Patent & Trademark Law Alert – CARES Act - U.S. Patent and Trademark Office Extends Various Filing and Fee Deadlines for Applicants Affected by COVID-19
By Mark Montague and Raphael S. Nemes
The USPTO sent out a notice April 28, 2020 further extending the time to file certain patent and trademark-related documents and to pay certain required fees to June 1, 2020, if the due date falls between March 27 and May 31. This is an addition to the prior extension for deadlines falling between March 27 and April 30.
The Coronavirus Aid, Relief, and Economic Security Act (CARES Act) gives the U.S. Patent and Trademark Office (USPTO) Director the authority to temporarily extend deadlines to address emergencies related to the COVID-19 outbreak.
On March 31, 2020, the USPTO announced that various filing and fee deadlines that fall on or between March 27 and April 30 (2020) may be extended for 30 days upon request if a party involved with the matter “was personally affected” by the COVID-19 outbreak.
The USPTO issued separate Patent and Trademark notices. As set forth in the notices, many different types of filings and fees are subject to the extension, including responses to office actions, statements of use, notices of opposition and requests for extensions thereof, notices of appeal within the USPTO, issue and maintenance fees, among others. Certain deadlines, however, remain non-extendable, including the original deadline to file a patent application or the deadline to file a non-provisional application following a provisional application.
To qualify for an extension, a party must include a statement with its filing explaining that the delay was due to the COVID-19 outbreak. A party may be the legal representative, applicant, trademark registrant, patent owner, inventor, or other person involved in the matter who was personally affected by the COVID-19 outbreak.
Extensions are not automatic and will only be granted for specific COVID-19 related circumstances, including financial hardship, travel delays, file inaccessibility, personal or family illness, among other reasons identified in the notices.
Since the USPTO could reject a party’s extension request, we recommend that parties strive to meet original deadlines when possible.
For further information, contact Mark Montague, Raphael S. Nemes, or your CLL attorney.
Mark Montague
Partner
Email | 212.790.9252
Mark is a patent attorney registered to practice before the U.S. Patent and Trademark Office, and has over 25 years of experience counseling large, medium, and small-sized companies in a variety of technical fields.
Raphael S. Nemes
Associate
Email | 212.790.9248
Rafi’s practice focuses on intellectual property litigation and enforcement matters. He also prosecutes trademark matters before the U.S. Patent and Trademark Office.