USPTO Extends Some Patent and Trademark Filing Deadlines

The Coronavirus Aid, Relief and Economic Security Act of 2020 (CARES Act) provides that the USPTO may “toll, waive, adjust, or modify deadlines related to patent and trademark prosecution.”

On March 31, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Andrei Iancu published two notices that extend the deadlines for prosecution of certain patent and trademark applications that had a deadline falling between March 27 and April 30, 2020. Additionally, the USPTO had previously waived the fees for petitions to revive patent and trademark applications when applicants were unable to timely reply to an office communication due to the COVID-19 outbreak.

Certain filings with deadlines at the USPTO and the PTAB between March 27 and April 30, inclusive, can be extended for 30 days if the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Trademark Trial and Appeal Board situations will be handled on a case-by-case basis through requests or motion practice. The list of situations contemplated in the Notices includes 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. It should be noted that the deadlines that are referenced are limited to rejection responses and appeals. Patent-related bar dates for initial application filings based on public use or foreign filings are not affected and Applicants are advised to continue to closely monitor those deadlines.

Notably, these changes appear to be prompted by the substantial increase in the number of applications that have been abandoned, which has happened at an alarming pace. For many business owners, the decision to abandon a pending patent or trademark application may at least, in part, be driven by tightened budgets and the uncertainty surrounding the viability of businesses in view of the COVID-19 outbreak. The two notices provide businesses a vehicle to revive patent and trademark applications that were abandoned because of the public health crisis, and allows for more time to respond to office actions. For many businesses, this accommodation provides flexibility in legal budgets; however any business that has protectible ideas or foreign-filed patent applications, especially small entities, should remain vigilant and ensure that any bar dates that would preclude filing with the USPTO based on foreign filing or public use are carefully monitored to ensure those ideas are protected.

The patent notice can be found here and the trademark notice can be found here. Please contact your Nyemaster Goode attorney with any questions about how best to protect intellectual property and take advantage of the extended deadlines.