In accordance with the Coronavirus Aid, Relief, and Economic Security Act ("CARES Act"), the United States Patent and Trademark Office ("USPTO") has announced extensions of the time allowed to file certain patent and trademark-related documents and to pay certain fees. Specifically, the USPTO will extend the deadline for any of the following trademark or patent actions that were due between and inclusive of March 27, 2020 and April 30, 2020 for thirty (30) days from the initial deadline, provided that any such filing must be accompanied by a statement that the delay is due to the COVID-19 outbreak:
- Response to an office action, including a notice of appeal from a final refusal;
- Statement of use or request for extension of time to file a statement of use;
- Notice of opposition or request for extension of time to file a notice of opposition;
- Priority filing basis;
- Transformation of an extension of protection to the United States into a U.S. application;
- Affidavit of use or excusable nonuse;
- Renewal application; and
- Affidavit of use or excusable nonuse.
- Reply to an office notice issued during pre-examination processing by a small or micro entity;
- Reply to an office notice or action issued during examination or patent publication processing;
- Issue fee;
- Notice of appeal;
- Appeal brief;
- Reply brief;
- Appeal forwarding fee;
- Request for an oral hearing before the Patent Trial and Appeal Board ("PTAB");
- Response to a substitute examiner’s answer;
- Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection;
- Maintenance fee, filed by a small or micro entity; and
- Request for rehearing of a PTAB decision.
Under the USPTO’s guidelines, relief is available if an applicant, registrant, rights holder, legal counsel or other person associated with a filing or payment has been personally affected by the COVID-19 outbreak, including, without limitation, as the result of 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.
It should be noted that the extension does not cover all filing deadlines. For instance, Patent Cooperative Treaty (PCT) and national stage filing deadlines remain in place, as do deadlines for filing a utility application following a provisional and for filing a petition for inter partes review.
The USPTO has advised that it will grant additional relief in PTAB and Trademark Trial and Appeal Board ("TTAB") proceedings with filings due between and inclusive of March 27, 2020 and April 30, 2020.
Upon request and with affirmation that a filing was or may be delayed due to COVID-19, the PTAB will provide a thirty (30) day extension of time for (i) a request for rehearing of a PTAB decision, (ii) a petition to the Chief Judge, or (iii) a patent owner preliminary response in a trial proceeding (in which case, the PTAB may also extend the timing to institute an inter partes or post-grant review). In all other situations before the PTAB, a request for an extension of time can be made by contacting the PTAB at (571) 272-9797 or by email at [email protected] (for America Invents Act (AIA) trials), [email protected] (for PTAB appeals) or [email protected] (for interferences). At the TTAB, parties may file a request (in ex parte appeals) or motion (in adversarial proceedings) for an extension or reopening of time.
The USPTO remains open and conducting business, accepting new applications and continuing its mission. Until further notice, all scheduled in-person meetings, such as hearings and examiner interviews, will be conducted virtually by phone or video conference. Further updates to the USPTO’s policies and procedures impacted by the COVID-19 outbreak will be posted on the USPTO’s website at https://www.uspto.gov/coronavirus.
In these uncertain times, it is vital that businesses continue to comply with the USPTO’s filing and payment deadlines to maintain their valuable trademark and patent rights. Please feel free to reach out to the attorneys listed above or any member of our Intellectual Property Group if you have questions about how these extensions apply or if you would like assistance in updating or evaluating your trademark or patent docket.