Pursuant to authority granted in the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), on April 28, 2020, the U.S. Patent and Trademark Office (USPTO) issued a notice further extending the deadlines to file certain patent and trademark-related documents and fees, particularly those that would have been due on or between March 27 and May 31, 2020, if the stakeholder includes a statement that the “delay” is due to the COVID-19 outbreak. This Alert sets for the circumstances for seeking such relief for patent and trademark filings.
Extending Patent Deadlines
The deadlines for submitting responses or filings for many common patent-related actions due on or between March 27 and May 31, 2020, will be considered timely if filed on or before June 1, 2020, provided that the submissions are accompanied by statements that the “delay” in filing or payment was due to the COVID-19 outbreak. Among other deadlines, the extensions apply to replies to office actions, issue fees, notices of appeal, appeal briefing, and maintenance fees. Extensions are also available for certain deadlines before the Patent Trial and Appeal Board, including by request to the Board.
The USPTO defines a “delay” due to the COVID-19 outbreak to include, inter alia, office closures, cash flow interruptions, inaccessibility to files, and personal or family illness, applicable to the applicant or the patent practitioner.
The PTO's Notice of Waiver of Patent-Related Timing Deadlines under the CARES Act may be found here.
The permitted extensions of deadlines do not apply to all patent-related filings, including, but not limited to, certain deadlines associated with filing provisional and non-provisional patent applications. Applicants should consult with a patent practitioner regarding whether an extension applies to a particular deadline and to determine whether the conditions for obtaining the extension can be satisfied.
The PTO has also waived fees for petitions to revive applications for which applicants were unable to reply timely due to the COVID-19 outbreak.
The deadlines for certain trademark filings and payments due on or between March 27 and May 31, 2020, will be considered timely if filed on or before June 1, 2020, provided that the filing is accompanied by a statement that the “delay” was due to the COVID-19 outbreak. The USPTO is using the same definition for “delay” as that set forth in the patent section above.
The types of trademark filings for which there may be relief include:
- Office action responses, including a notice of appeal from a final refusal;
- Statement of use or request for an extension of time to file a statement of use;
- Notice of opposition or request for an extension of time to file a notice of opposition;
- Certain priority filings and transformation of an extension of protection;
- Affidavit of use or excusable nonuse; and
The Trademark Trial and Appeal Board (TTAB) will also consider requests to extend or reopen where the COVID-19 outbreak has prevented or interfered with a filing before the TTAB, a request in ex parte appeals or a motion in a contested matter. In our experience this past month, the TTAB did accept requests for an extension of time when they were made within the 30 days of the original deadline, but the extension granted was only for the time remaining had the request been timely filed.
The USPTO's Notice of Waiver of Trademark-Related Timing Deadlines under the CARES Act may be found here.
The USPTO otherwise remains open for the filing of patent and trademark-related documents and fees, including through the electronic filing system.
Originally published 29 April, 2020
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.