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Overview

USPTO Extends Certain Patent and Trademark Deadlines Under the CARES Act

April 2, 2020

By: John L. DuPré and Deirdre E. Sanders

USPTO Website

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In accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the United States Patent and Trademark Office (USPTO) is providing for extensions of the time to file certain patent- and trademark-related documents and pay certain fees which otherwise would have been due on or after March 27, 2020.

  • Applicants and inventors unable to meet specific patent and trademark timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of those deadlines
  • For patent and trademark matters falling due between March 27, 2020 and April 27, 2020, applicants can request a 30-day extension of some deadlines
  • The Patent Trial and Appeal Board (PTAB) is providing a 30-day extension of time for particular deadlines including Requests for Rehearing of a PTAB decision
  • Many Trademark statutory deadlines can be extended, including responding to an Examiner’s Office Action, or filing an Appeal from a Final Action

The Director of the USPTO has determined that the emergency has prejudiced the rights of parties appearing before the USPTO in specific patent matters.  In addition, the spread of the virus has “significantly disrupted” the operations of numerous businesses, law firms, and inventors, and reduced their access to capital.  Accordingly, a person who is unable to meet certain patent and trademark timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of those deadlines.  
Specifically, for certain Patent and Trademark matters falling due between March 27, 2020 and April 27, 2020, applicants can request a 30-day extension of selected deadlines.  The request must be accompanied by a statement that the delay was due to the COVID-19 outbreak. For purposes of the request, the delay would be due to the outbreak if a person associated with the filing was affected by, for example, office closures, travel delays, inaccessibility of files, personal or family illnesses, or the like, which materially interfere with the timing of the filing or payment.
In addition to the waivers, meetings, such as hearings and examiner interviews, are being conducted virtually by phone and video until further notice.


Patents
Among the Patent deadlines that can be extended are:

  • Replying to an Office notice issued during pre-examination processing (e.g., Notice to File Missing Parts) by a small or micro entity.
  • Responding to an Office Action (Non-final or Final) or Notice of Non-Compliant Amendment.
  • Filing a Notice of Appeal.
  • Filing an Appeal Brief.
  • Filing a Reply Brief.
  • Paying an issue fee for a granted patent.

Paying a maintenance fee, filed by a small or micro entity.
 
Patent Trial and Appeal Board (PTAB)
Upon a request to the USPTO affirming that a filing due between March 27, 2020 and April 30, 2020 was or may be delayed due to the COVID-19 outbreak, the Patent Trial and Appeal Board (PTAB) is providing a 30-day extension of time for specific deadlines including Requests for Rehearing of a PTAB decision, Petitions to the Chief Judge, and Patent Owner preliminary response in a trial proceeding and related responsive filings.  For other situations, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing can be made by contacting the PTAB.
 
Trademarks
Among the Trademark statutory deadlines that can be extended are:

  • Responding to an Examiner’s Office Action, or filing an Appeal from a Final Action.
  • Filing a Statement of Use, filing a Notice of Opposition against a published trademark, or Requesting an Extension of Time to do either.
  • Priority filings for new applications.
  • Filing a Declaration of Use under Section 8 to maintain the registration for a trademark.

Filing a Renewal Application for a trademark registration.
As with nearly everything else relating to the COVID-19 outbreak, the situation is continuing and rapidly evolving.  If you have any questions or concerns, or would like further information, about the impact of the COVID-19 outbreak on your intellectual property, please contact us.