The CARES Act enacted last week authorized the United States Patent and Trademark Office (USPTO) and the United States Copyright Office (USCO) to extend deadlines for pending matters for applicant delays due to the effects of the coronavirus. However, not all deadlines are extendable, and even permitted extensions must be sought due to the effect of the coronavirus (COVID-19) emergency.

Patent and Trademarks — Requirements for Obtaining Relief

The USPTO has permitted relief from certain deadlines if the delay in filing is “due to the COVID-19 outbreak.” The following conditions must be met to obtain relief:

• The eligible deadline must fall between March 27 and April 30;
• “A practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee” must be “personally affected by the COVID-19 outbreak;” and
• The affect must “materially interfere with timely filing or payment” due at the deadline.

The USPTO provides a non-exhaustive list of what may be deemed an “affect” of the COVID-19 outbreak: “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.”

In order to seek relief, the delayed filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

While it does not appear that the USPTO is requiring a full explanation of the circumstances causing the delay, we highly recommend that the applicant provide some detail in the statement for the USPTO record and retain records internally or with counsel documenting the reasons for the delay. False or improper claims of delay could result in the applicant’s resulting patent or trademark being invalidated for fraud.

Patent Deadlines Affected

The following patent deadlines may be extended under the order:

• Replies to pre-exam notices (small/micro entities ONLY)
• Replies to office actions
• Issue fees
• Notices of appeal
• Appeal briefs
• Reply briefs
• Appeal forwarding fees
• Requests for oral hearing before PTAB
• Responses to substitute answers
• Amendments when reopening prosecution
• Maintenance fees (small/micro entities ONLY)
• Request for rehearing of PTAB decision
• Petitions to the Chief Judge of the PTAB
• Patent owner preliminary responses in a PTAB trial proceeding

Patent Deadlines NOT Extendable

We note that the following major deadlines are not extendable under the relief granted:

• 12-month priority deadline for filing an application claiming priority to a provisional application
• 12-month grace period for filing an application after the inventor’s own disclosure
• 30-month deadline for filing a national phase application arising from a PCT international application
• Maintenance fees for large entities
• All PTAB trial proceeding deadlines except the patent owner’s preliminary response and related filings

Trademark Deadlines Affected

The following trademark deadlines may be extended under the order:

• Responses to office actions, including filing a notice of appeal
• Statements of use or extensions of time for the same
• Notices of opposition or requests for extension of time to file notices of opposition
• Priority filings on the basis of foreign applications or Madrid international applications
• Section 8 affidavits of use/excusable nonuse
• Section 9 renewals

TTAB appeals and inter partes proceedings are not subject to the above extensions, but the USPTO notes that extension requests or motions can be filed. In our experience, such requests or motions are routinely granted absent exceptional circumstances.

USCO Extensions on Physical Deposits

The USCO has issued similar extensions and relief. The most common relief will concern physical deposit copies.

First, for new electronically filed applications filed on or after April 2 that require submission of a “best edition” physical copy, the applicant may submit an electronic copy of the edition in addition to mailing the physical copies and submit a declaration that the electronic copy is identical. This will permit USCO staff (who are currently working remotely) to process the application. If no electronic copy is filed, examination may be delayed but the application date will still be the effective date of registration. This relief does not apply to paper-filed applications.

Second, if for some reason the physical copies cannot be mailed at all, the applicant may file a statement that the physical copies could not be mailed and obtain an extension of the deadline for providing the physical copies until 30 days after the disruption causing the delay has ended. The statement must include “satisfactory evidence” of the inability to mail physical copies, including but not limited to (i) “a statement that the applicant is subject to a stay-at-home order issued by a state or local government;” or “(ii) a statement that the applicant is unable to access required physical materials due to closure of the business where they are located.”

Extensions are also provided relating to serving and recording notices of termination of transfers of copyrights. Because this is a complex procedure, we encourage you to contact a lawyer if you believe this may apply to you.

Conclusion

While this limited relief is welcome, we caution that currently the only deadlines eligible for relief at the USPTO are those between March 27 and April 30. Furthermore, because a statement regarding the cause of the delay must be filed, we strongly recommend retaining evidence of the reason for delay. Also, the ability to seek a one-month delay does not displace other means of obtaining USPTO deadline relief, such as paying extension fees where available. We encourage applicants who have the means to pay extension fees rather than make a statement on the record regarding the cause of the delay, as such statements may come under scrutiny during litigation. Finally, we reiterate that certain crucial patent priority deadlines are not subject to relief.