Extensions Available Through July 2020

On May 27, 2020, the USPTO issued a patent-related notice and a trademark-related notice indicating that it will waive certain patent and trademark filing deadlines under the CARES Act. The notices indicate that certain deadlines that arise between March 27, 2020 and June 1, 2020 will be extended through July 1, 2020 if the applicant or patent/trademark registrant can certify that the delay in filing was because the applicant, inventor, patent or trademark registrant, petitioner, attorney or agent was "personally affected" by the COVID-19 outbreak.

The patent-related deadlines that may be extended include deadlines for Office Action responses, maintenance fee payments, issue fees, appeal filings and certain Patent Trial and Appeals Board filings. The trademark-related deadlines that may be extended include deadlines for Office Action responses, statements of use and affidavits of use, renewal applications and notices of opposition.

On June 12, the USPTO published an additional notice indicating that it will extend the time for claiming priority to a provisional patent application in certain situations. The typical rules are that an applicant who files a utility patent application has 12 months to claim priority to a provisional patent application, and that the applicant can petition for a two-month grace period if the applicant unintentionally missed the 12-month deadline. The new notice states that if an applicant missed a 12-month deadline that ended between March 27, 2020 and July 30, 2020 and the reason for the delay was that the applicant was "personally affected" by the COVID-19 outbreak, the USPTO will extend the two-month period until July 31, 2020 or the end of the two-month period, whichever is later. The USPTO also provides some relief for missed international filing deadlines, but that relief is limited to a waiver of the petition fee. (The two-month grace period is not extended for international applications.)

Use Caution Before Relying on Extended Deadlines

Patent and trademark applicants and registrants should exercise caution before relying on the USPTO's extended deadlines under the CARES Act. First and foremost, patent application filing deadlines are not changed. The extended deadlines for patents only apply to granted patents and applications that have already been filed.

Also, to qualify for any of the USPTO's extended deadlines, the late filing must be accompanied by a statement that the applicant, patent or trademark owner, inventor, attorney or agent, or petitioner was "personally affected" by the COVID-19 outbreak. This means that "the outbreak materially interfered with timely filing or payment." Patent and trademark applicants, owners and their representatives who contracted COVID-19, or applicants (such as healthcare providers) whose businesses are focused on COVID-19 response can likely state that the outbreak materially interfered with the filing. Patent and trademark applicants, owners and representatives with an affected family member likely also can make the statement. It's likely that applicants, owners and representatives who are subject to "stay at home" government mandates and who are caring for family members and/or home-schooling young children could also do so. Further, applicants with cash flow concerns due to business disruption should be able to make this statement, especially if the deadline involves payment of a fee.

However, someone who simply chooses to delay may not be able to say that the outbreak “materially interfered” with timely filing or payment. Thus, patent and trademark applicants, owners and their representatives should carefully consider whether they qualify for the extended deadlines before relying on them.