How can we help? The USPTO Midwest Regional Director calls to talk about coronavirus impact on patentingApril 24, 2020

The call was from the US Patent Office but it wasn’t an examiner calling to discuss a restriction requirement.  It was the office of Damian Porcari, the Midwest Regional Director for the USPTO who wanted to talk to one of our clients and myself regarding problems and impacts that the coronavirus pandemic is having on patenting.  Mr. Porcari wanted to understand how the pandemic and lockdowns are impacting patenting strategy, business impact and what they could do to help. 

Director Porcari indicated the PTO wants to help prevent any issues that require people to have to go outside when sheltering to get signatures.  They have suspended the need for “wet” signatures in those few instances where it is required and said they would accept any variety of signature options – photos of documents, and the /signature/ means of signing as well as electronic signatures.

Under the CARES Act, the Office has allowed for 30 days extension, upon showing impact by the coronavirus situation, in replying to a pre-exam notice, reply to an Office notice or action, paying issue fees, filing notices of appeal, appeal and reply briefs and paying the appeal forwarding fee.  Other extensions are allowed for requesting an oral hearing, responding to a substitute examiner’s answer, paying a maintenance fee or request for rehearing of a PTAB decision.  Whether this 30 days is long enough under the circumstances was discussed.  The Office is working on this issue.

It has been a burden for stakeholders to collect data needed to add to an application prior to a conversion deadline.  We hear from clients that with scientists going into labs in small groups, rotating in and out, or not being able to get to their labs at all, has put the brakes on obtaining data to use in these situations.  With amendment responses, the extension of time is available, but with a conversion deadline there are statutory and treaty limits on what the Office can do.  They are attentive to the issue and what they can do that is within their power.  This is another problem they are investigating and whether and how they can assist.

It is good to know the Patent Office is not only concerned about their stakeholders at these difficult times, but is actively reaching out and listening.  We often find ourselves arguing a legal or evidentiary point with an examiner…but in helping the US inventor their reaching out helps us to know we are in this together.

The USPTO requests that practitioners refer to the MPEP and other USPTO documents for official guidance.