Member Article

Although some industries have halted all non-essential work as a result of the COVID-19 pandemic, many patent and trademark offices around the world have remained open and operational, largely due to electronic filing capabilities. The United States Patent and Trademark Office (USPTO) was initially unable to extend deadlines due to statutory limitations on its authority; however, the Coronavirus Aid, Relief, and Economic Security (CARES) Act, signed on March 27, 2020, grants the USPTO director and register of copyrights emergency relief authority for a limited time.[1]

The CARES Act grants the director ability to temporarily “toll, waive, adjust, or modify, any timing deadline” established by the patent and trademark laws or by prior USPTO regulation in an effort to mitigate the impact of the COVID-19 pandemic on regular business.

On March 31, 2020, the USPTO announced the extension of certain patent and trademark-related deadlines under the CARES Act. Although the best practice remains to meet the originally set deadlines, those unable to meet timing deadlines occurring on or after March 27, 2020, as a result of the COVID-19 outbreak, may be eligible for a waiver of certain deadlines.

Extension of Trademark Deadlines

For those personally affected by COVID-19, the USPTO has announced a 30-day extension of most trademark deadlines falling between March 27 and April 30, 2020, (dates inclusive) including office action responses, statements of use, declarations under Sections 8 & 15, and renewals. Extensions are also available if filing a notice of appeal, notice of opposition, and specific priority filing bases.

For situations before the Trademark Trial and Appeal Board (TTAB), a request or motion for an extension or reopening of time, as appropriate, can be made.

For extension eligibility, a trademark holder must include a statement with a late filing indicating the delay was due to the COVID-19 outbreak.

Extension of Patent Deadlines

The USPTO has also announced a 30-day extension of most patent deadlines falling between March 27 and April 30, 2020, (dates inclusive) including office action responses and issue fees payments. Most appeal-related deadlines, including deadlines for the filing of a notice of appeal, an appeal brief, a reply brief, an appeal forwarding fee, and a request for oral hearing are also extended 30 days from the initial due date. Additional relief before the Patent Trial and Appeal Board (PTAB) is available on certain deadlines.

For small or micro entities, the USPTO has additionally extended the deadlines to reply to an office notice during pre-examination processing and maintenance fees payment.

As with trademark extensions, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak to be eligible.

“Due to the COVID-19 outbreak”

It is important to note the USPTO has not automatically extended deadlines, nor has the USPTO made the extensions available to everyone. Extensions are intended for delays “due to the COVID-19 outbreak,” and filings must include statements that the delay was a result of the outbreak.

The USPTO has broadly defined “due to the COVID-19 outbreak” for the purposes of an extension. Accordingly, extensions are available if a practitioner, applicant, patent owner, registrant, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak. Personally affected includes, without limitation, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances in which the outbreak materially interfered with timely filing or payment.

Additional Procedural Changes

The foregoing changes are made in addition to the previously announced waiver of petition fee for revival of abandoned or terminated patent applications, in limited reexamination patent prosecution, to revive abandoned trademark applications, or to reinstate canceled/expired trademark registrations. Changes regarding the original signature requirement in some situations have also been announced.

A number of other patent and trademark offices around the world are continuing to monitor the situation and make adjustments as necessary. A listing of these updates can be found on our Patent and Trademark Office Information page in Dinsmore’s COVID-19 Business Strategies Resource Center. For additional details on procedural changes and how they may impact your cases, please contact one of our attorneys.

[1] CARES Act of 2020, S.3548, 116^th Cong.