In the Face of Unalterable Statutory Deadlines, the USPTO Waives Fees for Petitions to Revive to Minimize the Adverse Impact of COVID-19

As COVID-19 spreads rapidly throughout the United States and the world, many industries are seeing a significant impact on their operations. Indeed, every day, more businesses are required to shut down operations or rely on a telecommuting workforce in response to the COVID-19 pandemic. In response to the need to facilitate social distancing and in recognition of the challenges faced by lawyers and litigants, federal and state courts throughout the country have issued orders automatically extending many court-imposed deadlines.

 In contrast, however, the timing of numerous filings at the United States Patent and Trademark Office (USPTO) are dictated by statute, and thus the USPTO does not have the authority to alter these critical patent and trademark deadlines. In an effort to minimize the potential adverse impact from the COVID-19 pandemic, on March 16, 2020, the USPTO issued a notice (Notice) offering some relief if a statutory deadline cannot by met, by waiving fees associated with petitions to revive unintentionally abandoned applications.[1]

Certain filing deadlines encountered during the prosecution of patent or trademark applications are set by Congress in the respective patent and trademark statutes. For example, a patent applicant has six months to respond to an Office Action in a patent application.[2] If the applicant does not respond within the statutorily set time period, the patent application is deemed to be abandoned. Since this six-month period is set by statute, the USPTO, an administrative agency, cannot alter or waive these deadlines.

To aid applicants, the USPTO is now waiving fees associated with a petition to revive an unintentionally abandoned application, where the patent practitioner, the applicant or at least one inventor was personally affected by the coronavirus outbreak.

 In order to avail themselves of the fee waiver, petitioners/patent applicants must file a petition to revive within the deadline set by the Code of Federal Regulations. The petition must include the required reply to the outstanding USPTO communication, a copy of the Notice issued by the USPTO and a statement that the delay in filing the required 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.

In addition to waiving fees for petitions to revive, the USPTO has also waived its requirement for an original handwritten signature personally signed in permanent dark ink, or its equivalent. This requirement was waived for certain correspondence with the Office of Enrollment and Discipline, and certain payments by credit card. In such instances, the USPTO will accept copies of handwritten signatures.

The availability of a no-fee petition to revive an unintentionally abandoned patent application by the USPTO will certainly be welcome relief for some applicants working in these challenging times, although applicants must still exercise caution and diligence since revival may not be available or effective in all cases. For example, a delay in filing an original application may result in another applicant filing first and that applicant obtaining priority to an invention, or it may create a situation where a statutory bar arises that precludes the grant of a patent. A petition to revive may be of no help in these situations.

Hunton Andrews Kurth LLP has implemented a number of business continuity initiatives and our intellectual property team remains fully operational and available to assist in these challenging times.

For more resources to help you understand and respond to the legal implications of the current global health emergency, including our most recent updates and alerts, please visit the firm’s Coronavirus/COVID-19 Resource Center.

 Notes

[1] Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak

[2] See 35 U.S.C. § 133; mpep.uspto.gov/RDMS/MPEP/e8r9#/e8r9/d0e303207.html.