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The USPTO Extends Patent and Trademark Deadlines Due to COVID-19


The USPTO has announced extensions of certain patent and trademark deadlines in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).

Under some conditions, discussed below, deadlines for filing certain patent and trademark related documents and paying certain required fees that would otherwise have been due between March 27 and May 31 may now be filed on or before June 1.

Qualifying patent-related filings include:

    •     Response to Office action issued during examination or patent publication processing
    •     Issue fee

Filings related to appeals to the Patent Trial and Appeal Board (PTAB or Board), including: notice of appeal; appeal brief; reply brief; appeal forwarding fee; request for an oral hearing; response to a substitute examiner's answer; and amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection; request for rehearing of a PTAB decision.
    •     Petition to the Chief Judge

In addition, small and micro entities may also qualify for extensions on:

    •     Reply to pre-examination Office notices
    •     Maintenance fee

For other situations relating to the Patent Trial and Appeal Board (PTAB) not covered above, a request for extension of time can be made by contacting the PTAB if the COVID-19 outbreak has prevented or interfered with a filing before the Board.

Qualifying trademark-related filings include:

    •     Response to an office action, including a notice of appeal from a final refusal
    •     Statement of use or request for extension of time to file a statement of use
    •     Notice of opposition or request for extension of time to file a notice of opposition
    •     Claiming priority based on an earlier foreign application or international registration
    •     Transformation of an extension of protection to the United States into a U.S. application
    •     Affidavit of use or excusable non-use
    •     Renewal of existing registration

For any matters involving or appearing before the Trademark Trial and Appeal Board not covered above, a request or motion for an extension or reopening of time can be made as appropriate.

The extension of time will only be granted if accompanied by a statement that the delay in filing or payment for any of the actions enumerated above was due to the COVID-19 outbreak. A delay is due to COVID-19 if a practitioner, applicant, registrant, patent owner, petitioner, third-party requester, inventor 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.”

The USPTO is also offering waivers of petition fees for revival or reinstatement of trademark applications and registrations and patent application and reexamination proceedings that have gone abandoned due to an inability to timely respond as a result of the COVID-19 outbreak, with a submission of a statement that the delay was due to the COVID-19 outbreak, as discussed above.

These are difficult times worldwide, but the attorneys at Lewis Roca Rothgerber Christie are here to help you navigate rapid changes and developments to ensure your business can maintain its trademark rights and be prepared to renew normal business operations as soon as possible.

Please contact David Jackson at, Jennifer Van Kirk at, Shaun Lee at, Tom Daly at, or your Lewis Roca lawyer for assistance at any time.

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