Under authority from the Coronavirus Aide, Relief, and Economic Security Act (CARES Act), the United States Patent and Trademark Office (USPTO) recently announced that it will extend certain trademark and patent deadlines for those affected by the COVID-19 public health emergency. Specifically, the USPTO will provide 30-day extensions for applicable filings and fees that are due March 27, 2020, through April 30, 2020, inclusive, so long as the delay was due to the COVID-19 outbreak.

The applicable trademark filings and fees include: 

• Response to office action, including notice of appeal from a final refusal
• Statement of use or request for extension of time to file statement of use
• Notice of opposition or request for extension of time to oppose 
• Priority filing basis under the Paris Convention or Madrid Protocol 
• Transformation of an extension of protection to the U.S. into a U.S. application 
• Affidavit of use or excusable nonuse
• Renewal application

The applicable patent filings include: 

• Reply to notice issued during pre-examination processing by a small or micro entity 
• Reply to notice or action issued during examination or patent publication processing 
• Issue fee
• Notice of appeal, appeal brief or reply brief
• Appeal forwarding fee
• Request for oral hearing before the Patent Trial and Appeal Board (PTAB)
• Response to a substitute examiner’s answer
• Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection
• Maintenance fee filed by small or micro entity
• Request for rehearing of a PTAB decision

Importantly, delayed filings and payments must be accompanied by a statement indicating that the delay was due to the COVID-19 outbreak—meaning a person associated with the filing or fee was personally affected by the COVID-19 outbreak, for example, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.

Because extensions are not approved until after original deadlines have passed, we encourage our clients to submit timely filings and payments whenever possible. However, we recognize that circumstances surrounding the COVID-19 pandemic may make it impossible or impractical to meet such deadlines, and we are available to advise and assist our clients regarding the extension process as needed.