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Davis Brown Intellectual Property Law Blog 

USPTO Granted Authority to Extend Deadlines and Other Patent Office Updates - March 30, 2020

On March 23, we provided an overview of the steps being taken by the U.S. Patent and Trademark Office (USPTO) and select other patent offices to mitigate the impact of the pandemic on patent and trademark applicants. 

It’s been less than a week, but it likely comes as no surprise that several offices, including the USPTO, have seen additional developments. 

U.S. Patent and Trademark Office update

As we noted last week, there are no indications that USPTO operations have been adversely affected by COVID-19, although it’s certainly possible that we may start to see delays at some point as this situation continues. 

The steps implemented earlier in March are still in place, including the USPTO being closed to the public, the requirement that all meetings be conducted remotely, the waiver of fees when filing a petition to revive an application unintentionally abandoned due to the pandemic, and the waiver of original signature requirements.

In addition, Congress has now taken steps to make it possible to extend deadlines. Last week, we noted the USPTO’s statement that it is unable to extend deadlines set by statute, and we theorized that Director Iancu may have been drawing attention to the fact that Congress would have to step in.

Congress received the message. In the Coronavirus Aid, Relief, and Economic Security (CARES) Act passed on March 25, Congress granted Director Iancu temporary authority to “toll, waive, adjust, or modify, any timing deadline” set by statute to mitigate the effects of the pandemic on patent/trademark applicants and owners. 

There has been no official reaction from the USPTO or Director Iancu to date. But this step frees up the USPTO to postpone deadlines in a fashion similar to the postponements already implemented by several other patent offices around the world.

While we’ve seen no hints as to how the USPTO might proceed, it seems reasonable to assume that Director Iancu will likely extend at least some types of deadlines at some point if this pandemic continues to keep a large chunk of the country shuttered.

Other patent offices

The following deadline extensions were discussed last week: 

  • European Patent Office (EPO) - extended deadlines to April 17
  • Canadian Intellectual Property Office - exended deadlines to April 1
  • European Union Intellectual Property Office - extended deadlines to May 1

Since that time, other patent offices have also taken steps:

  • German Patent and Trademark Office - extended all deadlines to May 4, 2020 (but noted that it is not authorized to extend deadlines established by law)
  • United Kingdom Intellectual Property Office - announced that it will consider requests for extensions on a case-by-case basis

The EPO has also reminded its applicants/owners of the availability of an “exceptional occurrence” rule. It allows for an extension of a deadline when the applicant/owner can establish that, during any of the 10 days preceding the due date, it was impossible to meet the deadline due to the exceptional occurrence, as long as the applicant/owner submits the filing within five days of the exceptional occurrence ending. The EPO also identified specific areas to which the rule would currently apply, including China, Iran, South Korea, Italy, and certain additional areas in Europe.

Patent offices in smaller markets have taken similar steps with respect to deadline extensions and/or case-by-case consideration of extension requests. Further details are available upon request.

Continue to watch for additional guidance from the patent offices

The above steps are intended to assist any applicant/owner impacted by the current crisis, and the various patent offices are likely to continue to provide additional mitigation (including additional extensions and other steps). Specifically, the USPTO’s new authority to extend deadlines merits specific attention in the coming days and weeks. 

Applicants/Owners should work toward original deadlines if possible

Despite deadline extensions, Davis Brown believes that IP applicants/owners should meet their original deadlines if possible. For example, an applicant should still submit any filings involving a claim of priority to a previous application, because such deadlines are established by treaties and are unlikely to fall under any of these deadline extensions.

If you have specific questions about the impact of COVID-19 on the ongoing prosecution of your patent and/or trademark portfolios or if you believe you may have missed a deadline, you should contact your attorney. There may be remedies available to you, but they should be pursued as soon as possible. We will continue to monitor the situation at the USPTO and the various other patent offices and provide appropriate updates as necessary.

Davis Brown Law Firm blogs, legal updates, and other content are for educational and informational purposes only. This is not legal advice and it does not create an attorney/client relationship between Davis Brown and readers. Each circumstance is different; readers should consult an attorney to understand how this content relates to their personal situation. You should not use Davis Brown blogs or content as a substitute for legal advice from a licensed attorney in your state. Reproduction of Davis Brown content without written consent is prohibited.