As previously noted, on March 31, the US Patent and Trademark Office (USPTO) used its authority granted under the Coronavirus Aid, Relief, and Economic Security (CARES) Act to extend by 30 days due dates for certain patent and trademark matters having an original due date between March 27 and April 30. The USPTO now has posted answers to frequently asked questions (FAQs) it received in response to the notices granting the extension under the CARES Act in patent and trademark matters. According to the FAQs, the next-business-day rule applies if the 30-day extension ends on a weekend or a federal holiday.
1. Patent FAQ
The patent FAQ provides an extensive listing of filings and fees eligible for the 30-day extension in patent matters. However, the deadlines for filing a petition for an inter partes review, post-grant review and covered business method review are not extended.
The USPTO clarifies that the statement necessary to take advantage of the extension under the CARES Act does not need to be verified or provided in the form of an affidavit or declaration. While for prosecution-related matters the USPTO prefers the statements in a separate paper, the USPTO will accept the statement as part of the paper, but “it should be made in a conspicuous manner.” For Patent Trial and Appeal Board (PTAB) matters, “the PTAB will provide a 30-day extension of time, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.” The FAQ also indicates that such requests for extension of time may give rise to good cause to extend the PTAB’s one-year deadline to issue a final written decision after institution of an inter partes review, a post-grant review or a covered business method review.
The FAQ also clarifies that to take advantage of the 30-day extension of time, the persons affected by the outbreak do not need to be the applicant or patent owner; they also may be a practitioner, petitioner, third-party requester, inventor or other person associated with the filing or fee. The USPTO also provides a definition of material interference: “Circumstances that qualify as materially interfering include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or other similar circumstances.”
The FAQ does not address any impact on patent term adjustment. Therefore, it appears that the USPTO is not waiving any rules pertaining to applicant delay. Furthermore, applicants, patent owners and parties to a PTAB proceeding should be aware of statutory due dates that are not waived.
2. Trademark FAQ
The trademark FAQ provides a listing of trademark deadlines and Trademark Trial and Appeal Board (TTAB) deadlines to which the 30-day extension of time applies. Similar to the way it treats patent matters, the USPTO clarifies that the statement necessary to take advantage of the extension under the CARES Act does not need to be verified or provided in the form of an affidavit or declaration. “The statement may be provided in the relevant TEAS or ESTTA form or included in the document being filed.” Specifically, the USPTO indicates that in the relevant TEAS (trademark electronic application system) form, the statement that the delay in filing or payment was due to the COVID-19 outbreak, should be included in the Miscellaneous Statement field of the form.
The trademark FAQ clarifies that “[t]he person affected by the outbreak may be a practitioner, applicant, registrant, or other person associated with the filing or fee.” The trademark FAQ uses the same definition of material interference as does the patent FAQ.
The TTAB has determined that the COVID-19 warrants extension of deadlines in oppositions.
The effects of the COVID-19 outbreak are considered good cause in support of a second extension of time to oppose, if the first extension was a 30-day extension of time to oppose, or in support of an initial extension of 90 days to oppose, when a longer initial extension is desired. The effects of the COVID-19 outbreak also are considered extraordinary circumstances in support of the final 60-day extension of time to oppose. Fees for an extension requiring a showing of good cause or extraordinary circumstances are still required, even though the filing may be made later than when it would otherwise be due, if the delay in filing is due to the COVID-19 outbreak.
To take advantage of this extension, a statement that the delay was due to COVID-19 can be provided in the “other” basis for extension.
It is important to note that both the patent and trademark FAQs are fluid; the USPTO will update them as needed. The USPTO also has indicated that it is still assessing whether extension of the CARES Act relief beyond April 30 is warranted. We will continue to monitor the situation and provide updates as necessary.
