During a recent conversation with a patent examiner an interesting consequence of the COVID-19 outbreak came to light.  Many applicants have taken advantage of the extensions afforded by the USPTO in relation to many patent and trademark deadlines and the waiver of associated fees.  

As a result, the caseload for examiners has drastically slowed.

This slowdown has led to two important things applicants should be aware of.  For those who have not been impacted by COVID-19, responses to rejections are getting more immediate attention than usual.  This means that a response that may sit on an examiner’s docket for weeks or months is getting addressed much more quickly.  

The unintended acceleration of some examination has its benefits and drawbacks.  Applicants that are eager to get to a final disposition of their applications have the unique benefit of getting an examiner’s attention much more immediately than was possible pre-COVID.  The downside of this heightened focus is that Office Actions are being issued much more quickly and costs that would typically be spread out over months can arise within a single month.  In other words, applicants can expect to get a speedy back-and-forth with the Patent Office, but it can condense costs over a much shorter span of time.

The second consequence of applicants making use of the USPTO’s extension is that a buildup of examination is mounting.  With further applications being actively prosecuted, examiners are opening new cases to keep busy.  As more and more Office Actions are subject to delayed response, the number of cases an examiner has open is increasing.

When examination goes back to normal, examiners are going to be inundated with responses from applicants, which will presumably cause delays for an examiner to get through the backlog that will be created.  Depending on how the USPTO handles this excess of responses, it could mean that examiners will have to process amendments more quickly—which could negatively impact the quality of examination.

Applicants should consult with their patent attorney or patent agent to devise the best approach to meet their economic and intellectual property needs.  If possible, applicants should consider pressing forward with examination to reach a conclusion sooner than is typical.  Otherwise, applicants should expect some degree of delay as examiners work through those applications that are being suspended.

The USPTO recently updated their COVID extension and fee waiver to include due dates going through to June 1, 2020.  To review all of the USPTO’s notices regarding the coronavirus, please click here.