United States Patent and Trademark Deadlines Extended for Those Affected by COVID-19

This pandemic hit businesses hard, especially independent inventors and entrepreneurs who often lack the capital needed to weather a lengthy financial storm. The Coronavirus Aid, Relief, and Economic Security Act gave the USPTO the authority to provide some relief.

If certain filing or fee deadlines fall between March 27 – April 30 and a “person associated with the filing or fee” is “personally affected” by the outbreak, then the USPTO will extend the deadline 30 days. The party needs to provide a statement explaining how the delay was “due to the COVID-19 outbreak,” such as by “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness,” etc.

Not all filings and fees will have this extension. For patents, extendible deadlines include:

• replies to pre-examination notices for small/micro-entities, and replies to Office Actions;
• issue fee payments;
• notices of appeal, appeal briefs, reply briefs, and appeal forwarding fees;
• requests for oral hearings before the PTAB;
• responses to a substitute examiner’s answer;
• in response to a PTAB decision including a new ground of rejection, amendments when reopening prosecution or requests for rehearing;
• maintenance fees for small/micro entities;
• requests for rehearing of a PTAB decision under 37 CFR §§ 41.52, 41.125(c), 41.127(d), or 42.71(d);
• petitions to the Chief Judge of the PTAB under 37 CFR § 41.3; and
• patent owner preliminary responses in trial proceedings in inter partes review or post-grant review proceedings. 

For trademarks, the following will receive extensions:

• responses to Office Actions, including notices of appeal;
• statements of use and requests for extensions of time to file same;
• notices of opposition and requests for extensions of time to file same;
• priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 CFR § 2.34(a)(4)(i);
• priority filing basis under 15 U.S.C. § 1141g and 37 CFR § 7.27(c);
• transformation of an extension of protection to the United States into a U.S. application;
• affidavits of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 CFR § 2.160(a);
• renewal applications; and
• affidavits of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 CFR § 7.36(b). 

If a motion or fee is not included in the above lists, an extension can still be requested. For trademarks, you can make a formal request or motion. For patents, you can make a request by phone (571-272-9797) or email (Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov (for PTAB appeals), or InterferenceTrialSection@uspto.gov (for interferences)).

Arent Fox continues to track updates for patent and trademark deadlines around the world. To see our updated chart, click the link below.

Status of Global Patent, Trademark, and Copyright Offices