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Apr 2020
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April 29, 2020

USPTO Again Extends Certain Filing Deadlines

The United States Patent and Trademark Office (USPTO) announced yesterday that it was once again extending certain filing deadlines for trademark and patent matters following implementation of the Coronavirus Aid, Relief and Economic Security Act (CARES Act). The first USPTO filing extensions are discussed in our previous eAlert titled The CARES Act Cares for IP Owners Too.

Here are the updated extensions:

Regarding trademarks, the USPTO will consider most prosecution filings, due between March 27 and May 31, 2020, to be timely if filed before June 1, 2020. The filing must include a statement explaining the deadline was missed because of personal impact by the COVID‑19 outbreak, such as personal or family illness, office closures, cash flow interruptions and travel delays, among others. The extension applies to some Trademark Trial and Appeal Board (TTAB) deadlines as well, including notices of appeal, oppositions and requests for extensions of time to file oppositions. Other TTAB situations should be addressed by request or motion. Petition fee relief is also available for certain applications or registrations that are abandoned, cancelled or expired on or before May 31, 2020, if the petition includes a proper COVID‑19 statement.

Concerning patents, most prosecution deadlines falling in that same period of time will be considered timely if filed on or before June 1, 2020, with the filing of a proper COVID‑19 statement. Extensions for pre-examination processing and maintenance fees will remain restricted to small or micro entities. Also included in the extension are requests for rehearing of a Patent Trial and Appeal Board (PTAB) decision, a petition to the chief judge, a patent owner’s preliminary response and any related PTAB responsive filings. Requests for extension of time for other PTAB situations can also be made following certain protocol. Petition fee relief is available for certain applications or patents that are abandoned, cancelled or expired on or before May 31, 2020, if the petition includes a proper COVID‑19 statement. Notably, the CARES Act extensions do NOT cover: original patent filing deadlines; PCT or national stage filing deadlines; deadlines for filing a non-provisional application following a provisional application; or the deadline for filing an inter partes review petition.

Beyond the USPTO, intellectual property offices around the world have closed, extended deadlines or taken other measures due to the COVID‑19 pandemic. If you have a question about a deadline in a particular jurisdiction, please contact Mary Bonnema, Chad Kleinheksel or your Warner intellectual property attorney.

In the meantime, whether the USPTO extends deadlines falling after May 31, 2020, remains to be seen. Our Technology and Intellectual Property Practice Group at Warner will keep you informed of any changes.

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