Alerts and Updates

The Capricious and Ever-Changing Nature of IP Practice Under COVID-19: Deadline Extensions, Sometimes with a Catch, and Ungracious Grace Periods

May 4, 2020

Applicants should be aware that any requested extension must be accompanied by a statement indicating that the delay was “due to the COVID-19 outbreak.”

There is no doubt that the COVID-19 outbreak has affected and upended nearly every aspect of life as we know it. This includes practice before the USPTO and other IP offices around the world with respect to the timing or extension of deadlines.

Deadlines at the USPTO are implemented by statute. For example, 35 U.S.C. § 133 and 15 U.S.C. § 1062(b) provide for a six-month statutory period for applicants in patent and trademark matters respectively to respond to office actions to avoid abandonment of the application. Because the deadlines are set in statute, actions altering the deadlines require an act of Congress. With respect to practice before the USPTO, the Coronavirus Aid, Relief and Economic Security Act (CARES Act), signed into law on March 27, 2020, grants authority to the USPTO director to “toll, waive, adjust, or modify any timing deadline established by title 35, United States Code, the Trademark Act, section 18 of the Leahy-Smith America Invents Act, or regulations promulgated thereunder” during the period of the COVID-19 outbreak.

In a USPTO notice issued April 28, 2020, superseding a previous notice issued March 31, 2020, required filings for patent deadlines that fall inclusively between March 27, 2020, and May 31, 2020, will be considered timely if the filing is made on or before June 1, 2020. The June 1, 2020 deadline extension applies to responses to preexamination office notices by small and micro entities, response to office actions, issue fees, notices of appeal, appeal briefs, reply briefs, appeal forwarding fees, requests for oral hearing before PTAB, responses to substitute examiner’s answer, amendments when reopening prosecution in response to PTAB decision, maintenance fees for small and micro entities and requests for rehearing of a PTAB decision.

Similarly, trademark deadlines that fall inclusively between March 27, 2020, and May 31, 2020, will be considered timely if the filing is made on or before June 1, 2020. The June 1, 2020 deadline extension applies to responses to office actions including notices of appeal from final refusal, statements of use, notices of opposition, priority filings under 15 U.S.C. §§ 1126(d)(1), 1141g, transformations of extension of protection to the U.S. into U.S. trademark application, affidavits of use or excusable nonuse under 15 U.S.C. §§ 1058(a), 1141k(a) and renewal applications.

For trials under the America Invents Act, inter partes review (IPR) and post-grant review (PGR) extensions for preliminary response to petitions for IPR and PGR or any related responsive filing can be extended 30 days from the original due date if the original due date falls inclusively between March 27, 2020, and April 30, 2020. Practitioners requesting relief due to the COVID-19 outbreak for deadlines for the filing of a preliminary response for IPR or PGR or any related response filing for deadlines after April 30, 2020, must contact PTAB to request an extension of time. If an extension is granted for the preliminary response in IPR and PGR matters, the USPTO has discretion to extend the three-month deadline for institution of IPR and PGR from the date of receipt of the preliminary response or the last day to file the response.

Applicants should be aware that any requested extension must be accompanied by a statement indicating that the delay was “due to the COVID-19 outbreak.” The statement need not be verified or in affidavit or declaration form and should preferably be submitted as a separate paper, though it will be accepted if made in a conspicuous manner. A delay “due to the COVID-19 outbreak” is defined as a practitioner, applicant, patent owner, petitioner, third-party requester, inventor or other person associated with the filing or fee being personally affected by the COVID-19 outbreak, which may be due to factors such as office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness or similar circumstances. The extension to June 1, 2020, is not a blanket extension that any applicant can take because the applicant (or practitioner) was negligent and missed a deadline. Statements requesting the extension are considered certifications under 37 C.F.R. § 11.18(b), which provides that statements made of the party’s own knowledge are true or believed to be true. Violators would be sanctioned.

Other international IP offices have undertaken similar measures with respect to deadline extensions or suspensions with varying requirements. For example, the European Patent Office, following a notice issued May 1, 2020, has extended deadlines falling on or after March 15, 2020, to June 2, 2020, without the need for an accompanying statement describing the impact of COVID-19 on the delay. Similarly, applicants in Australia can request extensions of up to three months free of charge as of April 22, 2020. This is in contrast to practice before the USPTO, which requires a statement indicating that the delay was “due to the COVID-19 outbreak” as previously described. Applicants having business before a particular IP office should stay informed with respect to updates regarding procedure and operations of the office due to the COVID-19 outbreak as procedural matters such as deadlines can often change following developments to each country’s response to the pandemic.

Applicants should also be aware that the authority given to the USPTO director under the CARES Act does not provide relief for grace periods such as the one-year statutory bar for filing a nonprovisional application following an inventor’s initial disclosure under 35 U.S.C § 102(b)(1)(A) and those set by international treaties such as the 12-month priority right established under the Paris Convention to claim priority in a subsequent foreign application to an earlier filed domestic application. The current strategy is to file an initial patent application, such as a provisional application, and file a PCT or full U.S. utility application at the anniversary of the initial filing, and within six months of the one year anniversary of the initial filing (18 months), file improvement patent application(s) ahead of the publication of the PCT or utility application. This strategy would avoid the prior art effect of the publication of the prior PCT or utility application against the improvement application(s). However, the inability of inventors to return to the laboratory to work on improvements as a result of the COVID-19 outbreak has negatively impacted this strategy. Thus, applicants should plan on meeting any priority deadlines established by international treaty such as the Paris Convention, but at the same time stay informed on updates from national governments and patent offices, who may provide some form of relief through extending grace periods to account for this lost time to work on improvements.

In short, the COVID-19 outbreak has altered many strategies and procedures previously in place with respect to practice before international IP offices and new developments can arise daily that further alter practice. Because of the ever-changing environment with respect to practice before international IP offices, applicants should stay informed and up to date with any newly issued notices or regulations altering practice before a particular IP office. While some IP offices such as the European Patent Office and IP Australia provide blanket relief to applicants, others, such as the USPTO, merely provide relief as a backstop. Thus, applicants should utilize relief only if it is truly needed and should still plan on meeting any previously established deadline.

About Duane Morris

Duane Morris has created a COVID-19 Strategy Team to help organizations plan for, respond to and address this fast-moving situation. Contact your Duane Morris attorney for more information. Prior Alerts on the topic are available on the team’s webpage.

For More Information

If you have any questions about this Alert, please contact Patrick C. Gallagher, Ph.D., Thomas J. Kowalski, Deborah L. Lu, Ph.D., Brandon A. Chan, Ph.D., any of the attorneys in our Intellectual Property Practice Group, any of the attorneys in our Life Sciences and Medical Technologies Industry Group, any member of the COVID-19 Strategy Team or the attorney in the firm with whom you are regularly in contact. 

Disclaimer: This Alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice. For more information, please see the firm's full disclaimer.