In light of the global pandemic, the USPTO has issued some relief from missed patent and trademark filing deadlines and fees. The relief includes both the extension of deadlines, as well as waivers of fees that would typically be required in the event of missed deadlines. See below for a breakdown of the current rules and requirements for patent and trademark filings.
Patents
A 30-day extension has been granted for various action items with original due dates falling between March 27 – April 30. To receive the extension, the late filing must include a statement that the delay in filing or payment was due to the COVID-19 breakout. Applicable action items include, but are not limited to:
- replies to Office notices issued during pre-examination processing buy a small or micro entity;
- replies to Office notices or actions issued during examination or patent publication processing;
- issue fees;
- notices of appeal;
- appeal briefs;
- reply briefs; and
- maintenance fees filed by a small or micro entity.
In addition to the foregoing, the USPTO issued a fee relief notice that pre-dates the extension notice. Patent applicants who are unable to timely reply to a USPTO Office communication due to the effects of the Coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited, the USPTO will waive the petition to revive fee. The following requirements apply to receive the waiver:
- the petition must include a statement that the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply;
- the applicant/owner must include a copy of the USPTO Relief Notice with the reply; and
- the petition must be filed no later than two months of the issue date of the notice of abandonment or the notification that reexamination prosecution has been terminated.
Trademarks
A 30-day extension has been granted for various action items with original due dates falling between March 27 – April 30. To receive the extension, the late filing must include a statement that the delay in filing or payment was due to the COVID-19 breakout. Applicable action items include, but are not limited to the following:
- responses to Office actions;
- statements of use or requests for extension of time to file same;
- notices of opposition or requests for extension for time to file same;
- affidavits of use or excusable nonuse; and
- renewal applications.
As with Patents, the USPTO issued a fee relief notice that predates extension notice. Trademark applications and registrations that are abandoned or canceled/expired due to inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak, the USPTO will waive the petition fee to revive the abandoned application or reinstate the canceled/expired registration. However, a representative from the USPTO informed us that this is actually a fee reimbursement, rather than a waiver. In order to receive the fee reimbursement, the following applies:
- the petition must include a statement explaining how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak; and
- the petition must be filed not later than two months of the issue date of the notice of abandonment or cancellation.
Nonetheless, it is strongly recommended that the requisite responses be timely filed, if possible, as a cancellation or abandonment could open the door for someone else to file your trademark.
The situation at the USPTO likely remains fluid, and further extensions/waivers may be granted as we move further into the month of April. If you have any intellectual property matters currently pending with the USPTO, contact your attorney to determine how to best proceed during this time.