USPTO Offers Relief for COVID-Related Delays in Submitting Priority Documents

09 February 2021 Blog
Authors: Courtenay C. Brinckerhoff
Published To: PharmaPatents Coronavirus Resource Center:Back to Business

One year into the COVID-19 pandemic, and its affects still are impacting patent prosecution, especially as it relates to the difficulty of obtaining paper copies of official documents. While the USPTO rarely requires originals of executed documents, it does require certified copies of foreign priority applications. Recognizing the difficulty (or impossibility) of obtaining certified copies under present circumstances, the USPTO recently announced an option to request suspension of the requirement to file a certified copy of a foreign priority application by the time the issue fee is paid.

COVID-Related Relief from Certified Priority Document Deadline

The USPTO announcement came in a notice published on its website, not in a Federal Register Notice. The requirement to file a certified copy of a foreign priority application is based on 37 CFR § 1.55(f) and 1.55(g). The ability to request relief from the requirement to file a certified copy by the time the issue fee is paid is available only if the foreign priority application is not available via a multilateral priority document exchange program.

To be eligible to seek relief, an applicant must have requested a certified copy from the foreign intellectual property office prior to payment of the issue fee in the U.S. application at issue, but be unable to file it by the issue fee payment date “because the foreign intellectual property office was unable to process the request as a result of the COVID-19 outbreak.” The applicant also must have filed an “interim copy” (i.e., non-certified copy) of the priority application in accordance with 37 CFR § 1.55(j).

To request relief, the applicant must file “a request for suspension of the requirement for submission of the certified copy” no later than the date of payment of the issue fee, with one of two required statements, depending on whether the U.S. application is a PCT national stage application or not. For both types of applications, the applicant must state:

  • that the applicant submitted an interim copy as defined in 37 CFR l.55(j) and
  • that the applicant requested a certified copy of the foreign priority application from the foreign intellectual property office before payment of the issue fee, but was unable to file it on or before the issue fee date of payment because the foreign intellectual property office was unable to process the request as a result of the COVID-19 outbreak.

The USPTO suggests using new Form PTO/SB/453 for this purpose.

Certified Copy Still Required

Importantly, the notice states that a certified copy still must be submitted “[o]nce the foreign intellectual property office resumes processing requests for paper certified copies.”

In particular, the notice states:

Once the foreign intellectual property office resumes processing requests for paper certified copies, the patentee must:

(1) comply with the requirements of the foreign intellectual property office for obtaining a paper certified copy (which may include submitting a new request for a paper certified copy) within two months after the date the foreign intellectual property office resumes processing requests for paper certified copies; and

(2) submit the paper certified copy to the USPTO within one month after the date the paper certified copy is issued from the foreign intellectual property office.

The burden is on the patentee to ensure that the certified copy is filed within this time period.

If these requirements are met, a petition for delayed submission of a certified copy will not be required.

This means applicants who obtain relief under this program will have to monitor the status of the foreign intellectual property office and act promptly once it resumes processing requests for paper certified copies—and hope the certified copy is received promptly after it is “issued.”

COVID-19 continues to impact companies in all sectors of the economy.  Foley is here to help our clients effectively address the short-term and long-term impacts on their business interests, operations, and objectives. Foley provides insights and strategies across multiple industries and disciplines to provide timely perspective on the wide range of legal and business challenges that companies face conducting business while dealing with the impact of the coronavirus. Click here to stay up to date and ahead of the curve with our key publications addressing today’s challenges and tomorrow’s opportunities. To receive this content directly in your inbox, click here and submit the form. 

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services