Member Article

The USPTO has declared that the aftermath of the March 11, 2011 earthquake and tsunami in Japan constitutes an “extraordinary situation” under 37 C.F.R. §§ 1.183 and 2.146 that justifies certain measures of relief from patent regulations. While the PTO cannot declare this extraordinary situation a “postal emergency” to grant stronger relief, it has elected to recognize the difficulties of its innovation customers in the affected areas of Japan.

In a notice published in the Official Gazette, Director Kappos set forth the circumstances in which such relief is available to applicants, patentees, and reexamination parties affected by the successive natural disasters:

• The USPTO will withdraw and reissue, upon request, an Office action, notice of allowance, or other Office notice to which a reply or response is outstanding. Such relief is available only in proceedings pending as of March 11, 2011 where at least one inventor, assignee or correspondence address is in an area of Japan affected by the earthquake and tsunami. The request for relief must be made with sufficient time so that withdrawal and reissuance occur before expiration of any time period set for response. 
  
• The USPTO will waive the surcharge for paying a maintenance fee in the six-month grace period or for accepting a delayed maintenance fee payment, where the patentee was unable to timely pay the maintenance fee due to the effects of the earthquake and tsunami. For waiver of the six-month grace period surcharge, the patentee must submit a request for waiver along with the maintenance fee. For waiver of the delayed maintenance fee surcharge, the patentee must submit a request for waiver, the maintenance fee payment, and the appropriate petition to accept a delayed maintenance fee.
  
• The USPTO will waive the surcharge, upon request, for a late filing of an oath or declaration, a basic filing fee, a search fee, or an examination fee, where an applicant filed a non-provisional application without the oath, declaration or fees due to the earthquake and tsunami. Such relief is available only for applications filed between March 11, 2011 and April 11, 2011.

A party requesting relief should either use Form PTO/SB/425 or include with the request a copy of the notice published in the Official Gazette at www.uspto.gov/patents/announce/japan_relief_2011mar17.pdf.

Affected parties also should be aware that the relief available does not extend to dates and requirements set by statute, as the USPTO and the Director do not have the authority to grant waivers and extensions for statutory deadlines. For a list of such statutory requirements and further details regarding the available relief, please refer to the PTO Notice or press release (www.uspto.gov/news/pr/2011/11-21.jsp), or contact the Office of Patent Legal Administration at 571.272.7704 (571.272.7703 for reexamination) or at [email protected].

Please also feel free to contact us with any questions at the numbers listed below.