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USPTO Extends Patent and Trademark Deadlines

In accordance with the CARES Act, the United States Patent and Trademark Office ("USPTO") is extending the time to file certain patent and trademark related documents or fees which would have otherwise been due on or after March 27, 2020.


As the COVID-19 outbreak has significantly disrupted the operations of numerous businesses and law firms, a person who is unable to meet patent or trademark-related timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of certain deadlines, as further described below.


TRADEMARK APPLICANTS

Relief for Trademark Applicants, Registrants, and Parties to TTAB Proceedings


(a) The due date for any:


  1. 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);

  2. 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);

  3. 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.l0l(c) and§ 2.102(a);

  4. priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i);

  5. priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);

  6. transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);

  7. affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);

  8. renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or

  9. affidavit of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b)

that was due between, and inclusive of, both March 27, 2020 and April 30, 2020, will be extended 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (b), below.


(a) A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice 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.


TTAB Situations Not Covered Above

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate, can be made.


The existing procedures to revive an abandoned application or reinstate a canceled/expired registration pursuant to 37 CFR §§ 2.66 and 2.146 remain available to applicants and registrants whose applications and registrations were abandoned or canceled/expired due to inability to timely respond to a trademark-related Office communication as a result of the COVID-19 outbreak. Fees for such petitions are waived.


PATENT APPLICANTS


(1) Relief in patent application and reexamination proceedings


(a) The due date for any:


  1. reply to an Office notice issued during pre-examination processing by a small or micro entity;

  2. reply to an Office notice or action issued during examination or patent publication processing;

  3. issue fee;

  4. notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;

  5. appeal brief under 37 C.F.R. § 41.37;

  6. reply brief under 37 C.F.R. § 41.41;

  7. appeal forwarding fee under 37 C.F.R. § 41.45;

  8. request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;

  9. response to a substitute examiner's answer under 37 C.F.R. § 41.50(a)(2);

  10. 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);

  11. maintenance fee, filed by a small or micro entity; or

  12. request for rehearing of a PTAB decision under 37 C.F.R. § 41.52

that was due between, and inclusive of, both March 27, 2020 and April 30, 2020, will be extended 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (b), below.

(b) A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, 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.


(2) Additional Relief before the Patent Trial and Appeal Board

(a) Upon a request to the USPTO affirming that a filing due between, and inclusive of both, March 27, 2020 and April 30, 2020 was or may be delayed due to the COVID-19 outbreak as defined above in subsection (1)(b), the PTAB shall provide a 30-day extension of time for:

  1. a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d);

  2. a petition to the Chief Judge under 37 C.F.R. § 41.3; or

  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.

(b) In the event that the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 14(b) and 324(c).


PTAB Situations Not Covered Above

For all other situations, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing before the Board can be made by contacting the PTAB 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).


The USPTO Remains Open for Filing Documents and Fees

The USPTO is open for the filing of patent documents and fees. The USPTO is open for the filing of trademark and TTAB documents and fees. As the USPTO remains open for the filing of trademark documents and fees, the waiver set forth in this notice is available only if the delay was due to the COVID-19 outbreak as defined above. The USPTO will continue to evaluate the evolving situation around COVID-19 and the impact on the USPTO's operations and stakeholders.

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