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May 26, 2020Client Alert

Applicants Still Can Take Advantage of Aspects of COVID-related Extension of Time

The United States Patent and Trademark Office (USPTO) instituted a COVID-related extension of time for qualifying proceedings, which may provide a mechanism for applicants to both delay deadlines and defer costs.

The Director of the USPTO has determined applicants may qualify for an extension of time under subsection 12004(a) of the CARES Act if the spread of COVID-19 prejudiced the rights of the applicant, patent owner, inventor, or others appearing before the USPTO in patent matters. The USPTO advises that qualifying events include, without limitation, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such as the outbreak materially interfering with timely filing or payment. 

In order to qualify for the extension, the deadline must fall on or between March 27, 2020 and May 31, 2020 (“the COVID period”), and must be related to one of the qualifying proceedings. Qualifying proceedings include patent application examination proceedings, reexamination proceedings, appeals, and Patent Trial and Appeal Board proceedings, among others. A full list of the qualifying proceedings may be found in the USPTO’s April 28, 2020 Notice

For qualifying events, if the original deadline of a proceeding falls within the COVID period, the original deadline is effectively changed to a new deadline of June 1, 2020. If additional extensions are desired, the standard extension procedure is restarted as of June 1, 2020. Therefore, all standard extensions under 37 CFR 1.17(a) are still available after June 1, 2020. For example, a one-month extension would further delay the filing deadline to July 1, 2020. A one-month extension fee is $200 for large entities, $100 for small entities (including nonprofit organizations or organizations having 500 employees or less), and $50 for micro entities (including independently owned and operated organizations).

If the original deadline of the proceeding falls prior to the COVID period, the original deadline may be pushed into the COVID period through standard extension rules under 37 CFR 1.17(a), and then the new deadline falling within the COVID period would be effectively changed to June 1, 2020. Thereafter, all remaining standard extensions are still available after June 1, 2020. 

This COVID-related extension of time may provide a valuable mechanism for delaying deadlines and deferring costs. Please contact your Michael Best attorney for more details regarding the availability of a COVID-related extension.

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