On March 31, 2020, pursuant to the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), the U.S. Patent and Trademark Office (“PTO”) issued notices waiving certain deadlines for 30 days in patent and trademark applications and proceedings before the PTO.
Deadlines that fall between March 27, 2020 and April 30, 2020 will be extended 30 days in certain instances if the delayed filing is accompanied by a statement that the delay was caused by a relevant party having been affected by the COVID-19 outbreak. Some examples cited by the PTO include office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, and personal or family illness.
Pending Patent Applications and Patent Board Proceedings
For pending patent applications, the 30-day extension is applicable to a number of common filing deadlines including, but not limited to, replies to pre-examination office actions (small and micro entity only), replies to substantive office actions, issue fees, notices of appeal and maintenance fees (small and micro entity only).
In proceedings before the Patent Trial and Appeal Board, the 30-day extension will apply to deadlines for requests for rehearing, petitions to the Chief Judge, and patent owners’ preliminary responses or any related responsive filings in trial proceedings.
Note that the waiver of deadline does not apply to filing deadlines for new patent applications (PCT, national stage or original non-provisional applications) and deadlines for inter partes review petitions.
Pending Trademark Applications and Trademark Board Proceedings
For pending trademark applications, the 30-day extension applies to most common filings such as responses to office actions, notices of appeal, statements of use, notices of opposition, declarations of use and renewals.
In pending proceedings before the Trademark Trial and Appeal Board, the waiver of deadline does not apply. Instead, the normal procedure for extension requests should be followed, i.e., by request or motion.
Read the official Patent and Trademark notices for more details.
Written by John H. Choi. Please note that the above discussion is for general information purposes only. For more information, please contact John H. Choi & Associates LLC at email@jchoilaw.com or 201.580.6600.