Continued Due Care and Diligence Before the USPTO in the face of COVID-19 (UPDATED)

Continued Due Care and Diligence Before the USPTO in the face of COVID-19 (UPDATED)

by Pat Santos

Note: This blog post is updated to reflect the passage of the CARES Act and deadline extensions in force and the Notice of Waiver of Patent-Related Timing Deadlines under the CARES Act as of March 31, 2020 (https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf).

First of all, I wish good health for you, your friends, your family, your community and for all of us. The present events of the Coronavirus (COVID-19) have dominated the news and for many of us have greatly impacted our lives. All of us, as lawyers, have likely heard from our clients about delays, cancellations and, of course, on a personal note, how COVID-19 has impacted their lives and a wish for a return to normality. On a professional note, one of the highest callings for a lawyer is for us to “keep the trains running” while the client is impacted by events. While we ourselves cope with stay-at-home/shelter-in-place, school closures, and shortages, we as lawyers should continue our diligence for the client while remaining compliant with government directives.

As of March 31, 2020, the USPTO issued the Notice of Waiver of Patent-Related Timing Deadlines under the CARES Act as of March 31, 2020 (https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf Where some prosecutional deadlines have either been waived or extended. However, note that the Notice does NOT extend original filing deadlines, including for first filing of patent applications, provisional conversions, PCT/National Stage applications or Inter partes review petitions.

The CARES Act is statutory, but apart from the CARES ACT, the question is whether there is provision to obtain other deadline waivers and extensions? After all there were earlier notices. Note that there are “extraordinary situations” under 37 CFR 1.183 and 37 CFR 2.146 where the Director of the USPTO may set aside rules.

On March 16, 2020, the USPTO states that it, “considers the effects of coronavirus to be an ‘extraordinary situation’ within the meaning of 37 CFR 1.183 and 37 CFR 2.146.” (https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf) Accordingly, under some circumstances the USPTO will waive petitions to revive. Furthermore, as of March 19, 2020 the USPTO will waive the original written signature requirements set forth in 37 CFR 1.4(e) (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) “(1) Correspondence requiring a person’s signature and relating to registration to practice before the Patent and Trademark Office in 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.”

Note that this USPTO notice does NOT say a 1.183 petition to suspend rules for extraordinary events will be automatically granted. Indeed, the March 16 notice is careful to emphasize that, “This notice does not grant waivers or extensions of dates or requirements set by statute.” Already I have seen incorrect communications from clients where they misread the notices that fee waivers also came with improper assumptions that all deadlines were extended. Again, none of the March 31 (CARES Act), March 19 or March 16 notices extend original filing deadlines.

In the face of the present situation, it may be difficult to fathom how a mulligan might not be granted. However, there are those of us who remember a similar situation nearly two decades ago — the Anthrax scare after 9/11. Post office delivery resulted in delays to the USPTO, which in turn spawned a large number of petitions to revive.

In one case, Application 10/061,879 for a “Woodworking Machine,” the applicant filed a petition to adjust the filing date, because of the Anthrax scare. The petition was dismissed because applicant had recourse to use Express mail. The USPTO used relatively strong language in its dismissal, “A reasonable person acting with due care and diligence would have filed the application in compliance with 37 CFR 1.10 to ensure its timely filing in the PTO.” So many petitions were dismissed on these ground that the USPTO called out Express Mail on its website (https://www.uspto.gov/patent/patents-announcements/patent-applications-submitted-uspto-between-11sep2001-and-01dec2001) later. In other words, we should not assume that 1.183 will relieve us of using alternatives to work around the present situation.

In another case, Application 09/879,811, a network software management application, the applicant filed a petition to rescind a non-publication request. While the petition was ultimately granted, the grounds claimed under 1.183 were dismissed with the statement “the USPTO will not normally consider an extraordinary remedy when the rules already provide an avenue for providing the relief sought.” In other words, the rules still apply.

In a more extreme case, Application 09/890,799, a petition for a corrected notice of acceptance and filing receipt was denied under 1.183. The original filing did not have a signed declaration. The later correction only had one of three inventors sign. The petition was three years after the 2001 events. Although the USPTO simply stated that the filing was not compliant, the USPTO seemed to be indicating that perhaps baseline compliance after the passing of an emergency had to be satisfied prior to even considering 1.183.

Turning from the cases to the present, there are some very practical things that we can do to ensure due care and diligence.

  1. Communication – Clearly communicate with clients and inquire about their situation. Expedite disclosures. Clearly but compassionately notify clients that bar dates are bar dates notwithstanding the present situation.
  2. Continue to Watch Deadlines – Where a bar date is imminent, consider filing a provisional. In some cases where client review is pending, consider filing the unreviewed non-provisional application as a provisional.
  3. Mail Management – Work with the paralegal staff to implement mail stops and mail forwarding for closed offices. Within the guidelines of your locality, schedule regular pickup.
  4. Track USPTO Notices on Office Availability/Make Allowances on Electronic Filing – While most of use electronic filing as a matter of course, we all recall times when EFS is down. Accordingly, add several days buffer (if you don’t already) prior to electronic filing. Also note that the USPTO may close the office in response to COVID-19.

In general, proactively anticipate disruption and identify workarounds. As with Force Majeure clauses, before the USPTO extraordinary events do not absolve us from acting where practicable.

There is some comfort in reading these old cases nearly two decades after the fact. Many younger practitioners do not remember 9/11, let alone the anthrax scare. Seeing how the USPTO read cases three years after the fact suggests that we too will return to normality. May we read our cases in the future and see that we continued to exercise due care and diligence in the face of COVID-19. Be healthy.

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