The following revises our April 1 update on Patent Office Accommodations to reflect newly extended dates.
On April 28, the U.S. Patent and Trademark Office (USPTO) issued several Notices revising and extending its policies intended to help alleviate the impact of the coronavirus (COVID-19) outbreak on applicants and practitioners. These policies affect both patent-related and trademark-related matters. The USPTO has emphasized that it otherwise remains open for patent and trademark-related filings and related fees. The April 28 Notices supersede previous Notices issued March 16 and March 31, and provide newly-extended due dates.
Extension of Patent and Trademark Deadlines
The April 28 Notices announced extended waivers of most patent-related and trademark-related due dates between March 27 and May 31, including for due dates for filing documents and/or fees. Most filings that otherwise would have been due between March 27 and May 31, 2020, will be considered timely if filed on or before June 1, 2020, if the delay is the result of a practitioner, applicant, patent owner, registrant, petitioner, third party requester, inventor, or other person associated with the filing or fee being “personally affected by the COVID-19 outbreak.” The Notices indicate that “personally affected” is intended to be read broadly and includes, without limitation, “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”
The Notices apply to many patent-related and trademark-related due dates, although two patent-related due dates (replies to pre-examination notices and failure to timely pay a maintenance fee) are restricted to small and micro entity applications. To take advantage of this extension, the filing or payment of the fee must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.
Waiver of Petition to Revive Fees
As noted in our March 19 update, the USPTO had previously announced on March 16 special procedures for reviving patent and trademark applications that may have been unintentionally abandoned as a result of the COVID-19 outbreak. Specifically, if a patent application or reexamination proceeding became abandoned, or a trademark application or registration became abandoned or canceled/expired, because the practitioner, applicant, or at least one inventor, was personally affected by the COVID-19 outbreak, the USPTO will waive the petition fee associated with filing the necessary Petition to Revive. The USPTO originally did not provide any specific dates during which the abandonment must have occurred. The April 28 Notices indicate that the abandonment must be related to a due date of May 31, 2020, or earlier, when taking into account all available extensions of time.
To take advantage of this petition fee waiver, a Petition to Revive must be promptly filed and must be filed not later than two months after the issue date of a formal notice of abandonment, termination, limitation, or cancellation, or not later than six months after the date the matter became abandoned, terminated, limited, or cancelled if no formal notice was issued. The Petition to Revive must also include the appropriate reply and the same statement as described above that the delay in filing or payment was due to the COVID-19 outbreak.
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The full patent-related USPTO Notice regarding these extensions can be found here:
https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-Act-2020-04.pdf
The full trademark- related USPTO Notice regarding these extensions can be found here:
https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act-2020-04.pdf
Please contact us if you have questions about this extensions or petition fee waiver programs or if you would like to take advantage of these programs in a particular matter.