The Coronavirus Aid, Relief and Economic Security (CARES) Act provides applicants for U.S. patents and trademarks the opportunity to obtain temporary relief from certain deadlines as an increasing number of businesses face mandatory shutdowns due to the COVID-19 crisis.
Patent and Trademark Extensions
Patent and Trademark Extensions Available Through June 30, 2020
On March 31, 2020, and updated on April 28, 2020, the USPTO issued notices indicating that it will waive certain patent and trademark filing deadlines under the CARES Act. The notices indicated that certain deadlines that arise between March 27, 2020 and June 1, 2020 were extended to June 1, 2020 if the applicant or patent/trademark registrant could certify that the delay in filing was because the applicant, inventor, patent or trademark registrant, petitioner, or attorney or agent was "personally affected" by the COVID-19 outbreak. The USPTO subsequently revised this extension period for patents to June 30, 2020 for small and micro entities only.
The patent-related deadlines that were permitted to be extended include due dates 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.
Patent Filing Extensions Available Through July 31, 2020
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.)
Patent Fee Extensions Available Through September 30, 2020
Finally, on June 29, 2020, the USPTO further extended fee payment deadlines for small and micro entities only. Specifically, small and micro entities who can make the required certification can defer until September 30, 2020 payment of filing fees, issue fees, maintenance fees and certain other fees due after March 27, 2020.
Ongoing Flexibility Regarding Trademarks
Although the official extension period for trademark filings expired on May 31, 2020, the USPTO stated that "[i]the interest of maintaining flexibility and options for our stakeholders, the USPTO will continue to waive the petition fee for petitions to revive applications or reinstate registrations that became abandoned or expired/cancelled as a result of the COVID-19 outbreak, with a statement that the delay in filing or payment was due to the COVID-19 outbreak."
Requirement for All Extensions
The USPTO has created a form that applicants should use when requesting any extension of time due to the COVID-19 outbreak. The form is available at this link.
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.