The United States Patent and Trademark Office (USPTO) has again exercised its authority under the Coronavirus Aid, Relief, and Economic Security Act to grant patent applicants additional COVID-19 outbreak-related relief. In addition to the prior actions taken to help patent applicants, the USPTO has issued a notice granting relief also to applicants seeking to restore the right of priority to or benefit of a prior-filed foreign application.
To claim priority to or benefit of a prior foreign or provisional application, the nonprovisional application has to be filed within 12 months of the prior-filed application. After that period expires, applicants have an additional two months to file such an application “if the delay in filing the application … was unintentional.” 35 U.S.C. § 119 (a). To extend the statutory deadline, the USPTO requires a petition, with fees, asserting that the delay was unintentional. For design applications, the period for claiming foreign priority is six months, with the two-month extension available for unintentional delay. 35 U.S.C. §§ 119(a), 172. Thus, patent applicants failing to timely file patent applications, with a claim priority to or benefit of a foreign or provisional application, have a two-month grace period for a delayed filing if the delay in the filing was unintentional.
In its latest notice, the USPTO is granting additional relief to patent applicants for delayed filings of certain patent and international applications. For nonprovisional applications that were filed outside the 12-month window for claiming priority to or benefit of a prior foreign or provisional application, the USPTO is extending the two-month window and waiving the petition fee. The relief for nonprovisional applications is available for applications only when the 12-month period for claiming priority to or benefit of “ended between and inclusive of both March 27, 2020, and July 30, 2020.” For such applications, the two-month period for restoring the right of priority to a foreign application or the benefit of a prior-filed provisional application runs until the later of July 31 or the two-month period defined by statute. To be able to take advantage of this relief, the USPTO requires “a statement that the failure to timely file the application was due to the COVID-19 outbreak as defined in the USPTO’s notice of April 28, 2020.”
For delayed filings of international patent applications, the USPTO is not waiving the two-month period for restoring the right of priority. However, the petition fee is waived for international patent applications for which the period for the filing of the international application ended or will end between March 27 and July 30 only if a statement indicating that the delay was due to COVID-19 is filed.