April 02, 2020

USPTO Extends Certain Patent and Trademark Deadlines

3 min

Following passage in the United States of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act, signed by President Trump on March 27), the USPTO joined a growing number of countries in extending certain patent- and trademark-related deadlines. Included in these extensions are statutorily imposed deadlines, such as the 6-month statutory deadline for filing responses to Office Actions and the 3-month statutory deadline for paying an Issue Fee. Importantly, however, although there is an extension for filing of priority-based trademark applications, there is no similar extension for filing of priority-based patent applications.

Generally speaking, an extension is available for a response or filing due between March 27, 2020 and April 30, 2020, inclusive. The extension period is 30 days from the initial due date, as long as the delayed response is accompanied by a statement that at least someone in a class of enumerated people was personally affected by the COVID-19 outbreak and that the outbreak materially interfered with a timely filing. There is no fee for the extension. Additional details on the precise nature of deadlines that are extended, and the list of enumerated people, can be found here: https://www.uspto.gov/about-us/news-updates/uspto-announces-extension-certain-patent-and-trademark-related-timing.

Previous responses to COVID-19 by the USPTO might charitably be described as "meager": if a deadline was missed then a petition for revival would be needed, but the petition fee would be waived. Passage of the CARES Act provided the opportunity for a considerable expansion in the granting of extensions.

As mentioned, there is no extension for filing of priority-based patent applications. Moreover, it is unclear whether the current turmoil would be covered by the "unintentional" standard now provided by the Patent Law Treaties Implementation Act of 2012 (PLTIA), which provides a 2-month window for restoration of priority. Notably, there is a nontrivial petition fee for restoration of priority under PLTIA, currently $2,000.

Other countries that have implemented extensions (as of the April 1, 2020 date of this writing) include the European Patent Office (EPO), France, Germany, Italy, the United Kingdom, and South Korea. China and the World Intellectual Property Organization (WIPO) indicate that they are operating normally, with no current plans for extensions, while patent and trademark offices in many countries are simply closed or are operational on a part-time basis only.

Clearly, the best practice is to avoid reliance on these extensions. In this regard, the USPTO might be among the best prepared of U.S. government agencies for remote work by their examiners, given that the USPTO has a long-established and widely adopted telework program – the so-called hoteling program – which has been in place since at least 2005.