Updates: USPTO’s Responses to COVID-19

By Judy Lu

Due to the widespread of COVID-19, the USPTO is making accommodations to minimize the effects of coronavirus.

37 CFR 1.183 “suspension of rules” and 37 CFR 2.146 (a) (5) state that “petition may be taken to the director in an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946.” The USPTO views COVID-19 to be an “extraordinary situation.”

On March 19, the USPTO made changes to its operation hours, the event schedule, petition fees, signature requirements, and potentially more changes will be in the future.

1. USPTO waived original handwritten signature requirement

Regarding the “extraordinary situation,” the USPTO is waiving the signature requirements of 37 CFR 1.4(e)(1) for certain correspondence of “patent cases, enrollment and disciplinary investigations, or disciplinary proceedings” and (2) “payments by credit cards where the payment is not being made via the Office's electronic filing systems.” The Office noted that the requirements of 37 CFR 1.4(e)(1) and (2) are the only USPTO requirements for original handwritten, ink signatures, and the USPTO has no other requirements for original handwritten, ink signatures.

2. USPTO waived the petition fee to revive an abandoned application or reinstate a canceled/expired registration.

On March 16, the USPTO announced 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,” the petition fees in 37 CFR l .17(m) “for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, or for the delayed response by the patent owner in any reexamination proceeding,” would be waived if the patent applicant or patent owner files the reply with a petition under 37 CPR 1.137(a), revival on the basis of unintentional delay.

Applicants should include a statement that the delay in filing the required reply was due to the effect of coronavirus. In addition, the USPTO suggested applicants or patent owners to file the petition accompanied by the required reply and a copy of this notice. To be eligible for waiving the petition fee, the petition “must be filed not later than two months of the issue date of the notice of abandonment or the notification that reexamination prosecution.”

3. USPTO offices closed to the public

Beginning Monday, March 16, 2020 all USPTO offices closed to the public, but they would remain open for employees, contractors, and those with access badges. The closure of offices, however, would not interrupt the USPTO operations, and deadlines for patent and trademark applications would not be extended.

4. Interviews, oral hearings and in-person meetings are held virtually

Interviews, oral hearings and other in-person meetings on or after Friday, March 13, 2020 would be conducted virtually by telephone or video. The USPTO would send further notice and instructions to relevant applicants, examiner and examining attorneys, and other involved parties.

5. Up-to-date events schedule

Scheduled events, such as “2020 New Mexico Tech Inventors & Entrepreneurs Workshop” that was supposed to be held on March 27, were canceled. Other upcoming events, including “Learn about mechanical disciplines at the TC 3600 and TC 3700 Customer Partnership Meeting” and “Agents and attorneys: Learn to think like an examiner (STEPP) 3-day course” that would be held in April, were postponed. The USPTO changed some events to teleconference only and rescheduled events such as “Tour the Silicon Valley USPTO.”

References

USPTO notices regarding COVID-19 https://www.uspto.gov/coronavirus

1002 Petitions to the Director of the USPTO [R-07.2015] https://www.uspto.gov/web/offices/pac/mpep/s1002.html

TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1700d1e29.html

Waiver of Original Handwritten Signature Requirement Due to the COVID-19 outbreak

https://www.uspto.gov/sites/default/files/documents/Waiver%20of%20Original%20Handwritten%20Signature%20Requirement%20Due%20to%20the%20COVID-19%20Outbreak%20--%20Signed%20and%20Dated%20--%203-19-2020.pdf

501 Filing Papers With the U.S. Patent and Trademark Office [R-07.2015] https://www.uspto.gov/web/offices/pac/mpep/s501.html

Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf

USPTO Fee Schedule https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

2668 Petition for Entry of Late Papers for Revival of Reexamination Proceeding [R-07.2015] https://www.uspto.gov/web/offices/pac/mpep/s2668.html

USPTO offices closed to the public https://www.uspto.gov/about-us/news-updates/uspto-offices-closed-public

USPTO update on in-person meetings https://www.uspto.gov/about-us/news-updates/uspto-update-person-meetings

Events https://www.uspto.gov/about-us/events