The U.S. Patent and Trademark Office has announced selected extensions to certain filing deadlines for filing selected patent and trademark documents, as well as, in some cases, paying required filing fees. This is directly a result of the USPTO receiving such authority pursuant to the federal CARES Act.

The following are selected highlights to note:

Trademark Filings

For trademark filings, any of the following actions under certain sections may now qualify for a revised due date:

  • Response to a USPTO office action
  • Response to a notice of appeal from a final refusal
  • Statement of use or request for an extension of time for a statement of use
  • Notice of opposition or request for an extension of time for a notice of opposition
  • Priority filing basis
  • Transformation of an extension of protection to the United States into a US application
  • Affidavit of use or excusable nonuse
  • Renewal application

Patent Filings

For patent filings, any of the following actions may now qualify for a revised due date:

  • Reply to a USPTO office action during pre-examination processing by a small or micro entity
  • Reply to a USPTO office action during examination or patent publication processing
  • Issue fees
  • Notices of appeal
  • Appeal briefs
  • Reply briefs
  • Appeal forwarding fees
  • Requests for an oral hearing before the PTAB
  • Response to a substitute examiner’s answer
  • Amendment when reopening prosecution relating to a PTAB decision under certain conditions
  • Maintenance fees filed by a small or micro entity
  • Requests for rehearing of a PTAB decision

Extension of Filing Due Dates

With some exceptions and limitations, any of these trademark or patent filings which had been due between March 27, 2020 and April 30, 2020 are now eligible for a 30—day extension provided the filing is accompanied by a statement noting that the delay was due to the COVID-19 outbreak.

If a delay experienced due to COVID-19 is not noted in the above list, the USPTO has also made provision for a request or motion for an extension or reopening of time.

USPTO Remains Open for Filing of Documents and Fees

Please note that the USPTO considers itself to be operating under generally standard operating conditions although personnel are working remotely. In other words, the USPTO is open for the filing of patent documents and fees, and therefore filers should assume that they are able to interact with the USPTO as normal.

The extensions described here are all related to specific sections of the Code of Federal Regulations (CFR) and may include additional exclusions, limitations, conditions, exemptions and appeals.

Coordinating with Your Dilworth IP Attorney

Please consult with your Dilworth IP attorney if you would like to review your current filing activities and deadlines in light of these changes. If you are not yet working with a Dilworth IP attorney, please contact us and we would be happy to assist.

-Michael Dilworth 

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.