October 2, 2020 USPTO Fee Increases

Effective October 2, 2020, the Patent Office is setting or adjusting patent fees.  Please see the August 19, 2020 Special Report for further details.

Fast-Track Appeals Pilot Program

On July 1, the USPTO announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals.  The Fast-Track Appeals Pilot Program launched July 2, 2020 with a required petition fee of $400, and is currently set to run for one year.

The USPTO expects that the average ex parte appeal reviewed under the Fast-Track Appeals Pilot Program will be decided within six months from the date a petition is granted.

Petition grants for fast-track review of ex parte appeals will initially be limited to a maximum of 500 per fiscal year, or 125 per quarter, for the program’s duration.  In order to keep appeals on schedule, oral hearings under the program will be expedited and, once scheduled, will not be rescheduled or relocated.

For additional information on the Fast-Track Appeals Pilot Program, see the USPTO’s Federal Register Notice and the PTAB’s webpage on the USPTO website.

Jim Oliff Retirement

Congratulations And Thank You To Jim Oliff

On July 1, Jim stepped away from his role as a managing partner, after founding and leading Oliff PLC for more than 35 years.  On behalf of the partners, attorneys, managers and staff, we thank Jim for his leadership and guidance over these many years — none of us would be here without him.

Jim founded Oliff PLC in 1983 with Bill Berridge, 2 other attorneys and 9 staff.  Under Jim’s stewardship, the firm has grown to include more than 40 attorneys and patent agents and a total staff of nearly 140.  His constant focus on the “Big 3″—quality, timeliness and reasonable cost—have resulted in robust and rigorous training, strong, lasting client relationships and continuous growth, with the firm achieving a new record just last year with over 5,000 new patent applications filed in 2019.

Jim remains with the firm as Senior Counsel and continues to be available to the partners and Executive Committee for consulting and counseling.  We look forward to working with Jim in his new role and to furthering Jim’s legacy with our continued team approach to providing timely, high quality legal work at a reasonable price.

April 30, 2020 Coronavirus Update: USPTO Revised Deadline Extensions and Revival Procedures

The following revises our April 1 update on Patent Office Accommodations to reflect newly extended dates.

On April 28, the U.S. Patent and Trademark Office (USPTO) issued several Notices revising and extending its policies intended to help alleviate the impact of the coronavirus (COVID-19) outbreak on applicants and practitioners.  These policies affect both patent-related and trademark-related matters. The USPTO has emphasized that it otherwise remains open for patent and trademark-related filings and related fees.  The April 28 Notices supersede previous Notices issued March 16 and March 31, and provide newly-extended due dates.

Extension of Patent and Trademark Deadlines

The April 28 Notices announced extended waivers of most patent-related and trademark-related due dates between March 27 and May 31, including for due dates for filing documents and/or fees.  Most filings that otherwise would have been due between March 27 and May 31, 2020, will be considered timely if filed on or before June 1, 2020, if the delay is the result of a practitioner, applicant, patent owner, registrant, petitioner, third party requester, inventor, or other person associated with the filing or fee being “personally affected by the COVID-19 outbreak.”  The Notices indicate that “personally affected” is intended to be read broadly and includes, without limitation, “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.”

The Notices apply to many patent-related and trademark-related due dates, although two patent-related due dates (replies to pre-examination notices and failure to timely pay a maintenance fee) are restricted to small and micro entity applications.  To take advantage of this extension, the filing or payment of the fee must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Waiver of Petition to Revive Fees

As noted in our March 19 update, the USPTO had previously announced on March 16 special procedures for reviving patent and trademark applications that may have been unintentionally abandoned as a result of the COVID-19 outbreak.  Specifically, if a patent application or reexamination proceeding became abandoned, or a trademark application or registration became abandoned or canceled/expired, because the practitioner, applicant, or at least one inventor, was personally affected by the COVID-19 outbreak, the USPTO will waive the petition fee associated with filing the necessary Petition to Revive.  The USPTO originally did not provide any specific dates during which the abandonment must have occurred.  The April 28 Notices indicate that the abandonment must be related to a due date of May 31, 2020, or earlier, when taking into account all available extensions of time.

To take advantage of this petition fee waiver, a Petition to Revive must be promptly filed and must be filed not later than two months after the issue date of a formal notice of abandonment, termination, limitation, or cancellation, or not later than six months after the date the matter became abandoned, terminated, limited, or cancelled if no formal notice was issued.  The Petition to Revive must also include the appropriate reply and the same statement as described above that the delay in filing or payment was due to the COVID-19 outbreak.

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The full patent-related USPTO Notice regarding these extensions can be found here:

https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-Act-2020-04.pdf  

The full trademark- related USPTO Notice regarding these extensions can be found here:

https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act-2020-04.pdf

Please contact us if you have questions about this extensions or petition fee waiver programs or if you would like to take advantage of these programs in a particular matter.

CORONAVIRUS (COVID-19) UPDATES

OLIFF PLC is actively monitoring the coronavirus (COVID-19) outbreak in the U.S. and around the world, and we are adjusting our operations accordingly.  At this point, we have moved most of our attorneys and staff to remote telework.  We are adjusting our internal operating procedures to accommodate this shift to remote work so that we can continue to meet the needs of our clients without interruption and maintain our standards for prompt, high quality legal services during this difficult time.

All coronavirus-related updates can be found on this page, which we will continue to update as necessary.  Please do not hesitate to contact us with any questions.

March 13, 2020 Update:  Initial Response

Mach 19, 2020 Update:  Changes to OLIFF Business Hours

March 25, 2020 Update:  Changes to OLIFF Communication Procedures

April 1, 2020 Update:  USPTO Deadline Extensions and Revival Procedures

April 30, 2020 Coronavirus Update: USPTO Revised Deadline Extensions and Revival Procedures

2020 Intellectual Property Training Institute

Oliff PLC has decided to cancel our 2020 Intellectual Property Training Institute (IPTI) that was scheduled to take place from September 22 through October 4, 2020.  Given the impact of the coronavirus and the uncertainty surrounding air travel and large gatherings, we believe it is unlikely that we will be able to safely and effectively host the IPTI this year.

We expect to host the IPTI again in 2021.  We plan to send out more information on the 2021 IPTI in March or April next year.

April 1, 2020 Coronavirus Update: USPTO Deadline Extensions and Revival Procedures

The U.S. Patent and Trademark Office (USPTO) recently issued several Notices for new policies intended to help alleviate the impact of the coronavirus (COVID-19) outbreak on applicants and practitioners.  These policies affect both patent-related and trademark-related matters. The USPTO has emphasized that it otherwise remains open for patent and trademark-related filings and related fees.

Extension of Patent and Trademark Deadlines

On March 31, 2020, the USPTO issued two Notices announcing waivers of most patent-related and trademark-related due dates between March 27 and April 30, including for due dates for filing documents and/or fees.  These due dates will be extended for 30 days from the initial due date if a practitioner, applicant, patent owner, registrant, petitioner, third party requester, inventor, or other person associated with the filing or fee “was personally affected by the COVID-19 outbreak.”  The March 31 Notices indicate that “personally affected” is intended to be read broadly and includes, without limitation, “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.”

The Notices apply to many patent-related and trademark-related due dates, although two patent-related due dates (replies to pre-examination notices and failure to timely pay a maintenance fee) are restricted to small and micro entity applications.  To take advantage of this 30-day extension, the filing or payment of the fee must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

The full patent-related USPTO Notice regarding these extensions can be found here:
https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf

The full trademark- related USPTO Notice regarding these extensions can be found here:
https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf

Please contact us if you have questions about these extensions or if you would like to take advantage of these extensions in a particular matter.

Waiver of Petition to Revive Fees

As noted in our March 19 update, the USPTO announced on March 16 special procedures for reviving patent and trademark applications that may have been unintentionally abandoned as a result of the COVID-19 outbreak.  Specifically, if a patent application or reexamination proceeding became abandoned, or a trademark application or registration became abandoned or canceled/expired, because the practitioner, applicant, or at least one inventor, was personally affected by the COVID-19 outbreak, the USPTO will waive the petition fee associated with filing the necessary Petition to Revive.  The USPTO did not provide any specific dates during which the abandonment must have occurred, but described that “the coronavirus outbreak that began in approximately January 2020” qualified as an “extraordinary situation” for affected applicants, patentees, reexamination parties, and registrants.

To take advantage of this petition fee waiver, a Petition to Revive must be promptly filed and must be filed not later than two months after the issue date of a formal notice of abandonment, termination, limitation, or cancellation, or not later than six months after the date the matter became abandoned, terminated, limited, or cancelled if no formal notice was issued.  The Petition to Revive must also include the appropriate reply and a statement that “the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply,” and include a copy of the USPTO Notice.

The full USPTO Notice regarding these petition fee waivers can be found here:
https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf

Please contact us if you have questions about this petition fee waiver program or if you would like to take advantage of this program in a particular matter.

March 25, 2020 Coronavirus Update: Changes to OLIFF Communication Procedures

Oliff PLC continues to adjust its operating procedures to support our clients as more and more of our staff and attorneys move to remote telework.  To help facilitate this shift to remote telework, and to prepare for the possibility of a government mandated partial or full closure of our offices, we are moving quickly to a more digital environment.

Effective March 26, we plan to eliminate mailing most hardcopy correspondence and documents as the default procedure for our clients.  During this time, our default procedure will be to send all client correspondence, USPTO correspondence, and invoices by email.  For clients that have specified another mode of electronic transmission, such as facsimile or secure uploads, we will continue to upload documents and correspondence in the specified manner.  For clients that have expressly requested to receive hardcopies by mail, we will continue to send hardcopies for as long as we are able to have a sufficient number of our employees working in our office.

We will continue to mail original documents, such as Letters Patents, for as long as possible.  To the extent it becomes necessary to fully close our offices, we will temporarily transition to sending all mail correspondence to email only correspondence, and will retain original documents until our employees can safely return to the office, when we will resume mailings.

Please do not hesitate to contact us with questions or to discuss any particular situations that may be impacted by this change in procedure.  Please direct any such questions or inquiries to Megan Bowers at mbowers@oliff.com.

March 19, 2020 Coronavirus Update: Changes to OLIFF Business Hours

OLIFF PLC continues to monitor the coronavirus (COVID-19) outbreak in the U.S. and around the world, and we are adjusting our operations accordingly.  Our office remains open and our firm is fully operational.

We are in the process of moving many of our attorneys and staff to remote teleworking as a precautionary measure and to accommodate individual employee needs, such as caring for children that are now out of school or daycare.  We are also adjusting our office hours slightly. Starting March 23, our regular business hours will be 8:30 am to 5:00 pm, Eastern Daylight Time.

We are fully committed to the needs of our clients and to maintaining our standards for prompt, high quality legal services during this difficult time.  We are implementing a variety of internal procedures to accommodate teleworking employees and adjust our workflow accordingly. We remain very confident in our ability to continue delivering high quality legal services without interruption and with no impact to our clients.

As reported in our last update, all scheduled Examiner interviews, PTAB and TTAB oral hearings and other in-person meetings must take place remotely by video or telephone conference.  The USPTO has also enacted special procedures for reviving applications that are unintentionally abandoned due to the effects of the coronavirus outbreak, including waiving the petition fee.  Otherwise, the USPTO has given no indication that it plans any closures or deferral of due dates.

We will provide further updates, as necessary.  In the meantime, please rest assured that OLIFF PLC will continue to timely handle IP matters for all its clients, and we will do whatever we can to assist our clients during this unusual and difficult time.

March 13, 2020 Coronavirus Update: Initial Response

OLIFF PLC is actively monitoring the coronavirus (COVID-19) outbreak in the U.S. and around the world.

We are committed to the health and safety of our attorneys and staff, and we are exercising appropriate measures of caution that are recommended by the U.S. Centers for Disease Control and Prevention and the World Health Organization.  We also remain focused on our clients and to maintaining our standards for prompt, high quality legal services during this difficult time.

Currently, our offices remain open and fully operational.  However, should there be a need for our firm to temporarily close any of its offices, we are taking the necessary steps to ensure that our professionals and staff are equipped to work remotely and handle all of our client’s legal matters.  We are confident in our ability to deliver those services without interruption.

At this time, the U.S. Patent and Trademark Office (USPTO) has given no indication that it plans any closures.  As many of you know, the USPTO is well-equipped for its employees to telework, and thus we expect the USPTO will continue to operate with limited disruptions.  There was an announcement from the USPTO today indicating that, until further notice, all scheduled Examiner interviews, PTAB and TTAB oral hearings and other in-person meetings must take place remotely by video or telephone conference.

We will provide further updates, as necessary.  In the meantime, please rest assured that OLIFF PLC will continue to timely handle IP matters for all its clients, and we will do whatever we can to assist our clients during this unusual and difficult time.