USPTO extends patent and trademark deadlines due to COVID-19 related delays

On March 31, the United States Patent and Trademark Office announced extensions of certain patent and trademark deadlines under the recently passed CARES Act. The extensions provide relief for inventors and entrepreneurs during the COVID-19 crisis. These extensions are in addition to the previous relief provided on March 16, in which the USPTO waived fees for petitions to revive applications when there was a delay due to the COVID-19 crisis.

The following extensions can be sought for the due dates between, and inclusive of, March 27, 2020 and April 30, 2020. These extensions are available only if the delay was due to the COVID-19 outbreak and the outbreak materially interfered with a filing or payment. For example, an extension may be applicable if a person associated with the filing or fee was personally affected by the outbreak through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or other similar circumstances.

  • Patent application and reexamination proceedings – Specified due dates, as identified below, will be extended 30 days from the initial due date, provided that the extension is accompanied by a statement that the delay was due to the COVID-19 outbreak.
    • Replies to Office notices issued during pre-examination processing by a small or micro entity
    • Replies to Office notices or actions issued during examination or patent publication processing
    • Issue fees
    • Notices of appeal
    • Appeal briefs
    • Reply briefs
    • Appeal forwarding fees
    • Requests for oral hearings before the PTAB
    • Responses to substitute examiners’ answers
    • Amendments when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection
    • Maintenance fees for small or micro entities
    • Requests for rehearing of PTAB decisions
  • Patent Trial and Appeal Board proceedings – Upon request for an extension because of a delay due to the COVID-19 outbreak, a 30 day extension of time will be provided for the following filings.
    • Requests for rehearing of PTAB decisions
    • Petitions to the Chief Judge
    • Patent owner preliminary responses in a trial proceeding, or any related responsive filings
  • Trademark applications and Trademark Trial and Appeal Board proceedings – Specified due dates, as identified below, will be extended 30 days from the initial due date, provided that the extension is accompanied by a statement that the delay was due to the COVID-19 outbreak.
    • Responses to Office actions, including notices of appeal from a final refusal
    • Statements of use or requests for extension of time to file a statement of use
    • Notices of opposition or requests for extension of time to file a notice of opposition
    • Priority filing bases for foreign applications or international registrations
    • Transformations of an extension of protection to the United States into a U.S. application
    • Affidavits of use or excusable nonuse for registrations
    • Renewal applications
    • Affidavits of use or excusable nonuse for certificates of extensions of protection for international registrations

For PTAB and TTAB situations not specifically covered in the notices, requests for extensions can still be made by contacting the respective Board. The USPTO remains open during this time for filings and fee payments, though it has implemented adjustments aimed at employee and public safety.

For more information regarding the USPTO extensions, please click here.

Despite the availability of extensions, we recommend complying with the original deadlines if you are able to do so. If you are not able to comply with a deadline or if you are need assistance in determining if you qualify for an extension, you can send inquiries directly to the USPTO through the contacts in this link, or you can contact one of our attorneys.

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