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The United States Patent & Trademark Office Extends Deadlines

Authors: Blaire Farine, William Yarbrough, and Jamison Walters

The USPTO is given temporary authority under Section 12004 of the Coronavirus Aid, Relief, and Economic Security (CARES) Act signed on March 27, 2020 to extend filing deadlines and fees for patent and trademark-related documents that would have been due on or after March 27, 2020. The USPTO considers the effects of COVID-19 to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146. COVID-19 related circumstances have prevented applicants, owners, and others from appearing before the USPTO and has prevented the timely payment of fees and filing of documents. Additionally, government shut-downs have disrupted the operations of inventors and attorneys. For affected patent and trademark applications and owners, the UPSTO is waiving petition fees in certain situations for those impacted by COVID-19 circumstances. This authority does not grant waivers or the extension of trademark or patent filing dates or requirements by statute.

Patents

Due dates are extended for 30 days for the below filings or payments if they fall between March 27, 2020 and April 30, 2020 and are accompanied by a statement that the failure to timely file or pay was due to COVID-19 circumstances.

  1. Office notice replies issued during pre-examination processing by a small or micro entity;
  2. Replies to Office notices issued during examination or patent publication processing;
  3. Issue fees;
  4. Notices of appeal;
  5. Appeal briefs;
  6. Reply briefs;
  7. Appeal forwarding fees;
  8. Requests for oral hearings before the PTAB Board;
  9. Responses to substitute examiner’s answers;
  10. Amendment when reopening prosecution in response to, or request for hearing of, a PTAB decision designated as including a new ground of rejection;
  11. Maintenance fees filed by small or micro entities; and
  12. Requests for rehearing of PTAB decisions that would be filed within two months of the date of decision.

These COVID-19 circumstances are defined by the Office as “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.”

Petitions to Revive Patents

If individuals are unable to timely reply to an Office communication due to COVID-19 circumstances and the patent application was abandoned or prosecution terminated, the USPTO will waive the petition fee when the applicant or owner files the reply with a petition under 37 CFR 1.17(a) including a copy of the USPTO notice. The reply will be treated as a representation that the delay in filing was due to COVID-19 circumstances and a request for waiver of the petition fee. The statement must include a statement that the delay in filing was due to the practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee, was personally affected by COVID 19 such that they are unable to timely file a reply because of a material interference. This petition must be promptly filed under 37 CFR 1.137(a), accompanied by the required reply, and a copy of the USPTO notice included.

The petition must be filed under 37 CFR 1.137(a) no later than two months of the issue date of the notice of abandonment or termination of prosecution. If the applicant did not receive a notice of abandonment or termination of prosecution, the petition must be filed within six months after the date the application became abandoned or prosecution terminated or limited. A petition to revive under 37 CFR 1.137(a) due to COVID-19 circumstances may be submitted via EFS-Web using document code PET. RELIEF or by mail.

Trademarks

Due dates are extended for 30 days for the below filings or payments if they fall between March 27, 2020 and April 30, 2020. To qualify for this deadline extension, the filer must submit a statement that the delay was due to COVID-19 circumstances with the delayed filing or payment.

  1. Office action responses;
  2. Statements of use or request for extension to file statement of use;
  3. Notices of opposition or request for extension to file a notice of opposition;
  4. Requests for extensions of time to file a notice of opposition;
  5. Priority based on foreign applications;
  6. Priority based on international registrations granted under the Madrid Protocol;
  7. Transformation of an extension of protection to the U.S. into a U.S. application;
  8. Affidavits of use or excusable nonuse; and
  9. Renewal applications.

For abandoned or expired trademark applications and registrations due to failing to timely respond to an Office communication as a result of COVID-19, the petition fee will be waived to revive the application or reinstate the registration. TEAS “Petition to Revive Abandoned Application” form should be used for abandoned applications. TEAS “Petition to the Director” should be used for cancelled registrations. Petitions must include a statement explaining how the failure to respond timely to the Office communication was due to COVID-19 circumstances. If the applicant received a notice of abandonment or cancellation, the petition must be filed within two months of the issue date of the notice. If there was no notice received, the petition must be filed within six months after the date the records system indicates as the abandoned or cancelled date.

Contact Information

The USPTO remains open for the filing of patent documents and fees. Submissions to the Office may be made by the EFS-Web filing system, by mail, facsimile transmission, or by hand delivery to the Customer Service Window.

Trademark inquiries should be directed to TMPolicy@uspto.gov or (571) 272-8950

Patent inquiries should be directed to the Office of Patent Legal Administration at PatentPractice@uspto.gov or (571) 272-7704.

PTAB-related inquiries should be directed to Trials@uspto.gov, PTAB_Appeals_Suggestions@uspto.gov, InterferenceTrialSection@uspto.gov, or (571) 272-9797.

TTAB-related inquiries should be directed to Cheryl.Butler@uspto.gov, Denise.DelGizzi@uspto.gov, (571) 272-4259, or (571) 272-4265.

For more information visit https://www.uspto.gov/coronavirus

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