Certain PTAB Due Dates Eligible for Extension Based on COVID-19 Delay

by | Apr 1, 2020 | PTAB News

By Matt Johnson –

On March 31, 2020, the Patent Office issued a Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) passed by Congress last week.  Under the due date modification authority provided by the Act, the Patent Office provided the following guidance for adjustment of PTAB trial-related due dates:

(2) Additional Relief before the Patent Trial and Appeal Board
(a) Upon a request to the USPTO affirming that a filing due between, and inclusive of both, March 27, 2020 and April 30, 2020 was or may be delayed due to the COVID-19 outbreak as defined above in subsection (l)(b), the PTAB shall provide a 30-day extension of time for:
i. a request for rehearing of a PT AB decision under 3 7 C.F .R. § § 41.125( c ), 41.127(d), or 42.71(d);
ii. a petition to the Chief Judge under 37 C.F.R. § 41.3; or
iii. a patent owner preliminary response in a trial proceeding under 3 7 C.F .R. §§ 42.107 or 42.207, or any related responsive filings.
(b) In the event that the US PTO extends a deadline for a patent owner preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines provided in 35 U.S.C. §§ ~14(b) and 324(c)’.

PTAB Situations Not Covered Above
For all other situations, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing before the Board can be made by contacting the PTAB at 571-272-9797 or by email at Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov (for PTAB appeals) or InterferenceTrialSection@uspto.gov (for interferences).

Section 1(b) defines a filing delayed due to the COVID-19 outbreak as:

(b) A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if 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.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.