In an effort to assist those who have been adversely affected by the ongoing COVID-19 pandemic, the U.S. Patent and Trademark Office (USPTO) has extended the time allowed to file certain patent and trademark-related documents and to pay certain required fees. The USPTO’s authority for extending these deadlines comes from the Coronavirus Aid, Relief and Economic Security Act (the “CARES Act”), which was recently passed by Congress. However, there are some important caveats for patent and trademark applicants to consider.
The USPTO’s extension of time applies to certain deadlines that fall within a specific window of time, beginning on March 27th and ending on April 30th. The extension covers most deadlines that arise during prosecution of patent and trademark applications, as well as a few deadlines that are relevant to other patent and trademark proceedings. These deadlines include responses to patent and trademark Office Actions, patent and trademark notices of appeal, patent appeal briefs, trademark statements of use, and trademark notices of opposition. A detailed list of applicable deadlines is provided below. Importantly, certain deadlines are not included in the list, including patent maintenance fees for large entities and replies to an Office notice issued during pre-examination processing for large entities.
The time period for the applicable deadlines has been extended by 30 days. Because other types of extensions for patent and trademark deadlines are often expressed in terms of months instead of days, it will be important for interested parties to take care when calculating the extended deadlines. For example, a deadline that falls on March 28th would be extended until April 27th, not April 28th.
It is also important to note that this extension of time will not be automatically applied. Those seeking extensions must submit “a statement that the delay in filing or payment was due to the COVID-19 outbreak.” According to the USPTO, a delay in filing or payment is “due to the COVID-19 outbreak” if someone “associated with the filing or fee was personally affected by the COVID-19 outbreak … such that the outbreak materially interfered with timely filing or payment.” Some examples of ways that the COVID-19 outbreak could “materially interfere with timely filing or payment” include “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illnesses, or similar circumstances.”
Prior to providing this 30-day extension of time, the USPTO had also waived the fee in some situations for a petition to revive a patent application that was abandoned for failure to file a timely reply to an Office communication. However, anyone seeking to take advantage of this waiver must submit a statement certifying that a “practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.”
What Patent Filings and Fees Can Potentially be Extended?
Subject to the conditions and requirements discussed above, the following patent filings and fees can potentially be extended:
- reply to an Office notice issued during pre-examination processing by a small or micro entity;
- reply to an Office notice or action issued during examination or patent publication processing;
- issue fee;
- notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
- appeal brief under 37 C.F.R. § 41.37;
- reply brief under 37 C.F.R. § 41.41;
- appeal forwarding fee under 37 C.F.R. § 41.45;
- request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;
- response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
- 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);
- maintenance fee, filed by a small or micro entity; or
- request for rehearing of a PTAB decision under 37 C.F.R. § 41.52.
The Following Filings in PTAB Proceedings Can also Potentially be Extended:
- a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d);
- a petition to the Chief Judge under 37 C.F.R. § 41.3; or
- a patent owner preliminary response in a trial proceeding under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive filings.
Extensions may be available for other types of PTAB filings, but litigants must contact the PTAB to ask.
What Trademark Filings and Fees can Potentially be Extended?
Subject to the conditions and requirements discussed above, the following trademark filings and fees can potentially be extended:
- 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);
- 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);
- notice of opposition or request for an 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);
- priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);
- priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
- transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. 7.31(a);
- affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
- renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
- affidavit of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).
Extensions may be available for other types of TTAB filings, but litigants must contact the TTAB to ask.
If you have questions about whether an extension of time or a waiver of a revival fee could apply to your specific situation, Ray Quinney & Nebeker’s Intellectual Property and Patent Prosecution Team is ready and able to help.
Tom Hardman is a patent prosecution attorney. He counsels clients regarding patent strategy, assists with drafting and filing patent applications and domestic and international patent procurement.