Legal Alert: USPTO Announces Extensions Available for Some Patent and Trademark Deadlines if Due to COVID-19 Issues

The USPTO announced Tuesday that it was exercising its authority under the Coronavirus Aid, Relief, and Economic Security (CARES) Act to extend certain patent- and trademark-related filing and fee deadlines by 30 days from the initial date it was due if the deadline falls between, and inclusive of both, March 27, 2020 and April 30, 2020, provided that the filing is accompanied by a statement the delay was due to the COVID-19 outbreak due to certain reasons set forth in the USPTO notice (outlined below).

"Inventors and entrepreneurs are the lifeblood of our economy, and we recognize that many of them are having difficulty as a result of the effects of COVID-19," said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Andrei Iancu. "As a result, we are working to provide as much relief as possible to our stakeholders, consistent with our ability to maintain the USPTO's fee-funded operations. We are especially mindful of the outsized impact on small businesses and independent inventors, and have provided additional relief for these groups. Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can hit the ground running once it passes."

Details of the deadline extensions are outlined below.

Relief for Patent Application and Reexamination Proceedings

1. 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.

2. 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.

Additional Relief before the Patent Trial and Appeal Board

1. 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... 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. 41.25©, 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.
2. 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. 314(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 [email protected] (for AIA trials), [email protected] (for PTAB appeals), or [email protected] (for interferences).

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

1. 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. 2.101(c) and 2.102(a);
   4. priority filing basis under 15 U.S.C. 1126(d)(1) and 37 C.F.R. 2.34(a)(4)(i);
   5. priority filing basis under 15 U.S.C 1141(g) 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. 1141(j)(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. 1141(k)(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.

2. 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 an ex parte appeal) or motion (for trial cases) for an extension or reopening of time, as appropriate, can be made.

The USPTO remains open for filing patent and trademark documents and fees.

For more information about the USPTO's filing and fee deadline extensions, please see the patent notice here and the trademark notice here.

We are monitoring the USPTO's responses to the crisis and will provide updates if changes occur.