Legal Alert: USPTO Further Extends Certain Patent and Trademark Deadlines under CARES Act to June 1

The USPTO announced Tuesday that, in accordance with its authority under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), it was further extending the time to file certain patent- and trademark-related documents and to pay certain required fees, which otherwise would have been due between March 27 and May 31, to June 1, 2020. For more information about the deadline extensions, please see the patent notice here and the trademark notice here.

The new notices supersede the previously posted:

• "Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act," dated March 31, 2020;
• "Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act," dated March 31, 2020; and
• "Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak," dated March 16, 2020.

Details of the deadline extensions are outlined below.

Patent

Relief for Patent Application and Reexamination Proceedings

(a) The due date for any:

1. 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

due between, and inclusive of, both March 27, 2020 and May 31, 2020, will be considered timely if filed on or before June 1, 2020, 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.

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...the PTAB shall provide a 30-day extension of time for 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), 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).

Other Relief Available to Patent Applicants and Patentees - Petitions to Revive

The following incorporates and supersedes the “Patent-Related Correspondence – Petitions to Revive” section of the March 16, 2020, notice titled “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak” as described below. In this section, the USPTO continues to provide relief in the form of a waiver of the petition fee for the revival of applications (and reexamination proceedings), but limits the eligible applications and reexamination proceedings to those that became abandoned (or terminated or limited) on or before May 31, 2020, as a result of the COVID-19 outbreak. This section also harmonizes the statement that must be provided to take advantage of the revival fee relief with the statement that must be provided to take advantage of the above CARES Act relief, i.e., the statement as defined in subsection I.1.b above.

The USPTO considers the effects of the COVID-19 outbreak to be an “extraordinary situation” within the meaning of 37 C.F.R. 1.183 for affected patent applicants and patentees.

For patent applicants or patent owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020, or earlier (when taking into account all available extensions of time under 37 C.F.R. 1.136(a)), such that the application became abandoned or the reexamination prosecution became terminated or limited, the USPTO will waive the petition fee in 37 C.F.R. 1.1 7(m) when the patent applicant or patent owner files the reply with a petition under 37 C.F.R. 1.137(a) and a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (l)(b) above. See 35 U.S.C. 41(a)(7). The inclusion of the statement that the delay in filing or payment was due to the COVID-19 outbreak will be treated as a request for sua sponte waiver of the petition fee under 37 C.F.R. 1.17(m).

The USPTO advises any patent applicant or patent owner who seeks to file a petition to revive under 37 C.F.R. 1.137(a) with a request to waive the petition fee under 37 C.F.R. 1.17(m) due to the effects of the COVID-19 outbreak, to promptly file the petition under 37 C.F.R. 1.137(a) (including the required statement) accompanied by the required reply (but not the petition fee under 37 C.F.R. 1.17(m)). A petition to revive under 37 C.F.R. 1.137(a) due to the effects of the COVID-19 outbreak may be submitted via the USPTO patent electronic filing systems (EFS-Web or Patent Center) using document code PET.RELIEF or by mail directed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

Trademark

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

(a) The due date for any:

1. 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)

due between, and inclusive of, both March 27, 2020 and May 31, 2020, will be considered timely if filed on or before June 1, 2020, 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, 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 appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate, can be made.

Other Relief Available to Trademark Applicants and Owners - Petitions

The following incorporates and supersedes the “Trademark-Related Correspondence” section of the March 16, 2020, notice titled “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak” as described below. In this section, the USPTO continues to provide relief in the form of a waiver of the petition fee to revive abandoned applications or reinstate canceled/expired registrations, but limits the eligible abandoned applications and canceled/expired registrations to those that became abandoned (or canceled/expired) on or before May 31, 2020, as a result of the COVID-19 outbreak. This section also harmonizes the statement that must be provided to take advantage of the petition fee waiver with the statement that must be provided to take advantage of the above CARES Act relief, i.e., the statement as defined in subsection I.1.b above.

The USPTO considers the effects of the COVID-19 outbreak to be an “extraordinary situation” within the meaning of 37 C.F.R. 2.146 for affected trademark applicants and trademark owners.

For trademark applicants and trademark owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020, or earlier, such that the application became abandoned or the registration was canceled/expired, the USPTO will waive the petition fee (set by regulation, rather than statute) to revive the abandoned application or reinstate the canceled/expired registration. For abandoned applications, the applicants should use the Trademark Electronic Application System (TEAS) “Petition to Revive Abandoned Application” form. For canceled/expired registrations, trademark owners should use the TEAS “Petition to the Director” form. In all cases, the petition must include a statement that the delay in filing or payment was due to the COVID-19 outbreak, as defined in subsection (1)(b) above. The inclusion of the statement that the delay in filing or payment was due to the COVID-19 outbreak will be treated as a request for a waiver of the petition fee under 37 C.F.R. 2.6(a)(l5). The petition must be filed not later than two months after the issue date of the notice of abandonment or cancellation. 37 C.F.R. 2.66(a)(1), 2.146(d)(1). If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired. 37 C.F.R. 2.66(a)(2), 2.146(d)(2).

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