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ON-DEMAND INSIGHTS

USPTO Grants Filing Deadline Extension

By Michelle Rosenberg April 7, 2020

USPTO filing deadline

Although the COVID-19 pandemic has disrupted business on a global scale, the virus does not seem to slowing down the work of the U.S. Patent and Trademark Office (PTO). New applications can still be filed electronically, and examiners will continue to respond while working remotely, including scheduling attorney interviews and other meetings to take place by video or telephone. Nonetheless, the PTO recently took steps to assist patent and trademark owners and applicants who may be impacted by this public health crisis. Under authority granted to it by the Coronavirus Aid, Relief and Economic Security (CARES) Act (the “Act”), the PTO announced on March 31st a number of filing deadlines for patent and trademark-related documents and fees that are eligible for a 30-day extension.

PTO Deadline Extensions
To qualify for the 30-day extension, the PTO deadline must fall between March 27 and April 30. When the filing is ultimately made, it must be accompanied by a statement that the delay was “due to the COVID-19 outbreak,” and a person associated with the filing was “personally affected.” This should not be viewed as a blanket 30-day extension.  According to the PTO notice, the outbreak must have “materially interfered with timely filing or payment.”

Eligible delays in patent-related filings and payments include those where a practitioner, applicant, inventor, patent owner, petitioner, third party requester, etc. was personally affected; similarly, eligible delays in trademark-related filings and payments are those where a practitioner, applicant, registrant, etc. was personally affected. The PTO defines “personally affected” to include office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, and other similar reasons.

Important Exceptions
There are several important exceptions to the PTO’s filing reprieve. On the patent side, this extension does not include original application filings, PCT or national phase filing deadlines, non-provisional filings claiming priority to provisional applications, or inter partes review petitions. For trademarks, an intent-to-use trademark application must still be filed in order to secure the filing date as the priority date, if the mark is not currently in use.

What about pre-March 27th deadlines?
If a deadline prior to March 27, 2020 was missed due to the COVID-19 outbreak which resulted in a patent or trademark application being abandoned or a trademark registration being canceled or expiring, the PTO’s existing procedures to revive an abandoned patent or trademark application or reinstate a canceled/expired trademark registration are still available. On March 16th, the PTO announced that it will waive the petition fee if the ability to timely reply to a PTO communication was due to the effects of the COVID-19 outbreak. There are deadlines to file a petition and a statement similar to the statement discussed above for the 30-day extension must be made.   

Next steps for clients
If your business is affected in any way by the COVID-19 outbreak, we can help look for creative ways to approach upcoming filings, including identifying and prioritizing upcoming deadlines that cannot be extended. Also, please keep in mind that many other the patent and trademark offices in other countries are also offering deadline extensions due to COVID-19. If you have questions relating to managing your IP during the COVID-19 crisis, please contact your Patent GC attorney or Michelle Rosenberg at mrosenberg@patentgc.com or 508-405-0048, or visit our website’s Contact Us page to request help.