USPTO Extends Certain Patent and Trademark Deadlines Under CARES Act

The Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed on March 27 provides the USPTO director with temporary authority to extend deadlines in light of the current national emergency. The USPTO has exercised this authority by extending most prosecution deadlines falling between March 27 and April 30 by thirty-days. For patent applications, the extension is available for documents and fees including replies to certain Office notices, issue fees, notices of appeal, appeal briefs, maintenance fees for small or micro entities, and more. For trademark applications, the extension is available for responses to certain Office actions, statements of use, notices of opposition, and more. These extensions are intended as relief for small businesses and independent inventors.

For the extension to apply in either a patent or trademark scenario, the filing must include a statement that the delay is due to the COVID-19 outbreak. Delays in filing are considered to be “due to the COVID-19 outbreak” if one of the parties involved with prosecution is personally affected by the outbreak. This may be an applicant, a patent owner, a petitioner, a practitioner, a third-party requester, an inventor, or any other person associated with the filing or fee. Examples of what may constitute being personally affected by the outbreak includes, but is not limited to, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, or personal or family illness.

Importantly, the extension does not apply to the following patent deadlines:

• Original filing deadlines;
• PCT or national stage filing deadlines;
• Deadlines for filing a non-provisional application following a provisional; or
• Deadlines for filing an inter partes review petition

At this time, the USPTO is still open for the filing of documents and fees, and in addition to these extensions, the USPTO has already taken actions to adjust its operations to keep both employees and the public safe by conducting in-person meetings, such as hearings and examiner interviews, virtually. Additionally, the USPTO has waived the fee for petitions to revive applications when applicants are unable to timely reply to office communications due to the COVID-19 outbreak.

As the COVID-19 pandemic continues to evolve, we will continue to keep you updated with USPTO changes that may affect your business practices.

If you have any questions or concerns about the impact of the COVID-19 outbreak on your intellectual property portfolios, please contact us.