Are Patent and Trademark Deadlines Extended Due To COVID-19? (UPDATED)

Downs Rachlin Martin PLLC

Downs Rachlin Martin PLLC

As the COVID-19 pandemic progresses, patent offices worldwide are taking steps to minimize negative impacts that patent and trademark filers may suffer.

Many offices have asked their employees to work from home, potentially causing delays. Most or all offices, including the US Patent and Trademark Office (USPTO) and European Patent Office (EPO), are conducting oral proceedings via telephone or videoconferencing.

  • The United States Patent & Trademark Office (USPTO) has extended most patent -related deadlines for small and micro entities falling between March 27 and July 1 to September 30. In order to qualify for the extension, however, a statement that the delay in filing was due to the COVID-19 outbreak must accompany the filing. There is a form available for making the statement, which can be accessed here or on the patent forms page. For large entities, after May 31, 2020, relief will be available to those who need it on a case-by-case basis. Such requests can be submitted through a petition for an extension of time or a petition to revive.

    Trademark deadline extensions for deadlines falling between March 27 and May 31 will expire on May 31, 2020. Relief will now be made available on a case-by-case basis

    Patent-related deadlines that have been extended include replies to office actions, issue fees, and appeal-related deadlines. For applications that went abandoned or reexaminations that were terminated because a deadline falling on or before May 31 was missed due to the outbreak, the fee for a petition to revive the application will be waived. And for Patent Trial and Appeal Board (PTAB) proceedings, a patent owner preliminary response or any related responsive filing due between March 27 and April 30 may be extended 30 days upon a request that includes a statement the delay in filing was due to the COVID-19 outbreak. For other PTAB deadlines, Applicants are invited to contact the PTAB to request an extension.

    To be eligible for the extension, an Applicant must state it was personally affected by the COVID-19 outbreak and that the outbreak materially interfered with timely filing or payment. For Applicants that can make such a statement, these extensions provide welcome relief.

    For more information, see the official Patent and Trademark notices, for questions, contact Kevin McGrath for patents and Cathy Stadecker for trademarks.
  • The Canadian Intellectual Property Office extended deadlines expiring on or after March 16, 2020 through July 5, 2020 to July 6, 2020.
  • The EPO extended all time limits expiring on or after March 15, 2020 to June 2, 2020
  • The UK IP Office has extended most deadlines falling due on or after 24 March 2020, to 11 June 2020
  • The EUIPO is no longer extending deadlines.
  • The Australian IP office is providing free extensions of time for up to three months for patents, trademarks and designs matters, including extensions of time to file evidence in oppositions. To get such an extension, a one-sentence declaration that the applicant is unable to meet the deadline due to disruptions from the COVID-19 pandemic is required.
  • The Mexican Patent and Trademark Office is closed indefinitely. Online services, however, are now available, including the ability to file new patent and trademarks applications. Paper-based procedures, such as maintenance, recordal of changes and prosecution of applications filed in paper, cannot be completed until the office reopens.
  • The Korean Intellectual Property Office has extended most deadlines through May 31st. Statutory deadlines, e.g. national stage deadlines, requests for examination deadlines, and response to final Office Actions (non-extendible deadlines), remain in effect.
  • The Singapore IP Office has extended filing deadlines between April 7 and June 4 extended to June 5, 2020.

Overall, all offices are taking measures to help reduce any delays caused by COVID-19.

Links to certain offices’ COVID-19 webpages are included below.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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