Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm News

USPTO extends deadlines for patents and trademarks to June 1

Author: Scarinci Hollenbeck, LLC

Date: May 11, 2020

Key Contacts

Back

In light of COVID-19, the USPTO is further extending the time to file certain patent and trademark-related documents and to pay certain required fees…

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.

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Scarinci Hollenbeck, LLC, LLC

Related Posts

See all
Nathanya G. Simon Named to ROI-NJ Influencers "Women in Business" 2025 List post image

Nathanya G. Simon Named to ROI-NJ Influencers "Women in Business" 2025 List

Scarinci Hollenbeck Partner Nathanya G. Simon named by ROI-NJ to the “ROI Influencers: Women in Business” list for fourth consecutive year Scarinci Hollenbeck Partner Nathanya G. Simon has been named by ROI-NJ to the “ROI Influencers: Women in Business” list for 2025. After four decades of practice, Nathanya’s pioneering influence in the field of special […]

Author: Scarinci Hollenbeck, LLC

Link to post with title - "Nathanya G. Simon Named to ROI-NJ Influencers "Women in Business" 2025 List"
SH Partner Angela Turiano Named Director of Legislative Affairs for SHRM Princeton post image

SH Partner Angela Turiano Named Director of Legislative Affairs for SHRM Princeton

Congratulations Angela Turiano on appointment as Director of Legislative Affairs for SHRM Princeton April 17, 2025 – Little Falls, NJ – Scarinci & Hollenbeck, LLC congratulates Partner Angela Turiano on her appointment as Director of Legislative Affairs for SHRM Princeton. Along with serving as a member of SHRM Princeton’s leadership team, Angela will monitor pending legislative, regulatory, […]

Author: Scarinci Hollenbeck, LLC

Link to post with title - "SH Partner Angela Turiano Named Director of Legislative Affairs for SHRM Princeton"
Brittany P. Tarabour Nominated as Three-Year Trustee of the Monmouth Bar Association post image

Brittany P. Tarabour Nominated as Three-Year Trustee of the Monmouth Bar Association

Congratulations Brittany P. Tarabour for Nomination as Three-Year Trustee of the Monmouth Bar Association Red Bank, NJ – April 9, 2025 – Scarinci & Hollenbeck, LLC proudly congratulates Brittany P. Tarabour on her nomination by the Monmouth Bar Association to serve as a Three-Year Trustee. Founded in 1908, the Monmouth Bar Association is dedicated to […]

Author: Scarinci Hollenbeck, LLC

Link to post with title - "Brittany P. Tarabour Nominated as Three-Year Trustee of the Monmouth Bar Association"
Bloomberg Law Podcast Discusses Dua Lipa IP Victory with Ron Bienstock post image

Bloomberg Law Podcast Discusses Dua Lipa IP Victory with Ron Bienstock

Scarinci Hollenbeck Partner Ron Bienstock Featured on Bloomberg Law Podcast to Discuss Dua Lipa Copyright Infringement Lawsuits Little Falls, NJ – April 8, 2025 – Scarinci & Hollenbeck, LLC Partner and Chair of the firm’s Intellectual Property and Entertainment & Media departments Ronald S. Bienstock was recently featured on the Bloomberg Law podcast to discuss […]

Author: Scarinci Hollenbeck, LLC

Link to post with title - "Bloomberg Law Podcast Discusses Dua Lipa IP Victory with Ron Bienstock"
NJ Super Lawyers Names Scarinci Hollenbeck Attorneys post image

NJ Super Lawyers Names Scarinci Hollenbeck Attorneys

Scarinci Hollenbeck Attorneys From Little Falls and Red Bank Named to 2025 New Jersey Super Lawyers List Little Falls, NJ – April 2, 2025 – Scarinci & Hollenbeck, LLC attorneys from both NJ offices were named to the 2025 New Jersey Super Lawyers and Rising Stars list. Each attorney was chosen in recognition of their […]

Author: Scarinci Hollenbeck, LLC

Link to post with title - "NJ Super Lawyers Names Scarinci Hollenbeck Attorneys"
Angela Turiano to Serve as Mock Arbitrator for Fordham Law Securities Arbitration Clinic post image

Angela Turiano to Serve as Mock Arbitrator for Fordham Law Securities Arbitration Clinic

On Thursday, April 3, 2025, Partner Angela Turiano will make her fifth appearance as a mock arbitrator for the Securities Arbitration Clinic at the prestigious Fordham School of Law. Angela will draw on her years of experience to provide feedback to these future lawyers after making opening presentations and closing arguments, with the goal of […]

Author: Scarinci Hollenbeck, LLC

Link to post with title - "Angela Turiano to Serve as Mock Arbitrator for Fordham Law Securities Arbitration Clinic"

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Sign up to get the latest from our attorneys!

Explore What Matters Most to You.

Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

Let`s get in touch!

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!