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Virus-Related Legislation Extends Patent and Trademark Deadlines

Steven A. Abreu

Steven A. Abreu | Partner, Trademark Chair View more articles

Steven is a member of our Trademark Practice Group and Litigation Practice Group

The details of financial relief provided to households and businesses in the recently passed Coronavirus Aid, Relief and Economic Security (CARES) Act may have received all the press, but other provisions of the CARES Act empower the Director of the United States Patent and Trademark Office (USPTO) to grant extensions to inventors and brand owners.

Relief for Applicants, Registrants, Patent Owners, and Parties to TTAB and PTAB Proceedings

Trademark and patent filers may now seek a 30-day extension of any of the filings mentioned in the paragraphs below, provided that they make a written statement to the USPTO that the delay in filing is due to the COVID-19 outbreak.

More specifically, delays in filing due to COVID-19 are defined as situations where an attorney, applicant, patent owner, petitioner, third party requester, registrant or other person associated with the filing or payment of a fee, was personally affected by the COVID-19 outbreak which materially interfered with timely filing or payment, including, without limitation, the following situations:

  • Office closures;
  • Cash flow interruptions;
  • Inaccessibility of files or other materials;
  • Travel delays;
  • Personal or family illness, or similar circumstances

Any of the following trademark and patent deadlines that were to occur between March 27, 2020, and April 30, 2020, will be extended 30-days from the initial date it was due.

Trademark Deadlines that Can Be Extended

If accompanied by a written statement expressing material interference with a deadline or payment of a fee due to COVID-19, the 30-day extension will apply to the following trademark deadlines.

  • Response to an Office Action, including a notice of appeal from a final refusal;
  • Statement of Use or request for an extension of time to file a Statement of Use;
  • An affidavit of continued use and/or an application for renewal of a trademark registration (or an affidavit of excusable nonuse);
  • Notice of Opposition or a request to extend the opposition deadline;
  • A claim of priority in a newly filed application
  • Transformation of a request for an extension of protection into the U.S. via the Madrid Protocol into a national application

The order allows parties to Trademark Trial and Appeal Board proceedings, be they ex parte appeals or inter partes proceedings to request or move for extensions or reopening of time.

Should an application or registration go abandoned for failure to file a required document with the USPTO due to hardship caused by the coronavirus, the office has waived its fees related to petitions to revive.

Patent Deadlines that Can Be Extended

If accompanied by a written statement expressing material interference with a deadline or payment of a fee due to COVID-19, the 30-day extension will apply to the following patent deadlines.

  • Reply to an Office Action or notice issued during examination or patent publication processing;
  • Reply to an Office notice issued during pre-examination processing by a small or micro entity;
  • Issue fee deadline;
  • Notice of Appeal and the appeal forwarding fee;
  • Briefs for appeal and reply;
  • Request for an oral hearing before the 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 a small or micro entity.

The order allows parties to Patent Trial and Appeal Board proceedings to request an extension of time, as appropriate, but specifically in the following situations:

  • Request for rehearing of a PTAB decision;
  • Petition to the Chief Judge;
  • Patent owner preliminary response in a trial proceeding.

Sunstein remains available to serve your needs, as all of our attorneys and employees are working from home. We converted to paperless operations 12 years ago, which allows for virtually seamless remote working conditions.

Nevertheless, should COVID-19 cause you or your organization difficulty in meeting your filing deadlines or government fee payments due to one of the reasons above, or any other reason, please contact us to discuss whether a 30-day extension should be requested.

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