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USPTO Provides Further Relief to Patent and Trademark Customers

May 4, 2020

The USPTO announced that it was further extending the deadline for individuals to file certain patent and trademark related documents and to pay certain fees, pursuant to its authority under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).

Applicable filings and payments originally due between March 27th and May 31st will now be considered timely if made on or before June 1, 2020, provided, however, that you must also submit a statement explaining that the delay in filing or payment was due to the COVID-19 outbreak. This June 1, 2020 deadline supersedes the USPTO’s previous offer of a blanket 30-day extension for certain filings due between March 27th and April 30th (as reported in this alert). Under the current structure, for example, if a filing is due on May 28th but you are unable to file by that date due to COVID-19, you still must file it by June 1st to be considered timely. 

For purposes of the statement, a delay is due to the COVID-19 outbreak “if a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

Patent filings eligible for extension include:

Trademark filings eligible for extension include:

  • Reply to an Office notice issued during pre-examination processing by a small or micro entity;
  • Reply to an Office notice or action issued during examination or patent publication processing;
  • Issue fee;
  • Notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  • Appeal brief under 37 C.F.R. § 41.37;
  • Reply brief under 37 C.F.R. § 41.41;
  • Appeal forwarding fee under 37 C.F.R. § 41.45;
  • Request for an oral hearing before the PTAB under 37 C.F.R. § 41.47;
  • Response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
  • Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
  • Maintenance fee, filed by a small or micro entity;
  • Request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.52, 41.125(c), or 41.127(d);
  • Petition to the Chief Judge under 37 C.F.R. § 41.3
  • A patent owner preliminary response in a trial proceeding under 37 C.F.R. §§42.107 or 42.207, or any related responsive filings.
  • 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);
  • Notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and 2.102(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 § 1141(g) 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. § 1141(j)(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; or
  • Affidavit of use or excusable nonuse under 15 U.S.C. § 1141(k)(a) and 37 C.F.R. § 7.36(b)

In addition to the June 1, 2020 extension, the USPTO continues to consider the effects of the coronavirus outbreak to be an “extraordinary situation” within the meaning of 37 CPR §§1.183 and 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.

To that end, the USPTO continues to waive certain petition fees to:

  • Revive patent applications and reexamination proceedings, but only to the extent the patent application is held abandoned, or a reexamination prosecution terminated or limited, on or before May 31, 2020, as a result of the COVID-19 outbreak, and
  • Revive abandoned trademark applications or reinstate canceled/expired registrations, but only to those that become abandoned or canceled/expired on or before May 31, 2020, as a result of the COVID-19 outbreak.

The patent or trademark applicant/owner must also submit to the USPTO a statement explaining that their delay was due to COVID-19, as described above.

Please see the USPTO’s patent-related notice and trademark-related notice for more information.

* * * * *

If you have any questions or intellectual property needs relating to a patent, trademark, or copyright matter, please contact a Crowell attorney. For further guidance on the legal and business implications of the COVID-19 pandemic generally, please visit our Coronavirus Resource Center.

For more information, please contact the professional(s) listed below, or your regular Crowell & Moring contact.

Anne Elise Herold Li
Partner – New York
Phone: +1.212.895.4279
Michelle Chipetine
Associate – New York
Phone: +1.212.895.4221