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April 7, 2020

Stroock Special Bulletin

By: Ian G. DiBernardo, Laura Goldbard George, Jeffrey M. Mann

On March 31, 2020, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”) (the “Notice”).  Pursuant to the Notice, the USPTO exercised the rights granted to it under section 12004 of the CARES Act to extend the time to file certain patent and trademark-related documents or pay fees that otherwise would have been due on or after March 27, 2020. Prior to the passing of the CARES Act, the USPTO was not permitted to extend or toll time limits and therefore was constrained in trying to provide relief for applicants that were affected by the COVID-19 pandemic. The CARES Act granted the USPTO additional latitude to extend time limits, which it exercised in the Notice last week.

Pursuant to the Notice, certain Patent and Trademark deadlines were tolled. For Patents, the due date for any of the following deadlines that fall between, and are inclusive of, March 27, 2020, and April 30, 2020, was extended 30 days from the initial date it was due:

  • reply to an Office notice issued during pre-examination processing by a small or micro entity;
  • reply to an Office notice or action issued during examination or patent publication processing;
  • issue fee;
  • notice of appeal under 35 U.S.C. 134 and 37 C.F.R. § 41.31;
  • appeal brief under 37 C.F.R. 41.37;
  • reply brief under 37 C.F.R. 41.41;
  • appeal forwarding fee under 37 C.F.R. 41.45;
  • request for an oral hearing before the Patent Trial and Appeal Board (“PTAB”) under 37 C.F.R. 41.47;
  • response to a substitute examiner’s answer under 37 C.F.R. 41.50(a)(2);
  • amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. 41.50(b);
  • maintenance fee, filed by a small or micro entity; and
  • request for rehearing of a PTAB decision under 37 C.F.R. § 41.52.

The Notice also provided relief for matters before the PTAB. Upon a request to the USPTO, the PTAB will provide a 30-day extension of time for: (1) a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d); (2) a petition to the Chief Judge under 37 C.F.R. § 41.3; or (3) a patent owner preliminary response in a trial proceeding under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive filings. If the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines for inter partes and post-grant reviews provided in 35 U.S.C. §§ 314(b) and 324(c), respectively.

For Trademarks, the due date for any of the following deadlines that fall between, and are inclusive of, March 27, 2020, and April 30, 2020, was extended 30 days from the initial date it was due:

  • response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
  • statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
  • notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.10l(c) and § 2.102(a);
  • priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i);
  • priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
  • transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
  • affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
  • renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; and
  • affidavit of use or excusable nonuse under 15 U.S.C. § l14lk(a) and 37 C.F.R.

The Notice also makes clear that for Trademark Trial and Appeal Board (“TTAB”) situations not addressed in the Notice, a request or motion for an extension or reopening of time can be made.

Importantly, for any late filing or payment made pursuant to the Notice, a statement must also be submitted stating that the delay was due to the COVID-19 outbreak. Pursuant to the Notice, a delay is considered to be due to the COVID-19 outbreak if a practitioner, applicant, owner, registrant, petitioner, third-party requester, inventor, “or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

Although the Notice does not address all potential patent or trademark deadlines, it does address the most common and most challenging deadlines that were impacted by the COVID-19 outbreak. While continuing to be open for the filing of documents electronically, the USPTO has demonstrated a willingness to work with applicants (within the confines of the CARES Act and other related statutes) that may be delayed in their filings. It is also important to note that the Notice only applies to U.S. filings, and as intellectual property rights are jurisdictional in nature, different procedures may be applicable in different countries.

If you have any questions about the Notice or other prosecution before the USPTO or other foreign Patent or Trademark Office, please contact one of the attorneys listed below.

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For More Information:

Ian G. DiBernardo

Laura Goldbard George

Jeffrey M. Mann

This Stroock publication offers general information and should not be taken or used as legal advice for specific situations, which depend on the evaluation of precise factual circumstances. Please note that Stroock does not undertake to update its publications after their publication date to reflect subsequent developments. This Stroock publication may contain attorney advertising. Prior results do not guarantee a similar outcome.