The U.S. Patent and Trademark Office (USPTO) is offering relief to intellectual property owners affected by the Coronavirus (COVID-19) pandemic. Most recently, the Director of the USPTO exercised his authority under the Coronavirus Aid, Relief and Economic Security (CARES) Act to extend certain statutory deadlines.
“Inventors and entrepreneurs are the lifeblood of our economy, and we recognize that many of them are having difficulty as a result of the effects of COVID-19,” USPTO Director Andrei Iancu said in a press statement. “As a result, we are working to provide as much relief as possible to our stakeholders, consistent with our ability to maintain the USPTO’s fee-funded operations. We are especially mindful of the outsized impact on small businesses and independent inventors, and have provided additional relief for these groups. Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can hit the ground running once it passes.”
USPTO COVID-19 Fee Waivers
On March 16, 2020, the USPTO published a Notice stating that it considers the effects of the Coronavirus outbreak to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees reexamination parties, and trademark owners. This declaration allows the USPTO to provide fee waivers in certain situations where IP owners can’t meet filing deadlines to maintain their rights.
For patent applicants or patent owners who are unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, resulting in the application being held abandoned or the reexamination prosecution terminated or limited, the USPTO will waive the petition fee in 37 CPR l .17(m) when the patent applicant or patent owner files the reply with a petition under 37 CPR 1.137(a). In addition to providing a copy of the Notice, the petition must include a statement that the delay in filing the reply was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.
In order to be entitled to a fee waiver, a petition to revive under 37 CFR 1.137(a) must be filed either (1) within two months after receiving a notice of abandonment or notification that reexamination has been terminated or limited or (2) within six months after the application became abandoned or the reexamination prosecution was terminated or limited, provided that no notice or notification was received.
For trademark applications and registrations that were abandoned or canceled/expired due to the inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak, the USPTO will waive the petition fee to revive the abandoned application or reinstate the canceled/expired registration. For abandoned applications, the Trademark Electronic Application System (TEAS) "Petition to Revive Abandoned Application" form should be used. For canceled/expired registrations, the TEAS "Petition to the Director" form should be used. In all cases, the petition must include a statement explaining how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.
USPTO Filing Extensions Under CARES Act
The CARES Act authorized the USPTO to extend the statutory filing deadlines in the event that the CIVID-19 pandemic "materially affects the functioning of the Patent and Trademark Office," "prejudices the rights of applicants, registrants, patent owners or others appearing before the office" or "prevents users from filing a document or paying a fee timely." On March 31, the USPTO exercised that authority by providing a 30-day extension of certain due dates in patent and trademarks matters having an original due date between March 27 and April 30, 2020, provided that the filing is accompanied with a statement that the delay is caused by the coronavirus outbreak. The USPTO’s patent notice is available, and the trademark notice is available .
According to the USPTO, a delay in filing or payment is “due to the COVID-19 outbreak” if any person associated with the matter, i.e. applicant, inventor, practitioner, was personally affected by the pandemic. Examples provided by the USPTO include office closures, cash flow interruptions, inaccessibility of files/materials, travel delays, and personal or family illness. To obtain an extension, any filing must include a statement that the delay in filing or payment was due to the COVID-19 outbreak, as defined above.
- The following patent application and reexamination proceedings are eligible for a 30-day extension:
- Reply to any USPTO notice issued during pre-examination processing by a small or micro-entity
- Reply to an office action or a USPTO notice issued during examination or patent publication processing
- Payments of issue fee
- Filing of a notice of appeal
- Filing of an appeal brief
- Filing of a reply brief
- Payment of appeal forwarding fee
- Filing a request for an oral hearing before the Patent Trial and Appeal Board (PTAB)
- Filing a response to a substitute examiner’s action in response to a remand from the PTAB
- Filing an amendment to reopen prosecution in response to, or a request for rehearing of, a PTAB decision designated as including a new ground of rejection
- Payment of maintenance fee by a small or micro-entity
- Filing a request for rehearing of a PTAB decision
The USPTO is also extending certain deadlines related to trademark applications, registrations, and Trademark Trial and Appeals Board (TTAB) proceedings. A 30-day extension is available for filing:
- A response to an office action, including a notice of appeal from a final refusal
- A statement of use or request for extension of time to file a statement of use
- A notice of opposition or request for extension of time to file a notice of opposition
- A priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
- A priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c)
- A transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a)
- An affidavit of use or excusable nonuse
- A renewal application
We will continue to keep you abreast of all further actions which the USPTO may take in accommodation to the COVID-19 crises.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.