Client Alert

On March 17, 2011, the Director of the United States Patent and Trademark Office (USPTO) David Kappos issued a statement that the "USPTO considers the events in Japan on March 11th to be an extraordinary situation within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected applicants, patentees, reexamination parties and trademark owners."

As indicated in Mr. Kappos’ statement, the USPTO can and will grant some waivers and extensions to applications and patents having one or more inventors, an assignee, or a correspondence address in areas of Japan affected by the earthquake and/or the tsunami.

Overview of the Offered Relief

Patent Applications and Reexamination Proceedings
For patent application and reexamination proceedings pending in the USPTO as of March 11, 2011, in which a reply or response to an Office action (final, non-final or other), a notice of allowance, or other Office notice is outstanding, and for which the statutory or non-statutory time period set for response has not yet expired, the USPTO will, on applicant's request, or a reexamination party's request, withdraw the Office communication and reissue it. The request must be made prior to the expiration of the non-extendable statutory or non-statutory time period.

Maintenance Fee Payments
For patentees who were unable to timely pay a patent maintenance fee due to the effects of the earthquake and resulting tsunami on March 11, 2011, the USPTO will waive the surcharge for paying a maintenance fee during the six-month grace period or the surcharge for accepting a delayed maintenance fee payment.

Missing Parts of Nonprovisional Applications
For applicants who file a nonprovisional application on or after March 11, 2011 and prior to April 12, 2011, without an executed oath or declaration or payment of the basic filing fee, search fee and/or examination fee due to the earthquake and tsunami of March 11, 2011, the USPTO will waive the surcharge for the late filing of the oath or declaration or basic filing fee, search fee and/or examination fee.

Trademark Applications and Registration Proceedings
For trademark applications and registrations with a correspondence or owner address in areas of Japan affected by the earthquake and/or tsunami as of March 11, 2011, in which an Office action (final, non-final or other), a notice of allowance, or other Office notice requiring a response is outstanding, the USPTO will, on request, withdraw the Office communication and reissue it. The request must be made prior to the deadline for responding to the Office communication and indicate that the need for the reissuance of the Office communication is due to the effects of the earthquake and resulting tsunami of March 11, 2011.

Canceled or Abandoned Trademark Applications and Registrations
For trademark applications and registrations with a correspondence or owner address in areas of Japan that were abandoned or canceled due to the inability to timely respond to a trademark-related Office communication due to the effects of the earthquake and resulting tsunami on March 11, 2011, the USPTO will waive the petition fee to revive the abandoned application or canceled registration.

Submitting Requests
Requests for patent and patent application related matters must be made by using form PTO/SB/425 or by making a request accompanied by a copy of Mr. Kappos’ statement. Requests for trademark-related matters must be made in writing.

Matters for Which Relief is Not Provided for Under Mr. Kappos' Statement
The USPTO cannot grant waivers or extensions of dates or requirements set by statute. Examples include:

• The period set forth in 35 U.S.C. 119(a)-(d) to file a nonprovisional patent application claiming the benefit of a prior-filed foreign application;
• The 12-month time period set forth in 35 U.S.C. 119(e) during which a nonprovisional application claiming the benefit of a prior-filed provisional application must be filed in order to obtain benefit of the provisional application's filing date;
• The copendency requirement of 35 U.S.C. 120 between a parent application and a later-filed child application;
• The three-month time period to pay the issue fee set forth in 35 U.S.C. 151;
• The 35 U.S.C. 304 two-month time period from the date of patentee service, for a requester to file, in an ex parte reexamination, a reply to a statement filed by the patentee; and
• The 35 U.S.C. 314(b)(2) 30-day time period from the date of service, for a requester to file, in an inter partes reexamination, written comments addressing issues raised by an Office action or the patentee's response to the action.

Link to Mr. Kappos' Statement

If you have any questions or wish to discuss how this decision may impact your company, please contact your attorney at Brinks Hofer Gilson & Lione.

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This Client Alert is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Hofer Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Hofer Gilson & Lione lawyer.