As a result of the enactment of the Coronavirus Aid, Relief and Economic Security Act (the CARES Act), it will now be easier for patent and trademark owners facing deadlines during the current crisis to avoid loss of rights for not being able to comply with deadlines.
In mid-March, the U.S. Patent and Trademark Office (USPTO) said that it did not have the authority to extend any deadlines, as they are governed by statute. Instead, the USPTO announced that during the current coronavirus crisis, it would waive the usual filing fees for petitions to revive patent and trademark applications that become abandoned due to failure to comply with a deadline. However, it would still be incumbent on the applicant to file a petition; no automatic extensions would be possible. Moreover, some missed deadlines such as the deadlines to maintain and renew trademark registrations could not be remedied by a petition to revive, as the relevant statutes do not permit these to be revived under any circumstances.
That has now changed. Tucked into the CARES Act, the same law that provides $2 trillion for various types of coronavirus-related relief, is a provision that temporarily authorizes the USPTO Director to extend deadlines if the Director determines that the ongoing emergency “prejudices the rights of applicants, registrants, patent owners or others appearing before the office” or “prevents users from filing a document or paying a fee timely”.
On March 31, the USPTO issued notices extending deadlines in both patent and trademark matters. Nearly all deadlines, including those that previously had no option for revival, are now extended by 30 days. There are a few things to keep in mind:
- For now, only deadlines occurring between March 27 and April 30, 2020 are affected by the notices.
- A late filing needs to include a statement that the delay in filing or payment was due to the COVID-19 outbreak, meaning that “if a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through 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”.
- For certain Trademark Trial and Appeal Board (TTAB) and Patent Trial and Appeal Board (PTAB) matters not expressly addressed in the notices, requests or motions for extension can be made.
- For deadlines occurring before March 27 that were missed as a result of the COVID-19 and are subject to petitions to revive under the relevant statutes, the USPTO is continuing to waive the requirement for petition fees.
In making the adjustments to assist in weathering the coronavirus crisis, the USPTO Director said, “Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can hit the ground running once it passes.” Please feel free to reach out to me with any questions related to managing intellectual property protection during this challenging time.
ABOUT LAURA WINSTON
Laura J. Winston is a principal in the firm’s intellectual property group. Ms. Winston focuses her law practice primarily in the areas of trademarks, copyrights and the internet, representing a broad range of clients from individual business owners and small startup ventures to established Fortune 500 and publicly-traded companies both domestically and abroad. Ms. Winston practiced both at large firms and specialized intellectual property firms, before co-founding an intellectual property boutique firm. Her industry experience covers various industries as diverse as pharmaceuticals and medical devices, print and online publishing, computer-related goods and services, alternative energy, and travel and transportation.
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