Attachment 26 - DCB 2020-17.docx

D a t a C a p t u r e B u l l e t i n

Number 2020-17 July 14, 2020

LATE ISSUE FEE PAYMENTS AND LATE RESPONSES TO OTHER POST-ALLOWANCE REQUIREMENTS WHEN APPLICANTS CITE COVID-19 AS REASON FOR THE DELAY

(SUPERSEDES DCB NO. 2020-15)

***This bulletin is effective immediately.***

The last ten pages of this bulletin show the April 28, 2020, USPTO notice called Notice of Extended Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Patent Applicants and Patentees and the May 27, 2020, USPTO notice called May 2020 Update Regarding Certain Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Applicants, Patent Owners, and Others and the June 29, 2020, USPTO notice called June 2020 Update Regarding Certain Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Patent Applicants and Patentees.

· Issue Fee Payments---For small or micro entities ONLY

For any issue fee payment that is due between, and inclusive of, both March 27, 2020 and September 29, 2020, the due date will be September 30, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. (Below see COVID-19 Statement.)

If the applicant pays the issue fee on or before September 30, 2020, the issue fee should be accepted as timely without any additional approval processes, provided that the issue fee payment was due between, and inclusive of, both March 27, 2020 and September 29, 2020 and is accompanied by the COVID-19 statement.

For any such issue fee received on or before September 30, 2020, but after the initial due date, the issue fee should be fee-associated (using the 1084 PALM transaction) with the mailroom date of the issue fee payment. The contractor should enter the due date into the certificate of mailing date in order to allow 1084 transaction to accept the payment as timely received.

All fee abandonments should be held two weeks beyond September 30, 2020 before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

With respect to an applicant who submits a petition and fee to revive an unintentionally abandoned application. If applicant submits a petition and fee to revive an unintentionally abandoned application, it is necessary for the Office of Petitions to decide the petition, even if the petition specifically states that the delay was due to COVID-19. The notice of abandonment should be processed if the issue fee is not timely received (as discussed above).

· Issue Fee Payments---For undiscounted entities

For any issue fee payment that is due between, and inclusive of, both March 27, 2020 and May 31, 2020, the due date will be June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. (Below see COVID-19 Statement.)

If the applicant pays the issue fee on or before June 1, 2020, the issue fee should be accepted as timely without any additional approval processes, provided that the issue fee payment was due between, and inclusive of, both March 27, 2020 and May 31, 2020 and is accompanied by the COVID-19 statement.

For any such issue fee received on or before June 1, 2020, but after the initial due date, the issue fee should be fee-associated (using the 1084 PALM transaction) with the mailroom date of the issue fee payment. The contractor should enter the due date into the certificate of mailing date in order to allow 1084 transaction to accept the payment as timely received.

All fee abandonments should be held two weeks beyond June 1, 2020 before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

Responses to Post-Allowance Notices to File Corrected Application Papers (NTFs)---For small or micro entities ONLY

For any response to post-allowance Notice to File Corrected Application Papers that is due between, and inclusive of, both March 27, 2020 and June 30, 2020, the due date will be July 1, 2020, provided that the filing is accompanied by a statement that the delay in responding was due to the COVID-19 outbreak. (Below see COVID-19 Statement.)

A post-allowance Notice to File Corrected Application Papers has a two-month response period with the option to extend for two additional months. In order to qualify for the relief, there must be a due date that falls within the March 27, 2020 through June 30, 2020 (inclusive) period. The due date could be the 2-month due date, or the 3-month or 4-month due date with an extension of time.

Applicant may be able to request a 1-month or 2-month extension of time to extend the time for reply beyond July 1, 2020, if extensions of time are still available. Note that applicant may have requested an extension of time in order to have a due date within the identified period.

With respect to an overly cautious applicant who pays an extension-of-time fee even though the response is filed on or before July 1, 2020 and no extensions of time are needed in order to have a due date within the identified period, such extension fee should not be refunded automatically. However, applicant would be entitled to a refund in this situation if they submitted a request for refund.

· All NTF abandonments should be held two weeks beyond July 1, 2020, unless extensions of time remain available, then a potential abandonment should be held two weeks beyond any potential extended due date, before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

· Responses to Post-Allowance Notices to File Corrected Application Papers (NTFs)---For undiscounted entities

For any response to post-allowance Notice to File Corrected Application Papers that is due between, and inclusive of, both March 27, 2020 and May 31, 2020, the due date will be June 1, 2020, provided that the filing is accompanied by a statement that the delay in responding was due to the COVID-19 outbreak. (Below see COVID-19 Statement.)

A post-allowance Notice to File Corrected Application Papers has a two-month response period with the option to extend for two additional months. In order to qualify for the relief, there must be a due date that falls within the March 27, 2020 through May 31, 2020 (inclusive) period. The due date could be the 2-month due date, or the 3-month or 4-month due date with an extension of time.

Applicant may be able to request a 1-month or 2-month extension of time to extend the time for reply beyond June 1, 2020, if extensions of time are still available. Note that applicant may have requested an extension of time in order to have a due date within the identified period.

With respect to an overly cautious applicant who pays an extension-of-time fee even though the response is filed on or before June 1, 2020 and no extensions of time are needed in order to have a due date within the identified period, such extension fee should not be refunded automatically. However, applicant would be entitled to a refund in this situation if they submitted a request for refund.

· All NTF abandonments should be held two weeks beyond June 1, 2020, unless extensions of time remain available, then a potential abandonment should be held two weeks beyond any potential extended due date, before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

· Responses to Requirements Set Forth on Notices of Allowability---For small or micro entities ONLY

For any Notice of Allowability drawing requirement that is due between, and inclusive of, both March 27, 2020 and June 30, 2020, the due date will be July 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. (Below see COVID-19 Statement.)

· All drawing abandonments should be held two weeks beyond July 1, 2020 before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

For any Notice of Allowability Biological Material requirement that is due between, and inclusive of, both March 27, 2020 and June 30, 2020, the due date will be July 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. (Below see COVID-19 Statement.)

· All biological material abandonments should be held two weeks beyond July 1, 2020 before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

· Responses to Requirements Set Forth on Notices of Allowability---For undiscounted entities

For any Notice of Allowability drawing requirement that is due between, and inclusive of, both March 27, 2020 and May 31, 2020, the due date will be June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. (Below see COVID-19 Statement.)

· All drawing abandonments should be held two weeks beyond June 1, 2020 before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

For any Notice of Allowability Biological Material requirement that is due between, and inclusive of, both March 27, 2020 and May 31, 2020, the due date will be June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. (Below see COVID-19 Statement.)

· All biological material abandonments should be held two weeks beyond June 1, 2020 before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

· Responses to Notices Requiring Inventor’s Oath or Declaration---For small and micro entities ONLY

For any response to a Notice Requiring Inventor’s Oath or Declaration that is due between, and inclusive of, both March 27, 2020 and June 30, 2020, the due date will be July 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. (Below see the information under COVID-19 Statement.) An Inventor’s Oath or Declaration may be submitted before or with the issue fee payment where the issue fee payment is accompanied by a COVID-19 statement on or before September 30, 2020, provided that the due date is between, and inclusive of, both March 27, 2020 and September 29, 2020. In addition, for any Inventor’s Oath or Declaration submitted after payment of the issue fee, such Inventor’s Oath or Declaration accompanied by a COVID-19 statement should be accepted as timely if submitted on or before July 1, 2020, provided that the due date is between, and inclusive of, both March 27, 2020 and June 30, 2020 .

· All oath/declaration abandonments should be held two weeks beyond July 1, 2020 (or two weeks beyond September 30, 2020 if the issue fee has not yet been paid) before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

· Responses to Notices Requiring Inventor’s Oath or Declaration---For undiscounted entities

For any response to a Notice Requiring Inventor’s Oath or Declaration that is due between, and inclusive of, both March 27, 2020 and May 31, 2020, the due date will be June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. (Below see the information under COVID-19 Statement.) An Inventor’s Oath or Declaration may be submitted with the issue fee payment accompanied by a COVID-19 statement on or before June 1, 2020, provided that the due date is within the identified period. In addition, for any Inventor’s Oath or Declaration submitted after payment of the issue fee, such Inventor’s Oath or Declaration accompanied by a COVID-19 statement should be accepted as timely if submitted on or before June 1, 2020, provided that the due date is within the identified period.

· All oath/declaration abandonments should be held two weeks beyond June 1, 2020 before they are processed for abandonment. If no COVID-19 statement is submitted, the abandonment is linked to the original due date. The due date is not reset unless a COVID-19 statement is submitted. Therefore, use the first business day after the date due from the original notice if no COVID-19 statement is submitted.

· Request for Express Abandonment---For small or micro entities ONLY

If a response to the Office action is due between, and inclusive of, both March 27, 2020 and June 30, 2020, and is accompanied by a COVID-19 statement, applicant should be entitled to file a request for Express Abandonment on or before July 1, 2020. Extensions of time would work the same way as above. Note, however, the relief does not apply to petitions for express abandonment under 37 CFR 1.138(c) to avoid publication of the application or to petitions for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and excess claim fee.

· Request for Express Abandonment---For undiscounted entities

If a response to the Office action is due between, and inclusive of, both March 27, 2020 and May 31, 2020, and is accompanied by a COVID-19 statement, applicant should be entitled to file a request for Express Abandonment on or before June 1, 2020. Extensions of time would work the same way as above. Note, however, the relief does not apply to petitions for express abandonment under 37 CFR 1.138(c) to avoid publication of the application or to petitions for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and excess claim fee.

· Submission of Certified Copy of Foreign Priority Application

COVID-19 relief does not apply to the submission of the certified copy of a foreign priority application. If the applicant submits a request for extension or time or otherwise states that the COVID-19 outbreak is delaying the submission of the certified copy of the foreign priority application, the application—unless a petition has been filed—should move forward to issuance. A foreign priority claim can be perfected after issuance by means of a request for a certificate of correction and an appropriate petition.

· COVID-19 Statement

The USPTO has created Form PTO/SB/449, STATEMENT OF DELAY DUE TO COVID-19 OUTBREAK, which applicants may use to make the required statement that the delay in filing or payment was due to the COVID-19 outbreak. Although the use of Form PTO/SB/449 is not required, it is highly recommended because it helps the USPTO to quickly identify a request and timely process the paper or fee. Alternatively, the statement can be included in the reply being filed or in another separate paper such as a transmittal letter. Applicants have been advised to make such statements in a conspicuous manner.

The document code for the COVID-19 statement is COVID-19.

A copy of Form PTO/SB/449, STATEMENT OF DELAY DUE TO COVID-19 OUTBREAK, is provided on the next page of this bulletin.

The next ten pages of this bulletin show the April 28, 2020, USPTO notice called Notice of Extended Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Patent Applicants and Patentees and the May 27, 2020, USPTO notice called May 2020 Update Regarding Certain Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Applicants, Patent Owners, and Others and the June 29, 2020, USPTO notice called June 2020 Update Regarding Certain Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Patent Applicants and Patentees.

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