Member Article

In the past few weeks, the United States Patent and Trademark Office (USPTO) has issued a number of press releases in connection with the COVID-19 pandemic. Calling the outbreak an “extraordinary situation,” the USPTO has announced that it will be providing additional time for the filing of certain patent and trademark documents and for payments of specific mandatory fees. This temporary authority is in response to the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which was signed into law on March 27, 2020.

Details of the specific deadlines that are being extended can be found in the USPTO Notices: one for patents and one for trademarks. To summarize, the USPTO will consider an applicable filing and/or fee (as detailed in the Notices) to be timely if it is made within 30 days of the original deadline. This applies to filings and fees that are due between, and inclusive of both, March 27, 2020 and April 30, 2020.

Be aware, however, that not all deadlines are eligible for extension under the CARES Act. Be sure to contact your patent or trademark attorney to determine whether your pending deadlines qualify for extension.

The USPTO has similarly issued a directive waiving fees for revival petitions for both patent and trademark matters. In the case of a Petition to Revive an abandoned patent application or re-examination proceeding, the USPTO states that the petition should be filed no later than two months after receipt of the Notice of Abandonment or Proceeding Termination. In cases where a Notice or Termination was not received by the patent applicant or owner, the USPTO has stated that a Petition to Revive will be accepted as timely if it is filed within six months of the date the patent application was abandoned or the re-examination proceeding was terminated or limited. There are additional requirements when filing such a petition. Again, please contact your patent attorney for more detail.

Correspondingly, in the event that a trademark application or registration goes abandoned or is cancelled for failure to make a required filing, the USPTO is allowing the trademark applicant or owner to file a Petition to Revive Abandoned Application or a Petition to the Director (in the case of a cancelled registration) within two months from receipt of the Notice of Abandonment/Cancellation. As with patent matters, if no Notice of Abandonment or Cancellation is received, the applicant or owner will have six months from the date on which the application or registration was abandoned/cancelled to file the necessary revival documents. Please contact your trademark attorney for more detail.

As of the date of this publication, the USPTO is continuing to monitor this ever-evolving situation. If an extension of the CARES Act Relief becomes necessary, additional Notices will likely be issued by the USPTO.

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