Davis Brown Intellectual Property Law Blog 

USPTO Patent and Trademark Deadline Extensions - April 7, 2020

Kassandra E Ricklefs

In March, we provided an overview and update on various steps that the United States Patent and Trademark Office (USPTO) and certain other intellectual property offices around the globe are taking in response to the pandemic.

Pursuant to the CARES Act, on March 31, Director Iancu of the USPTO issued notices extending deadlines for various patent and trademark documents and fees.

These extensions are in addition to the previously announced relief including the waiver of the fee to revive petitions when applicants are unable to timely reply due to the COVID-19 outbreak. More information on this relief is discussed in our previous post.

Any qualifying due date from March 27, 2020 until April 30, 2020, may be extended for 30 days from the initial date it was due, if accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

A delay qualifies for this exemption if a practitioner, applicant, or other person associated with the filing or fee is personally affected by the COVID-19 outbreak. The notice includes example situations: office closures, cash flow interruptions, inaccessibility of files/materials, travel delays, illness, and other circumstances that materially interfered with timely filing/payment.

Patent deadlines

Some of the patent-related deadlines and fees that qualify for this extension include:

  • Reply to an Office notice issued during pre-examination processing by a small or micro entity (e.g. Notice to File Corrected Application Papers, Notice to File Missing Parts, etc.)
  • Reply to an Office notice or action issued during examination or patent publication processing (e.g. Final and Non-Final Office Action)
  • Fee payment
  • Certain appeal deadlines and various PTAB deadlines

Non-qualifying deadlines

Deadlines not qualifying for the extension include:

  • Filing a non-provisional application claiming priority to a provisional application
  • PCT or national stage filing deadlines
  • Filing an inter partes review petition

We encourage you to review the USPTO notices (patent and trademark) if any of those deadlines impact your patent portfolio.   

Trademark deadlines

Some of the trademark deadlines set forth in the Notice include:

  • Response to an Office action
  • Statement of use or request for extension of time to file a statement of use
  • Notice of opposition or request for extension of time to file a notice of opposition
  • Affidavit of use or excusable nonuse
  • Renewal application

Deadlines set by the Trademark Trial and Appeal Board may also be extended on a case-by-case basis.

Davis Brown will continue to work with and counsel our clients as if it is “business as usual” and work to meet original deadlines unless notified otherwise. If you have any questions or concerns about these extended deadlines or other intellectual property matters, please contact your legal counsel.

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