Business and Legal Insights

For many patent and trademark filing deadlines that would have been due between March 27, 2020 and May 31, 2020, the USPTO will consider them timely filed so long as: (1) they are filed on or before June 1, 2020; and (2) they are accompanied by a statement that the delay in filing was due to the COVID19 outbreak.

Patent Deadlines Further Extended

The USPTO exercised authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain deadlines. Notably, the extension does not apply to original filing deadlines, PCT deadlines, national stage filing deadlines, non-provisional filing deadlines, or the deadlines to file an inter partes review petition.

The USPTO previously extended by 30 days deadlines for certain events that fall between March 27, 2020 and April 30, 2020, if the applicant includes a statement that the delay in filing or payment was due to the COVID-19 outbreak. The USPTO has broadened these extensions to now include certain events that fall between March 27, 2020 and May 31, 2020.  So long as a response is filed on or before June 1, 2020, the response will be considered timely. The USPTO provided the following in defining what it means to be “due to the COVID-19 outbreak”:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including pre-examination processing notices for small or micro entities, non-final and final office actions, issue fees, notices of appeal, appeal briefing, requests for oral hearing before the Patent Trial and Appeal Board, maintenance fees for small or micro entities, or requests for rehearing before the PTAB.

The USPTO has also superseded its prior announcement concerning waivers of certain petition fees associated with the revival of applications and reexamination proceedings.

The USPTO also reminded everyone in its notice that it remains open for filing of USPTO documents and fees.

The USPTO’s patent notice is here.

Trademark Deadlines Further Extended

The USPTO exercised the same authority under the CARES Act to extend certain trademark deadlines. The deadline to respond to certain events that was due between March 27, 2020 and April 30, 2020 will be extended 30 days from the initial date it was due, provided the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO again defined what it means by “due to the COVID-19 outbreak” in the context of trademark deadlines:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including office action responses, notices of appeal, statements of use or requests for extension of time to file a statement of use, notice of oppositions or requests for extension of time to file them, priority filing, renewal applications, and affidavits of use or excusable nonuse.

For Trademark Trial and Appeal Board issues, while deadlines are not automatically extended, requests or motions to extend deadlines may be made.

The USPTO has also superseded its prior announcement concerning waivers of certain petition fees associated with the revival of applications and reinstating canceled/expired registrations.

As with the Patent notice above, the USPTO reminds everyone that it remains open to receive filing and fees.

The USPTO’s trademark notice is here.