Press Releases

Ann Arbor – Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the U.S., is spreading the word that the Director of the United States Patent and Trademark Office (USPTO), David Kappos, issued a statement on March 17 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."

According to Michael S. Gzybowski, an attorney in the Ann Arbor office of Brinks who has a significant number of clients based in Japan and worked in the USPTO early in his career, Mr. Kappos’ statement indicates 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.

“This is an appropriate and generous response to the Intellectual Property needs of companies directly impacted by these catastrophic events,” acknowledges Mr. Gzybowski, who provides the following 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 pay a patent maintenance fee in a timely manner 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 respond in a timely manner 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.

The full statement from David Kappos and the USPTO can be read here.

Mike Gzybowski focuses his practice on patent prosecution and litigation of U.S. and foreign patents as well as counseling clients on infringement and validity issues and evaluation of licensing agreements. He was a former patent examiner with the U.S. Patent and Trademark Office prior to entering private practice. Mr. Gzybowski received his J.D. from the George Mason University of Law and a B.S. in chemical engineering from Purdue University. He is admitted to practice before the United States Patent and Trademark Office, the U.S. Court of Appeals for the Federal Circuit and the Indiana, Michigan and Virginia State Bar.

Brinks Hofer Gilson & Lione is one of the largest intellectual property law firms in the United States and serves the intellectual property needs of clients around the world. Brinks has 150 attorneys, scientific advisors and patent agents who specialize in intellectual property litigation and all aspects of patent, trademark and copyright law. The firm also advises on issues relating to intellectual asset management, trade secret, unfair competition, and technology and licensing agreements. Brinks routinely handles assignments for companies in the electrical, chemical, and mechanical engineering sectors; the biotechnology, pharmaceutical and nanotechnology industries; and for companies whose work relates to Internet and computer technology law. The firm’s trademark practice works on behalf of clients who deal in a wide variety of products and services. Founded in 1917, Brinks is based in Chicago and has five additional offices across the country, including its newest office in Washington D.C. More information is available at www.usebrinks.com.