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USPTO Announces Extension for Petitioning for Restoration of Right of Priority or Benefit

Impact of COVID-19 Pandemic on Patent Offices – June 14 Update

In a discover posted on its web site on Thursday, June 11, the U.S. Patent and Trademark Office introduced that it was extending the time interval for petitioning for sure rights of precedence or profit, in addition to waiving the corresponding petition charge.  As the consequence of the President’s declaration on March 13, 2020 of a nationwide emergency underneath the National Emergencies Act because of the COVID-19 pandemic, the discover signifies that USPTO Director Andrei Iancu “determined that the emergency prejudiced the rights of applicants, patent owners, or others appearing before the USPTO in patent matters and may have prevented them from filing documents or fees with the Office,” and that the consequences of the COVID-19 pandemic created a unprecedented state of affairs for affected patent candidates and patentees.  Therefore, the USPTO, pursuant to the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) and 37 C.F.R. § 1.183, is offering an extension for petitioning for the restoration of sure rights of precedence or profit.

The discover explains that to be entitled to a declare of precedence to or profit of a prior-filed overseas or provisional utility, an utility looking for precedence or profit have to be filed inside twelve months (or six months within the case of a design utility claiming overseas precedence) of the prior-filed overseas or provisional utility.  After that interval expires, U.S. patent legislation permits an applicant to 2 extra months to file an utility looking for precedence or profit together with a petition for restoration of the fitting to say precedence to or profit of a prior-filed overseas or provisional utility underneath 37 C.F.R. §§ 1.55(c) or 1.78(b), offered that the delay in submitting the appliance looking for precedence or profit was unintentional.

The discover extends the two-month interval described above such that for sure nonprovisional purposes claiming the profit of a prior-filed overseas utility underneath 35 U.S.C. § 119(a) or claiming the profit of a prior-filed provisional utility underneath 35 U.S.C. § 119(e), the two-month interval underneath §§ 119(a) or 119(e) will run till the later of July 31, 2020, or the expiration of the two-month interval set forth in §§ 119(a) or 119(e).  The extension offered by the discover solely applies to nonprovisional purposes for which the 12-month time interval underneath 35 U.S.C. §§ 119(a) or 119(e) ended or will finish between March 27, 2020, and July 30, 2020, inclusive of each dates, and offered that the nonprovisional utility looking for precedence of a prior-filed overseas or provisional utility is accompanied by both a petition underneath 37 C.F.R. § 1.55(c) or a petition underneath 37 C.F.R. § 1.78(b), and an announcement that the failure to well timed file the appliance was because of the COVID-19 outbreak as outlined within the Office’s discover of April 28, 2020.  The discover additionally signifies that if the above necessities are met, the Office will waive the petition charge underneath 37 C.F.R. § 1.17(m) (at the moment $2,000 for massive entities) for the petition underneath 37 C.F.R. § 1.55(c) or § 1.78(b).

As we reported with respect to the Office’s discover of April 28, 2020, the Office defines a delay in submitting or cost as being “due to the COVID-19 outbreak”:

[I]f a practitioner, applicant, patent proprietor, petitioner, third get together requester, inventor, or different individual related to the submitting or charge was personally affected by the COVID-19 outbreak, together with, with out limitation, by workplace closures, money stream interruptions, inaccessibility of recordsdata or different supplies, journey delays, private or household sickness, or related circumstances, such that the outbreak materially interfered with well timed submitting or cost.

In addition to the reduction described above for sure nonprovisional purposes claiming the profit of a prior-filed overseas or provisional utility underneath 35 U.S.C. §§ 119(e) or 119(a), the Office can also be offering some reduction for sure International purposes wherein a petition underneath 37 C.F.R. § 1.452 has been filed to revive the fitting of precedence.  In explicit, with respect to International purposes for which the time interval for submitting the International utility ended or will finish between March 27, 2020, and July 30, 2020, inclusive of each dates, if the appliance is filed inside the two-month interval set forth in 37 C.F.R. § 1.452, and is accompanied by a petition underneath 37 C.F.R. § 1.452 and an announcement that the failure to well timed file the appliance was because of the COVID-19 outbreak as outlined within the Office’s discover of April 28, 2020, the Office will waive the petition charge underneath 37 C.F.R. § 1.17(m).

The discover advises candidates who file a petition underneath 37 C.F.R. §§ 1.55(c), 1.78(b), or 1.452 in accordance with the above provisions through the USPTO’s patent digital submitting methods (EFS-Web or Patent Center) to make use of doc code PET.RELIEF for the petition.  The Office additionally extremely recommends that candidates use kind PTO/SB/449 to make the required assertion that the delay in submitting was because of the COVID-19 outbreak.

Comments and inquiries relating to the discover will be directed by e-mail to Covid19PatentsRelief@uspto.gov or by phone (if e-mail submission of feedback isn’t possible) to the Office of Patent Legal Administration at 571-272-7704.


Patent Docs
will proceed to watch and report on patent-related developments associated to the COVID-19 pandemic.  In addition, we encourage our readers to tell us about developments associated to the COVID-19 pandemic at different patent places of work.

For further info relating to this and different associated subjects, please see:

• “Impact of COVID-19 Pandemic on Patent Offices – June 10 Update,” June 10, 2020
• “USPTO Announces Further Extension of Certain Patent Deadlines for Small and Micro Entities,” May 27, 2020
• “USPTO Announces COVID-19 Prioritized Examination Pilot Program,” May 18, 2020
• “USPTO Announces Further Extension of Certain Patent Deadlines,” April 30, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – April 12 UPDATE,” April 12, 2020
• “USPTO Answers FAQs on Extension of Patent Deadlines under CARES Act,” April 6, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – April 2 UPDATE,” April 2, 2020
• “USPTO Announces Extension of Certain Patent Deadlines,” March 31, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts — March 29 UPDATE,” March 29, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts — March 26 UPDATE,” March 26, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts — March 19 UPDATE,” March 19, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts — March 18 UPDATE,” March 18, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts — March 17 UPDATE,” March 17, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – UPDATED,” March 16, 2020
• “Impact of COVID-19 Pandemic on Patent Offices and Federal Courts,” March 15, 2020

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