USPTO Further Extends Certain Patent Filing Deadlines; Trademark Deadline Extension Expires May 31, 2020

May 29, 2020

By John S. Parzych, Courtney A. H. Thompson and Jacob M. Abdo

Patents

Deadline StampThe U.S. Patent and Trademark Office (USPTO) has extended the time to file certain patent-related documents and pay certain fees. For small and micro entities only, filings that would have been deemed timely if filed by June 1, 2020, will now be deemed timely if filed by July 1, 2020. For large entities, after May 31, 2020, relief will be available to those who need it on a case-by-case basis, through submitting a petition for an extension of time or petition to revive, accompanied by any required fees.

The USPTO has also extended its waiver of the fee for petition to revive patent applications that became abandoned on or before June 30, 2020, provided the filing is accompanied by a statement that the delay was due to COVID-19.

Trademarks

Trademark-related deadlines extended under the CARES Act will expire on May 31, 2020. Going forward, the USPTO will direct relief on a case-by-case basis. Applicants who were unable to submit a timely response or fee in response to an Office communication may file a petition to review the application. Applicants who missed the 36-month statutory deadline for filing a Statement of Use may petition the Director. Registrants who missed a statutory deadline, resulting in a cancelled/expired registration, or who were unable to submit a timely response or fee in response to an Office communication regarding a registration, may petition the Director.

The USPTO will continue to waive the fee for petitions to revive trademark applications or reinstate trademark registrations that became abandoned or expired/cancelled as a result of the COVID-19 outbreak, provided the filing is accompanied by a statement that the delay was due to COVID-19. If the COVID-19 outbreak has prevented or interfered with a proceeding before the Trademark Trial and Appeal Board (TTAB), that party may request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate.

The USPTO recognizes that the COVID-19 pandemic continues to impose significant hardships on many of its stakeholders, especially on small businesses and individual inventors. The USPTO will continue to evaluate the evolving situation.

For more information, contact a member of the Advertising, Marketing & Trademark Group or the Patents Group.

Fredrikson & Byron’s COVID-19 Resource Center