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May 2020
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May 28, 2020

USPTO Issues Third Extension for Certain Filing Deadlines

As we advised in our previous eAlerts titled, “The CARES Act Cares for IP Owners Too,” and “USPTO Again Extends Certain Filing Deadlines,” the U.S. Patent & Trademark Office (USPTO) twice extended certain patent and trademark filing deadlines pursuant to the Coronavirus Aid, Relief and Economic Security Act (CARES Act). Noting that the previously granted relief expires May 31, 2020, the USPTO issued a third order on May 27, 2020, providing relief to filers as described below.

Acknowledging that deadlines may pose a particular hardship to small businesses and individuals, the USPTO grants the following relief: 

Trademarks 
 
  • Applicants who could not file a timely response to a trademark office communication should file a Petition to Revive the application.
  • Applicants who missed the 36-month statutory deadline for filing a Statement of Use that resulted in abandonment should file a Petition to the Director.
  • Registrants who missed a statutory deadline that resulted in an expired or cancelled registration, or who could not timely submit a response to a trademark office communication, should file a Petition to the Director.
  • The USPTO will continue to waive petition fees through June 30, 2020, for reviving applications or reinstating registrations if the petition includes a statement that a delay in filing or payment was due to COVID‑19.
  • For Trademark Trial and Appeal Board (TTAB) proceedings, parties can file a request or motion for an extension if COVID‑19 interfered with a filing.

Patents 
 
  • Deadlines for small and micro entities that were previously extended until June 1, 2020, under the CARES Act Notice dated April 28, 2020, will now be extended until July 1, 2020. 
  • For large entities, after May 31, 2020, relief will be available to those that need it on a case-by-case basis through a Petition for Extension of Time or a Petition to Revive. 
  • The USPTO will also extend its waiver of the petition fee for filing a Petition to Revive of application that became abandoned on or before June 30, 2020, if accompanied by a 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; or the deadline for filing an inter partes review petition.

Intellectual property offices around the world continue to extend deadlines or take measures to deal with the COVID‑19 pandemic. If you have a question about a particular jurisdiction, please contact Chad Kleinheksel, Mary Bonnema or your Warner intellectual property attorney. In the meantime, our Technology and Intellectual Property Practice Group at Warner will keep you informed of any changes.

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