USPTO Issues Patent and Trademark Filing Deadline Extensions

The United States Patent and Trademark Office (USPTO) is providing extensions to file certain patent and trademark-related documents and pay required fees as part of the Coronavirus Aid, Relief, and Economic Security Act (CARES) Act.

Extension Guidelines

• For eligible documents or fees due between (and inclusive of) March 27, 2020 and April 30, 2020, the filing will be considered timely if made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.
• A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with timely filing or payment.
• Qualifying circumstances include office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.
• The person affected by the outbreak may be a practitioner, applicant, registrant, or other person associated with the filing or fee. For patents, this may also be a patent owner, petitioner, third-party requester or inventor.

Trademarks

Eligible trademark filings include responses to Office actions, notices of appeal, statements of use, notices of opposition, priority filings, transformation and renewal applications, affidavits of use or excusable nonuse and related requests for extension. For all other situations where COVID-19 has prevented or interfered with a proceeding before the Board, a request or motion for an extension can be made.

Patents

Eligible patent filings include responses to Office actions, notices of appeal, appeal and reply briefs, appeal forwarding fees, PTAB oral hearing and rehearing requests, Chief Judge petitions, patent owner preliminary response in a trial proceeding, or any related responsive filings. Additional relief limited to small and micro entities includes replies to the following notices: omitted items; file corrected application papers; incomplete applications; comply with nucleotide sequences requirements; file missing parts of application (including payment of filing). The extension does not apply to filing dates for new patent applications.

Additional Relief

For trademark and patent applications that were abandoned and registrations that were canceled/expired due to COVID-19, the USPTO waived the petition fee to revive the abandoned application or reinstate the canceled/expired registration. Petitions must include a statement explaining how the failure to respond to the Office communication was due to the COVID-19 outbreak and must be filed not later than two months after the issue date of the notice of abandonment or cancellation.

USPTO Office Remains Open

The USPTO is open for the filing of documents and fees. Waivers are only available for delays due to the COVID-19 emergency.

What’s Next

The USPTO will continue to evaluate the evolving situation around COVID-19 and the impact on the USPTO’s operations and stakeholders. If the USPTO extends the CARES Act relief, the USPTO will provide timely notice. Gibney will continue to monitor these updates. For more information, please see the USPTO FAQs.