The United States Patent and Trademark Office (USPTO) will further extend certain trademark and patent deadlines through June 1 for those affected by the COVID-19 pandemic—expanding and superseding the relief announced earlier this month (see our previous alert). Presently, applicable filings and fees due March 27, 2020, through May 31, 2020, inclusive, will be considered timely if filed on or before June 1, 2020, so long as the delay was due to the COVID-19 outbreak.
The applicable trademark filings and fees include:
- Response to office action, including notice of appeal from a final refusal
- Statement of use or request for extension of time to file statement of use
- Notice of opposition or request for extension of time to oppose
- Priority filing basis under the Paris Convention or Madrid Protocol
- Transformation of an extension of protection to the U.S. into a U.S. application
- Affidavit of use or excusable nonuse
- Renewal application
The applicable patent filings include:
- Reply to notice issued during pre-examination processing by a small or micro entity
- Reply to notice or action issued during examination or patent publication processing
- Issue fee
- Notice of appeal, appeal brief or reply brief
- Appeal forwarding fee
- Request for oral hearing before the Patent Trial and Appeal Board (PTAB)
- Response to a substitute examiner’s answer
- Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection
- Maintenance fee filed by small or micro entity
- Request for rehearing of a PTAB decision
In addition, the USPTO is waiving the petition fees to revive trademark applications and registrations and patent applications and patent reexamination proceedings that are abandoned, canceled or terminated on or before May 31, 2020.
Delayed filings and payments (and requests for fee waivers) must be accompanied by a statement indicating that the delay was due to the COVID-19 outbreak, for example, as a result of office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances. For trademark filings, the statement can generally be included in the “Miscellaneous Statement” field of the applicable Trademark Electronic Application System (TEAS) form. For patent filings, the USPTO prefers that the statement be included in a separate paper.
Because extensions are not approved until after original deadlines have passed, we recommend that you timely submit filings and payments whenever possible. However, we recognize that circumstances surrounding the COVID-19 pandemic may make it impossible or impractical to meet such deadlines, for example, if your business was closed by government mandate. Please contact a member of Brownstein’s Intellectual Property Department if you need assistance navigating the extension process.
