On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative[1] that may apply to an applicant who has filed an earlier foreign patent application[2] or a U.S. provisional patent application[3] and has missed the one-year deadline to file a U.S. nonprovisional utility patent application but would still like to obtain the right of the earlier filing date. Typically, the applicant still has two additional months to petition the USPTO to restore this right with a petition fee.[4] The USPTO has authorized an initiative to further extend the two-month period, while waiving the petition fee, in some situations. The initiative also applies to the corresponding six-month deadline to claim priority of a foreign filed design patent application.[5]
The initiative applies to the following scenarios:
- Nonprovisional utility applications seeking priority to earlier filed foreign applications, in which the date of the earlier foreign filing was on or after March 27, 2019;
- Nonprovisional utility applications seeking benefit from earlier filed provisional applications, in which the date of the earlier provisional filing was on or after March 27, 2019; and
- Nonprovisional design applications seeking priority to earlier filed foreign applications, in which the date of the earlier foreign filing was on or after September 27, 2019.
In the aforementioned, the deadline to petition has been extended to July 31, 2020, unless the preexisting two-month period rule[6] would provide a later deadline, in which event the deadline would remain unchanged. Additionally, the Office has waived the petition fee, which would otherwise be $2000 for large entities.[7]
The figure below illustrates the first and second scenarios listed above, which apply to utility applications. In those scenarios, if the foreign filing or provisional filing date was between March 27, 2019 and May 30, 2019, inclusive, the last day to file a petition to restore would be extended to July 31, 2020. Additionally, if the foreign filing or provisional filing date was on or after March 27, 2019, the petition fee would be waived while the initiative is in effect. If the foreign filing or provisional filing date was after May 30, 2019, the deadline to petition would remain unchanged and would still be determined by the expiration of the two-month period.
The figure below illustrates the third scenario described above, which applies specifically to design applications. In that scenario, if the foreign filing date was between September 27, 2019 and November 30, 2019, inclusive, the last day to file a petition to restore would be extended to July 31, 2020. Additionally, if the foreign filing date was on or after September 27, 2019, the petition fee would be waived while the initiative is in effect. If the foreign filing date was after November 30, 2019, the deadline to petition would remain unchanged and would still be determined by the expiration of the two-month period.
To take advantage of this initiative, applicants are further required to submit a statement that the failure to timely file the U.S. nonprovisional application was due to the COVID-19 outbreak.
As you are aware, things are changing quickly and the current guidelines may be subject to further revision by the USPTO. This article represents our best understanding and interpretation based on where things currently stand.
FOOTNOTES
[1] USPTO, Notice of the United States Patent and Trademark Office's COVID-19 Outbreak Relief Relating to Restoring the Right of Priority or Benefit to Patent Applicants (June 11, 2020), https://www.uspto.gov/sites/default/files/documents/restoration-relief-2020-06.pdf.
[2] See 35 U.S.C. § 119(a).
[3] See 35 U.S.C. § 119(e).
[4] See 37 C.F.R. § l.55(c) and 37 C.F.R. § 1.78(b).
[5] See 35 U.S.C. § 172.
[6] See 35 U.S.C. § 119(a).
[7] See 37 C.F.R. § 1.17(m).