Relief Available For PTO Applicants In Japan

I am an intellectual property lawyer in private practice and am writing to report that on March 17, after determining the Japan earthquakes and Pacific tsunami created an extraordinary situation for which regulatory relief could be offered, U.S. Patent & Trademark Office Director David Kappos issued the PTO press release “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Catastrophic Events of March 11, 2011 in Japan” (www.uspto.gov/patents/announce/japan_relief_2011mar17.pdf).

Essentially, PTO is granting both patent and trademark applicants and owners certain relief if they are in areas of Japan affected by the earthquake and tsunami, such as withdrawing and reissuing PTO communications in pending matters and waiving certain patent office surcharge fees for late payment of maintenance fees. Since PTO is an administrative agency, it can only give relief on the regulatory front. Statutory requirements and deadlines cannot be waived.

On the patent side, PTO detailed procedures for an applicant or party in a reexamination administrative proceeding who is affected by the March 11 events to request that a PTO communication setting a pending, nonstatutory response date be withdrawn and reissued to set a new, later due date. Although not mentioned in the directive, it might be possible to obtain similar relief for nonstatutory due dates in an ongoing interference proceeding in which PTO determines who, among competing inventors, is the proper first inventor for the invention in dispute.

PTO also set forth procedures for seeking relief when, due to the disaster, the patentee was unable to timely pay the government maintenance fee to keep a patent in force. PTO will waive certain administrative surcharges for those affected.

Also provided are procedures that permit affected patent applicants to have surcharge fees waived for completing late filing requirements (later filed oath, search fees, and the like) for patent applications filed from March 11 through April 12, 2011.

The PTO press release similarly sets forth procedures on the trademark side for those affected so that response dates can be reset in pending trademark applications or regarding a trademark registration, or to waive the nonstatutory petition fee for those affected when seeking to have a trademark application or registration revived when its abandonment was due to an inability to respond in a timely fashion because of the earthquake and resulting tsunami.

I am a former member of the ACS Joint Board-Council Committee on Patents & Related Matters, a former chair of the Chemistry & the Law Division, and currently serve as CHAL’s alternate councilor.

Kendrew H. Colton
Washington, D.C.