of an issue fee?
Yes.
Question 9: What filings and fees are eligible for a 30-day extension of time only if made by a small or micro entity?
- 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 10: What PTAB filings are eligible for a 30-day extension of time?
request for rehearing of a PTAB decision in an AIA trial or interference proceeding
petition to the Chief Judge
patent owner preliminary response in a trial proceeding, or any related responsive filings
In the event that the USPTO extends a deadline for a patent owner preliminary response or any related filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).
For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request for an extension of time can be made by contacting the PTAB.
Question 11: How do I obtain a 30-day extension of time for a PTAB filing?
For the specific PTAB filings enumerated above, the PTAB will provide a 30-day extension of time, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.
For all other situations, a request for an extension of time should be made before the expiration of the deadline sought to be extended. The request 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 PTAB appeals)
InterferenceTrialSection@uspto.gov (for interferences)
Question 12: What PTAB filings are not eligible for an extension of time?
At this time, PTAB is not extending any statutory deadlines for filing an AIA petition under either 35 U.S.C. §§ 315(b) or 321(c).
Question 13: Will the PTAB extend the one-year deadline for issuing a final written decision under 35 U.S.C. §§ 316(a)(11) and 326(a)(11)?
In general, the PTAB is not extending the one-year deadline for issuing a final written decision, except that such deadlines may be extended for good cause shown for not more than six months, as provided for in 35 U.S.C. §§ 316(a)(11) and 326(a)(11). Such good cause may include situations to accommodate parties’ requests for extensions due to the COVID-19 outbreak preventing or interfering with a filing or appearance before the Board or, due to such extensions, the Board cannot otherwise meet the one-year deadline.
Question 14: What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak?
A delay is due to the COVID-19 outbreak when the outbreak materially interfered with the filing of a paper or fee.
Question 15: What circumstances qualify as a material interference with the filing of a paper or fee?
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 16: Who must have been affected in order to take advantage of the 30-day extension of time?
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 17: Is the USPTO open for filing documents and fees even though its offices are closed to the public?
Yes, the USPTO is open for filing documents and fees. The USPTO strongly encourages customers to file documents and fees via Patent Center. For information on Patent Center and other forms of filing, see General Information and Correspondence on the USPTO website.
Question 18: Has the USPTO provided any other relief in view of the COVID-19 outbreak?
Yes. The USPTO has:
waived the fee for petitions to revive applications that became abandoned because applicants could not meet the deadline for responding to an Office communication due to the COVID-19 outbreak; see the Office’s notice of March 16, 2020
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 19: If I have a question about CARES Act extensions, whom do I contact?
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 (or 571-272-7703 for reexamination)
Question 20: Will the USPTO extend the CARES Act relief beyond April 30?
The USPTO will continue to evaluate the evolving situation around COVID-19 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 21: Will these FAQs be modified?
The USPTO will continue to evaluate the evolving situation and will update these FAQs as needed.