United States Patent and Trademark Office – COVID-19 Update

Firstly, we hope that everyone is staying safe and handling the present circumstances as well as possible. The United States Patent and Trademark Office (USPTO) has taken steps to accommodate intellectual property owners affected by the coronavirus by extending certain patent and trademark-related deadlines. Below is a quick summary of those extended deadlines and the requirements for those extensions. If you have any questions about how these changes could impact you, please reach out to your attorney.

TRADEMARKS

For due dates falling between March 27, 2020 and April 30, 2020 on the types of deadlines listed below, the USPTO is providing applicants and registrants with an extension of 30 days, providing the filing is accompanied by a statement that the delay in filing or payment was due to the coronavirus outbreak. The applicable deadlines include:

• Responses to office actions including notices of appeal from a final refusal;
• Statement of use deadlines or requests for the extension of time to file a statement of use;
• Notices of opposition or requests for the extension of time to file a notice of opposition;
• Claims of priority based on a foreign application filed within the previous 6 months;
• Claims of priority for extensions of protection filed through the International Bureau;
• Transformation of an extension of protection into a United States application within 3 months of the cancellation of an international registration;
• Affidavits of use or excusable non-use under Section 8;
• Renewal applications under Section 9; or
• Affidavits of use or excusable non-use for extensions of protection.

The USPTO has also noted that in Trademark Trial and Appeal Board situations not covered above, requests or motions for additional time can be made in appropriate circumstances. Note also that to the extent applications and registrations are abandoned due to an inability to timely respond to trademark-related USPTO communications due to the coronavirus outbreak, the USPTO is waiving the fees associated with a petition to revive.

PATENTS

For due dates falling between March 27, 2020 and April 30, 2020 on the types of deadlines listed below, the USPTO is providing applicants and registrants with an extension of 30 days, providing the filing is accompanied by a statement that the delay in filing or payment was due to the coronavirus outbreak. The applicable deadlines include:

• Replies to office notices issued during pre-examination processing by a small or micro entity;
• Replies to office notices or actions issued during examination or patent publication processing;
• Issue fees;
• Notices of appeal under 37 CFR § 41.31;
• Appeal briefs under 37 CFR § 41.37;
• Reply briefs under 37 CFR § 41.41;
• Appeal forwarding fees under 37 CFR § 41.45;
• Requests for an oral hearing before the Patent Trial and Appeal Board (PTAB);
• Responses to a substitute examiner’s answer;
• Amendments when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection;
• Maintenance fees, filed by a small or micro entity; or
• Requests for rehearing of a PTAB decision.

Upon request to the USPTO affirming that a filing due between March 27, 2020 and April 30, 2020 (inclusive) was or may be delayed due to the coronavirus outbreak, the PTAB will provide a 30-day extension of time for:

• A request for rehearing of a PTAB decision;
• A petition to the Chief Judge; or
• A patent owner preliminary response in a trial proceeding or any related responsive filings.

The USPTO has also noted that in PTAB situations not covered above, inquiries about possible extensions of time should be made at 571-272-9797 or by email at Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov (for PTAB appeals) or InterferenceTrialSection@uspto.gov (for interferences).