The USPTO Continues to Offer Relief for Businesses Impacted by COVID-19

The USPTO has twice announced extensions of certain trademark and patent deadlines in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). To review information on the USPTO’s last extensions, click here. The most recent extensions will lapse on May 31, 2020, but the USPTO will continue to offer some relief.

If a trademark owner is unable to submit a timely response and/or fee in response to an office action, fails to timely submit a Statement of Use, or misses any other statutory deadline, the trademark owner can petition the director to revive a cancelled application or registration if the missed deadlines were the result of COVID-19. Moreover, the USPTO will waive the petition fee for petitions to revive applications or reinstate registrations until June 30, 2020, provided the petition includes a statement that the delay in filing or payment was due to COVID-19.

For proceedings before the Trademark Trial & Appeal Board (TTAB), parties can make a request (in ex parte appeals) or file a motion (for trial cases) for an extension or reopening of time if COVID-19 impacts a party’s ability to make a timely filing in the proceeding.

For patent owners, the USPTO is distinguishing between “small and micro entities” and larger entities. For “small and micro entities,” filings that would have been deemed timely, if filed by June 1, 2020, will now be deemed timely if filed by July 1, 2020. Large entities can obtain relief as well, on a case-by-case basis, but must file a petition for an extension of time or a petition to revive, accompanied by any required fee. For all entities, the USPTO will waive the petition fee for the revival of applications that became abandoned, terminated, or limited on or before June 30, 2020, with a statement that the delay in filing or payment was due to COVID-19.

Small entities generally include any business concerns (1) whose number of employees, including those of its affiliates, does not exceed 500, and (2) which has not assigned, granted, conveyed, or licensed, and is under no obligation to assign, grant, convey or license any rights in the invention to anyone who could not be classified as a small entity. Micro entities generally include any business concerns who meet the criteria for small entities, who have also not filed more than four previous patent applications, and meet certain gross income requirements.

Trademark and patent owners should continue to meet existing deadlines to the greatest extent possible to avoid the risk of having an existing application or registration cancelled, but relief remains available during these extraordinary circumstances.

The attorneys at Lewis Roca Rothgerber Christie are here to help you navigate rapid changes and developments to ensure your business can maintain its intellectual property rights and be prepared to renew normal business operations as soon as possible. Please contact David Jackson at DJackson@lewisroca.com, Jennifer Van Kirk at JVanKirk@lewisroca.com, Shaun Lee at SLee@lewisroca.com, or your Lewis Roca lawyer for assistance at any time.