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Trademark and Patent Extensions Due to COVID-19

Updated: Jun 6

The USPTO (United States Patent and Trademark Office) has announced that it is granting a 30 day extension from the due date of certain patent and trademark deadlines that were/are due between March 27, 2020 and April 30, 2020, but only if the delay is due to COVID-19.

Trademark Matters Available for Extension:

- responses to an Office action including a notice of appeal from a final refusal;

- statements of use or request for extension of time to file a statement of use;

- notices of opposition or request for extension of time to file a notice of opposition;

- priority filings under 15 USC §1126(d)(1) and 15 USC §1141g;

- transformations of an extension of protection to the United States;

- affidavits of use or excusable nonuse applications; or

- renewal applications.

- For Trademark Trial and Appeal Board ("TTAB") matters, a request or motion for extension or reopening can be made.

Patent Matters Available for Extension:

- responses to an Office notice issued during pre-examination processing by a small or micro entity;

- replies to an Office notice or action issued during examination or patent publication processing;

- issue fees;

- notices of appeal;

- appeal briefs;

- requests for an oral hearing before the Patent and Trademark Office;

- responses to a substitute Examiner’s answer;

- amendments when reopening prosecution in response to, or request for rehearing of a Patent Trial and Appeal Board (“PTAB”) decision designated as including a new ground of rejection;

- maintenance fees, filed by a small or micro entity;

- requests for rehearing of a PTAB decision;

- petitions to the Chief Judge; or

- patent owner preliminary responses in a trial proceeding, or any related responsive filings.

What is Considered a Delay Due to COVID-19:

A delay is due to COVID-19 if a practitioner, applicant, registrant, or other person associated with the filing is personally affected by the COVID-19 outbreak. Examples of COVID-19 related delays include, but are not limited to, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, and personal or family illness, or "similar circumstances, such that the outbreak materially interfered with timely filing or payment." See https://content.govdelivery.com/accounts/USPTO/bulletins/2843317. If your situation meets this requirement, the document must be filed by the extended due date with a statement that the delay in filing or payment was due to COVID-19.

Matters not Described Above: If you have a situation that was not specifically listed above, including TTAB or PTAB extensions or reopenings, and COVID-19 prevented or interfered with a filing or payment, you may request extensions via the respective offices.

Abandoned Applications/Reinstatement of Canceled/Expired Registrations:

The USPTO has deemed the COVID-19 pandemic an "extraordinary situation" for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. For patent or trademark applicants/owners who were unable to timely reply to an Office communication due to COVID-19, and as a result, their patent or trademark was held abandoned, canceled, or reexamination was terminated, the applicant/owner may file a petition to revive the abandoned application or reinstate the canceled/expired registration. For these petitions, the USPTO is waiving the relevant petition fee.

Delay for Reasons not Related to COVID-19: Because the USPTO remains open for the filing of documents and fees for patent and trademark matters, the waiver under the CARES Act is only available if the delay is due to COVID-19.

For assistance related to extensions due to COVID-19 delays, and any other intellectual property questions, please contact Scott Sisun at scott@sisunlaw.com or 347-913-7800.

*Special thanks to Ashley Biggs, Benjamin N. Cardozo School of Law, LLM ’20

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