The effects of the COVID-19 outbreak have created an extraordinary situation for affected patent applicants and patentees. Therefore, USPTO is extending the time period for petitioning for certain rights of priority or benefit and waiving the associated petition fee.

Restoration of the Right of Priority to or Benefit of a Prior-Filed Application

Ordinarily, if an applicant seeks to claim priority to or benefit of a prior-filed foreign or provisional application, the application seeking priority or benefit must be filed within 12 months (or 6 months in the case of a design application claiming foreign priority) of the prior-filed application. After this period expires, the patent laws permit an applicant two more months to file an application seeking priority or benefit in order to be able to petition for restoration of the right to claim priority to or benefit of a prior-filed foreign provisional application if the delay in filing the application seeking priority or benefit was unintentional. USPTO provides the following additional relief:

Nonprovisional Applications and 35 U.S.C. §§ 119(a) and 172

For any nonprovisional application seeking priority of a prior-filed foreign application for which the 12-month time period ended between, and inclusive of both, March 27, 2020, and July 30, 2020, the USPTO will:

• Permit the two-month time period for restoring the right of priority to a foreign application to run until the later of July 31, 2020 or the expiration of the two-month period set forth in 35 U.S.C. § 119(a); and
• Waive the petition fee in 37 CFR § 1.17(m) for a petition under 37 CFR § 1.55(c)

Nonprovisional Applications and 35 U.S.C. § 119(e)

For any nonprovisional application seeking the benefit of a prior-filed provisional application for which the 12-month time period ended between, and inclusive of both, March 27, 2020, and July 30, 2020, the USPTO will:

• Permit the two-month time period for restoring the benefit of a provisional application to run until the later of July 31, 2020 or the expiration of the two-month period set forth in 35 U.S.C. § 119(e); and
• Waive the petition fee in 37 CFR § 1.17(m) for a petition under 37 CFR § 1.78(b).

International Applications

The USPTO will waive the petition fee to restore the right of priority for which the time period for filing the international application ended between, and inclusive of both, March 27, 2020, and July 30, 2020, provided that the application:

• is filed within the two-month period set forth in 37 CFR § 1.452; and
• is accompanied by a petition under 37 CFR § 1.452 and a statement that failure to timely file the international application was due to the COVID-19 outbreak as defined in the USPTO’s notice of April 28, 2020.

The USPTO strongly encourages patent applicants to:

• File documents and fees via the USPTO patent electronic filing systems (EFS-Web or Patent Center);
• Patent applicants who file a petition under 37 CFR § 1.55(c), 1.78(b), or 1.452 in accordance with this notice and use the USPTO patent electronic filing systems (EFS-Web or Patent Center) should use document code PET.RELIEF for the petition;
• Use form PTO/SB/449 titled “Statement of Delay Due to COVID-19 Outbreak” to make the required statement that the delay in filing was due to the COVID-19 outbreak.

For more useful information about USPTO Covid-19 Programs visit M&B IP  and read our latest blog post here.