USPTO COVID-19 Extension Explained

Current/updated as of May 27, 2020.

Due to the coronavirus pandemic, the USPTO is providing fee-free extensions of time to affected parties for any matter whose filing due date was between March 27 and May 31, to June 1, 2020 for large entities, and July 1, 2020 for small and micro entities. The USPTO states, “[f]or large entities, after May 31, 2020, relief will be available to those who need it on a case-by-case basis. Such requests can be submitted through a petition for an extension of time or a petition to revive.”

An affected party can be a “practitioner, applicant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.” More information can be found at the USPTO’s Coronavirus Web page.

To avail the extension, the USPTO is requiring a STATEMENT OF DELAY DUE TO COVID-19 OUTBREAK, on official form PTO/SB/449, to be submitted along with the filing.

Here’s how the process works with extension of time requests:

If a non-final office action was mailed by the Office on November 1, 2019, a timely filing (e.g., response to office non-final office action) would have been due on February 1, 2020.  If the response was not timely filed, an affected party can now file a two-month extension of time request to have the filing date extended to April 1, 2020. Since April 1, 2020, falls between March 27 and May 31, 2020, the applicant can then request a further extension of time based on the statement of delay due to Covid-19 outbreak, and can have the matter filed on or before June 1, 2020 (large entities) and July 1, 2020 (small and micro entities).

Under normal circumstances, a non-final office action response could have only been filed until May 1, 2020 (the six-month statutory deadline) with a three-month extension of time request. However, with the COVId-19 extension to time, an affected party can file the response on or before June/July 1, with a two-month extension of time request and Form SB-499, the statement of delay due to the COVID-19 pandemic.

The same process can be replicated for any paper (for both patent and trademark filings) that needs to be filed with the USPTO within a prescribed statutory deadline.

It is not clear whether, for small and micro entities, matters with filing due dates between June 1 and June 30 are intended to be included within this extended deadline. Concerned parties can contact the USPTO for clarification  by email at Covid19PatentsRelief@uspto.gov or by calling 571-272-7704.

Please note though, a bona fide statement of delay due to COVID-19 must only be filed by an affected party, in good faith. Abuse of this extension grant may result in imposition of sanctions, pursuant to 37 C.F.R. 1.4(d)(4).