What to Know about Patent and Trademark Procedures in Light of the Coronavirus Outbreak

The U.S Patent and Trademark Office (USPTO) announced several initiatives aimed at providing relief for those impacted by the COVID-19 public health emergency.

The USPTO considers 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 has waived certain petition fees in the event a trademark or patent application is held abandoned, or a reexamination prosecution terminated or limited, as a result of an applicant’s inability to timely respond to a PTO communication due to the effects of the outbreak. The PTO also waived the regulatory requirements of 37 CFR §§1.4(e)(1) and (2) for original handwritten, ink signatures, and will instead accept copies of handwritten signatures “until further notice is provided” by the USPTO.

In a further attempt to alleviate the strain of the coronavirus outbreak on the public, the Coronavirus Aid, Relief, and Economic Security (CARES) Act, signed into law on March 27, 2020, authorizes the Director of the USPTO to waive and alter certain statutory deadlines.

• Authority to the Director of the USPTO: Section 12004(a) of the CARES Act grants the USPTO Director authority during the “emergency period” to toll, waive, adjust, or modify certain statutory deadlines if the Director determines that the emergency: “(1) materially affects the functioning of the Patent and Trademark Office; (2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or (3) prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office.” The emergency period includes the duration of the national emergency declared by President Trump on March 13, 2020 as a result of the COVID-19 outbreak (and any renewal thereof) plus an additional 60 day period.

Pursuant to this authority, the USPTO announced on March 31 that those who are unable to meet certain patent or trademark-related timing deadlines in light of the outbreak may be eligible for a 30-day extension for a range of filings and fees that otherwise would have been due between March 27 and April 30, 2020.

Filings to which the patent-related extension applies include, but are not limited to: replies to USPTO notices or actions issued during examination or patent publication processing; notices of appeal; appeal and reply briefs; requests for oral hearings before the PTAB; and requests for a rehearing of a PTAB decision. Filings to which the trademark-related extension applies include, but are not limited to: responses to USPTO actions, including notices of appeal from a final refusal; statements of use; affidavits of use or excusable nonuse; and priority filings basis under 15 U.S.C. §§ 1126(d)(l) and 1141g, and 37 C.F.R. §§ 2.34(a)(4)(i) and 7.27(c). At the request of the USPTO Director, the PTAB will similarly provide a 30-day extension for requests for hearings of a PTAB decision, petitions, and responsive filings in trial proceedings.  

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Please note that the USPTO is closed to the public “until further notice,” with all meetings and communications occurring remotely. If you have any questions or intellectual property needs relating to a patent, trademark, or copyright matter, please contact a Crowell attorney. 

For more information on the legal and business implications of the COVID-19 pandemic generally, please visit our Coronavirus Resource Center.