The U.S. Patent and Trademark Office (USPTO) is further extending the time to file certain patent and trademark-related documents and to pay certain required fees in light of the ongoing coronavirus (COVID-19) pandemic. Deadlines have now been extended to June 1, 2020, for those impacted.

CARES Act Authorizes USPTO to Toll Deadlines

As discussed in greater detail in a prior article, the Coronavirus Aid, Relief and Economic Security (CARES) Act authorized the USPTO to extend the statutory filing deadlines in response to the COVID-19 pandemic. On March 31, the USPTO exercised that authority by providing the possibility of a 30-day extension of certain due dates in patent and trademarks matters that had an original due date between March 27 and April 30, 2020. On April 28, 2020, the USPTO granted additional relief to trademark and patent owners.

Patent Deadlines

The USPTO’s patent relief is set forth in a notice titled "Notice of Extended Waiver of Patent-Related Timing Deadlines Under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Patent Applicants and Patentees.” For deadlines in patent applications, reexamination proceedings, and proceedings before the PTAB, other than trial proceedings, if an eligible document or fee was or is due between (and inclusive of) March 27, 2020, and May 31, 2020, the filing will be considered timely if filed on or before June 1, 2020, 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 is “due” to the COVID-19 outbreak when the outbreak materially interfered with the filing of a paper or fee. Circumstances that qualify as materially interfering include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or other similar circumstances. The person affected by the outbreak may be a practitioner, applicant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing or fee.

For a trial proceeding before the PTAB, if an eligible filing was or is 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. For filings due after April 30, 2020, parties must contact PTAB for a request for relief.

Trademark Deadlines

The USPTO also extended certain trademark filing and payment deadlines, as set forth in its "Notice of Extended Waiver of Trademark-Related Timing Deadlines Under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Trademark Applicants and Trademark Owners.”

If an eligible document or fee was or is due between (and inclusive of) March 27, 2020, and May 31, 2020, the filing will be considered timely if filed on or before June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. The following filings are eligible for the period of relief:

  • Response to an Office action, including a notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a)
  • Statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a)
  • Priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i)
  • Priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c)
  • 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)
  • Affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a)
  • Renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182
  • Affidavit of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b)

For trademark applications that were abandoned and registrations that were canceled/expired due to an inability to timely respond to a Trademark-related Office communication having a due date of May 31, 2020, or earlier as a result of the effects of the COVID-19 outbreak, the USPTO has waived the petition fee to revive the abandoned application or reinstate the canceled/expired registration.

Future Extensions May Be Possible

According to the USPTO, it will continue to evaluate the evolving situation around the COVID-19 outbreak and the impact on the USPTO’s operations and stakeholders. If the USPTO further extends the CARES Act relief, we will provide updates here.

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.