ARE Patent Alert: The USPTO Has Announced Extension of Certain Patent and Patent-Related Deadlines under the CARES Act

The United States Patent and Trademark Office (USPTO) yesterday announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees, all under temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), unanimously passed by the U.S. Senate on March 25th and signed by President Trump on March 27, 2020.

As far as patent applications and reexaminations are concerned, these extensions apply to the matters with original deadlines falling on or after March 27, 2020 and until April 30, 2020, and including the following:

• Response to Office notices during pre-examination (e.g., Notice of Omitted or Missing Items, Notice to File Corrected Papers, Notice of Incomplete Application, etc.) by a small or micro entity
• Response to an Office Action;

• Response to Notice of Non-Compliant Amendment;
• Payment of Issue Fee;
• Filing Notice of Appeal on a Final Office Action;
• Filing Appeal Brief;
• Filing Reply to Appeal Brief;
• Payment of Appeal Forwarding Fee;
• Request for Oral Hearing before the Patent Trial and Appeal Board (PTAB);
• Response to Substitute Examiner’s Answer;
• Amendment when Reopening Prosecution in response to, or request for rehearing of a PTAB decision designated as including a new ground of rejection;
• Maintenance Fee filed by a small or micro entity;
• Request for Rehearing of a PTAB Decision.

Separately, the USPTO is offering additional relief before the PTAB unrelated to patent applications and reexaminations include the following:

• Request for Rehearing of a PTAB decisions on motions and judgements;

• Petition to the Chief Judge;
• Patent Owner Preliminary Response in a trial proceeding, or any related responsive filings.

Such matters will enjoy a 30-day extension from the initial due date falling on or between the above dates, provided that the actual filing or payment is accompanied by a statement that the delay in filing was due to the COVID-19 outbreak.

This delay applies to applicants, patent owners, petitioners, third party requesters, inventors, and their counsel if personally affected by the COVID-19 outbreak including, without limitation, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

We will continue to monitor the situation. For more informatio, please feel free to contact us.

About the Authors
Charles R. Macedo is a partner, and Christopher Lisiewski is an associate at Amster, Rothstein & Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors may be reached at cmacedo@arelaw.com and clisiewski@arelaw.com.