Patent & Trademark Office Announces 30-Day Extension of Some Deadlines
April 2, 2020 by Zach Hilton
The U.S. Patent and Trademark Office (USPTO) has announced that many deadlines (not all) related to patents and trademarks are eligible for extension under the authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). The announcement extends various deadlines that fall between March 27th and April 30th by 30 days, provided that the delay in filing or paying a required fee is accompanied by a statement that the delay was due to the COVID-19 outbreak (see more details below). The 30-day extension is measured from the date of the original deadline, and not measured from April 30th.
Deadlines that are eligible for a 30-day extension under the USPTO’s announcement include deadlines to respond to office actions issued during the examination of a patent or trademark application, as well as deadlines to pay a patent issue fee, pay a patent maintenance fee, file a trademark statement of use or request for extension to file a statement of use, file a notice of trademark opposition, and the deadline to renew a trademark registration. A more comprehensive list of patent- and trademark-related deadlines that are eligible for extension can be found in the notices made available on the USPTO website, the links for which are provided below.
Many Critical Deadlines Not Extended by USPTO Announcement
It is important to note that not all patent- and trademark-related deadlines have been extended, including some of the most critical statutory filing deadlines. The following deadlines represent a non-comprehensive list of some of the more critical deadlines that have not been extended by the USPTO’s announcement:
- Deadline for filing a non-provisional patent application following a provisional patent application;
- Deadline for filing an international or national stage patent application under the Patent Cooperation Treaty (PCT);
- Deadline for filing an inter partes review petition; and
- Deadline for filing an original patent application under 35 U.S.C. § 102.
Delayed Filing/Payment Must Be Accompanied by Statement Certifying Delay Was Due to COVID-19 Pandemic
Those seeking an extension of an eligible patent- or trademark-related deadline must provide a statement with the delayed filing or payment, certifying that the missed deadline was caused by the COVID-19 pandemic. The USPTO in the pertinent notices explains that acceptable reasons for missing a deadline may include situations where the filer or attorney or their family is personally affected by the outbreak such that it “materially interfered” with their ability to meet the deadline due to, for example, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.
Applications Abandoned Due to Deadlines Missed before March 27th May Be Revived if Swift Action Is Taken
For certain patent- and trademark-related deadlines that were missed before March 27th due to the effects of the COVID-19 outbreak, and are therefore not extended by the announcement, the USPTO has confirmed that it will be waiving petition fees to revive any abandoned patent and trademark applications. However, any such petition to revive an abandoned patent or trademark application must be promptly filed, typically within two months of the date that a notice of abandonment was issued by the USPTO.
It is unclear at this time whether the USPTO will announce any further extensions of deadlines after April 30, 2020. Please do not assume that any deadlines associated with you or your company’s patents or trademarks have been extended—contact us to confirm whether any such deadlines have been extended, and if so, to calculate the date of the extended deadline. Please do not hesitate to contact us at Brown Fox if you have any questions.