USPTO Provides Limited Patent And Trademark Deadline Extensions Under The CARES Act-UPDATED

Fox Rothschild LLP

Fox Rothschild LLP

The newly enacted 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.

Extensions Available Through July 1

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.

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.

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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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