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An “Extraordinary Situation” – How the Coronavirus is Impacting the USPTO

The United States Patent and Trademark Office (“USPTO”) announced that it considers the effects of COVID-19 (“the Coronavirus”) to be an “extraordinary situation.” Under 37 CFR 1.183, in extraordinary situations, the Director may suspend or waive any requirement of the regulations which is not a statutory requirement. Accordingly, as of the time of this writing, the Director has waived the requirement for certain petition fees and an original handwritten signature.

The “extraordinary situation” notice does not grant waivers or extensions of dates or requirements set by statute, including the following:

  1. 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;
  2. the 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;
  3. 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;
  4. the three-month time period to pay the issue fee set forth in 35 U.S.C. § 151; and
  5. 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.

However, the USPTO will waive the petition fee in 37 CFR l.17(m) for applicants or patent owners who were unable to timely reply to an Office communication due to the effects of the Coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited. Upon filing a petition to revive under 37 CFR 1.137(a), applicant or patent owner must include a statement that the delay in filing the reply was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.

The USPTO additionally waived the requirements of 37 CFR 1.4(e)(1) and (2) for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card. In both instances, the USPTO will accept copies of handwritten signatures in lieu of the “wet ink” signature.

Until further notice, all USPTO offices are closed to the public.  Any in-person meeting, including examiner and examining attorney interviews and Patent Trial and Appeal Board (PTAB) oral hearings, are to be conducted remotely by video or telephone.

Additional information regarding the USPTO’s COVID-19 notices may be found here.

We will continue to track and report on changes made to UPSTO operation.