The USPTO considers the effects of the COVID-19 outbreak to be an "extraordinary situation" within the meaning of 37 C.F.R. § 1.183 for affected patent applicants and patentees.For patent applicants or patent owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020 or earlier (when taking into account all available extensions of time under 37 C.F.R. § 1.136(a)), such that the application became abandoned or the reexamination prosecution became terminated or limited, the USPTO will waive the petition fee in 37 C.F.R. § 1.17(m) when the patent applicant or patent owner files the reply with a petition under 37 C.F.R. § 1.137(a) and a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (1)(b) above. See 35 U.S.C. § 41(a)(7).

The USPTO considers the effects of the COVID-19 outbreak to be an "extraordinary situation" within the meaning of 37 C.F.R. § 1.183 for affected patent applicants and patentees.For patent applicants or patent owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020 or earlier (when taking into account all available extensions of time under 37 C.F.R. § 1.136(a)), such that the application became abandoned or the reexamination prosecution became terminated or limited, the USPTO will waive the petition fee in 37 C.F.R. § 1.17(m) when the patent applicant or patent owner files the reply with a petition under 37 C.F.R. § 1.137(a) and a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (1)(b) above. See 35 U.S.C. § 41(a)(7).

For Trademark Trial and Appeal Board (TTAB) situations not listed above, a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate, can be made.For patent applicants and patent owners who were unable to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020, or earlier, such that the application became abandoned or the reexamination prosecution became terminated or limited, the USPTO will waive the petition fee in 37 CFR 1.17(m) when the patent applicant or patent owner files the reply with a petition under 37 CFR 1.137(a) and a statement that the delay in filing or payment was due to the COVID-19 pandemic. The inclusion of the statement that the delay in filing or payment was due to the COVID-19 outbreak will be treated as a request for sua sponte waiver of the petition fee under 37 CFR 1.17(m).In situations where any patent applicant/owner seeks to file a petition to revive under 37 CFR 1.137(a) with a request to waive the petition fee under 37 CFR 1.17(m) due to the effects of the COVID-19 outbreak, the patent applicant/owner must promptly file the petition under 37 CFR 1.137(a) (together with the required statement and required reply.

The Notice only provides for the waiver of certain petition feesThe USPTO’s designation of the effects of the coronavirus as an “extraordinary situation” does not provide carte blanche to miss dates or fail to pay fees. The USPTO Notice provides for the waiving of petition fees to revive only in the following limited circumstances: (i) patent applications that were abandoned or (ii) a reexamination prosecution that was terminated or limited, as permitted under 37 CFR 1.137(a).To qualify for the fee waiver, the petition under 37 1.137(a) must include a statement that “the delay in filing the reply required to the outstanding Office communication 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.” We note that the term “personally affected by” does not require confirmation that a practitioner, applicant, or at least one inventor actually contracted the coronavirus.

Deadlines and other requirements set by statute remain in force, but the USPTO is lowering the financial costs for reviving a patent or trademark application that went abandoned when a deadline was missed. Additionally, the USPTO is waiving the requirement for an original handwritten signature in the few instances where the office requires one.For patent applicants who are unable to file a timely reply to a USPTO communication because of the coronavirus outbreak, the USPTO will waive the petition fee for filing a petition to revive the abandoned application under 37 C.F.R. § 1.137(a) (revival on the basis of unintentional delay). With the filing of the delayed reply, the applicant will need to include a copy of the USPTO’s official notice, which the USPTO will treat both as a representation that the applicant’s delay was due to the effects of the coronavirus outbreak and as a request for a waiver of the petition fee.

Deadlines and other requirements set by statute remain in force, but the USPTO is lowering the financial costs for reviving a patent or trademark application that went abandoned when a deadline was missed. Additionally, the USPTO is waiving the requirement for an original handwritten signature in the few instances where the office requires one.For patent applicants who are unable to file a timely reply to a USPTO communication because of the coronavirus outbreak, the USPTO will waive the petition fee for filing a petition to revive the abandoned application under 37 C.F.R. § 1.137(a) (revival on the basis of unintentional delay). With the filing of the delayed reply, the applicant will need to include a copy of the USPTO’s official notice, which the USPTO will treat both as a representation that the applicant’s delay was due to the effects of the coronavirus outbreak and as a request for a waiver of the petition fee.

In particular, the Office declared that it "considered the effects of coronavirus to be an 'extraordinary situation' within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners," and thus, would be waiving petition fees in certain situations for customers impacted by the coronavirus. More specifically, the Office explained in an official notice posted on its website that:For patent applicants or patent owners who were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited, the USPTO will waive the petition fee in 37 CFR 1.17(m) when the patent applicant or patent owner files the reply with a petition under 37 CFR 1.137(a). See 35 U.S.C. § 41(a)(7).

In an Official Notice, the USPTO indicated that it considers the effects of the COVID-19 outbreak to be within the meaning of an “extraordinary situation” as provided in 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark customers. As a result, for customers who are unable to timely reply to a USPTO communication due to the effects of the outbreak, resulting in an application being held abandoned, the USPTO will waive the petition fee when the customer files the reply with a petition under 37 CFR 1.137(a).The inclusion of a copy of the Official Notice with the reply will serve as a representation that the delay in filing the reply was because of the effects of the COVID-19 outbreak and serve as a request for waiver of the petition fee. The petition must also include a statement that the delay in filing the reply to the USPTO communication was because the practitioner, applicant, or an inventor, was personally affected by the COVID-19 outbreak causing them to be unable to file a timely reply.

an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional. In particular, for petitions decided on or after March 2, 2020, the Office will require additional information when a petition to revive an abandoned application is filed more than two years after the date the application became abandoned, a petition to accept a delayed maintenance fee payment is filed more than two years after the date the patent expired for nonpayment, or a petition to accept a delayed priority or benefit claim is filed more than two years after the date the priority or benefit claim was due.The notice indicates that the provisions for the revival of an abandoned application, for the acceptance of a delayed maintenance fee payment, and for the acceptance of a delayed priority or benefit claim all provide that "[t]he Director may require additional information where there is a question whether the delay was unintentional" (37 C.F.R. §§ 1.137(b)(4), 1.378(b)(3), 1.55(e)(4), 1.78(c)(3) and (e)(3)). The notice also indicates that the reason for requiring additional information when a petition in the above instances is filed more than two years from the date an application became abandoned, a patent expired, or a priority or benefit claim was due "is to ensure that . . . the USPTO is provided with sufficient information of the facts and circumstances surrounding the entire delay to support a conclusion that the entire delay was 'unintentional,'" adding that "[a]n extended period of delay (i.e., more than two years from the date the application became abandoned, the patent expired, or a priority or benefit claim was due) in filing a petition to revive an application, accept a delayed maintenance fee payment, or accept a delayed priority or benefit claim . . . raises a question as to whether the entire delay was unintentional."Practitioners or applicants who have had to revive an unintentionally abandoned application may be familiar

The Office's latest notice also restricts the extensions to the deadlines for the payment of the following required fees:a) basic filing fee, search fee, examination fee, and late filing surcharge (37 CFR § 1.16(f), 1.16(g), or 1.492(h)) due in reply to an Office notice issued during pre-examination processing; b) basic national fee; c) issue fee; or d) maintenance fee;In addition to the fee deadline extensions listed above, the Office's notice states that "other extensions of time and other relief remain available to those who need it on a case-by-case basis." According to the notice, Applicants can submit one of three petitions together with the applicable petition fee (unless the fee is waived):a) extensions of time under 37 CFR § 1.136 remain available for filing replies to Office actions and notices issued during patent application processing or examination;b) petitions under 37 CFR § 1.137 to revive an application remain available if an inability to file or pay patent-related documents or fees by their due date has resulted in the abandonment of an application or termination or limiting of prosecution in a reexamination proceeding; andc) petitions under 37 CFR § 1.378 to accept a delayed maintenance payment remain available if a maintenance fee has not been paid by its due date.For petitions to revive, the Office notes that for all entities, the Office will continue to provide relief in the form of a waiver of the petition fee for the revival of applications that became abandoned, or reexamination proceedings that became terminated or limited, as a result of the COVID-19 outbreak. However, the Office's latest notice sets a deadline of July 31, 2020, for the submission of any petition under 37 CFR § 1.137 that will be eligible for the fee waiver.