USPTO And Copyright Office Exercise Emergency Powers Granted By CARES Act To Provide Further Relief During COVID-19 Crisis

The unprecedented $2.2 trillion Coronavirus Aid, Relief, and Economic Security Act ("CARES Act"), which was enacted on March 27, 2020, includes Section provisions which grant the Director of the United States Patent and Trademark Office ("USPTO") and the Register of Copyrights discretionary emergency authority to modify statutory deadlines during the coronavirus emergency.1 Last week, both the Director of the USPTO and the Register of Copyrights announced that they were invoking their emergency authority provided by the CARES Act to extend certain deadlines and modify other requirements to provide additional relief for those affected by the ongoing coronavirus emergency.

Patents and Trademarks

In accordance with Section 12004 of the CARES Act, the Director of the USPTO has determined that the coronavirus emergency has prejudiced the rights of applicants, patent and trademark owners, or others appearing before the USPTO in patent and trademark related matters and has prevented those persons from filing a document or fee with the USPTO. The Director specifically noted that the spread of the virus has significantly disrupted operations of numerous businesses, law firms, and inventors, and that small businesses and independent inventors may face particular difficulties. Accordingly, the Director has invoked his emergency authority under the CARES Act to extend certain patent- and trademark-related deadlines for persons who are unable to meet the original deadline due to the COVID-19 outbreak.

Specifically, with regard to patents, the USPTO is granting an automatic 30-day extension for certain filings whose initial due dates are between March 27, 2020 and April 30, 2020, if the delay in filing is due to the COVID-19 outbreak. The filings which are extended by 30 days include:

reply to an Office notice issued during pre-examination processing; reply to an Office notice or action issued during examination or patent publication processing; issue fee; notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31; appeal brief under 37 C.F.R. § 41.37; reply brief under 37 C.F.R. § 41.41; appeal forwarding fee under 37 C.F.R. § 41.45; request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47; response to a substitute examiner's answer under 37 C.F.R. § 41.50(a)(2); amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b); maintenance fee; request for rehearing of a PTAB decision under 37 C.F.R. § 41.52. Notably, for items (i) and (xi) above, the extension only applies to small and micro entities. Persons who do not qualify for small or micro entity status must still comply within the initial deadline for these filings.

The USPTO is also providing a 30-day extension for the following patent-related filings at the PTAB which have initial due dates between March 27, 2020 and April 30, 2020, upon request, if the requestor affirms that filing within the original deadline was or may be delayed due to the COVID-19 outbreak:

a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or...