Intellectual Property Insights from Fishman Stewart
SPECIAL EDITION: USPTO CARES Act Relief Update

USPTO CARES Act Relief Update

By Linda Monge Callaghan

As many states and many countries worldwide extend their stay-at-home orders in some form due to the COVID-19 pandemic, the U.S. Patent and Trademark Office (USPTO), under its authority granted by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) is following suit. On April 28, 2020, the USPTO extended the periods for certain patent and trademark deadlines and fees from April 30, 2020 to June 1, 2020.

The USPTO is hopeful these measures will continue to foster ingenuity and entrepreneurship during the pandemic. The new notices (one specific to patents and the other to trademarks) supersede and further clarify the previous USPTO directive dated March 16, 2020 and its two directives dated March 31, 2020.

In the new notices, the USPTO extends the time for certain patent and trademark deadlines and fees falling on March 27 through and inclusive of May 31, 2020, provided the late filing is filed on or before June 1, 2020 and is accompanied by a statement advising the delay is due to COVID-19. As stated in the prior directives, acceptable reasons for the delay are broadly stated to include “if a practitioner, applicant, registrant or other person associated with the filing/fee was personally affected by the COVID-19 outbreak, including 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.” The latest patent notice also provides Patent Trial and Appeal Board (PTAB) relief of a 30-day extension for certain filings due between March 27, 2020 and April 30, 2020, inclusive. Details regarding the specific deadlines affected are set forth in the notices.

Further, consistent with prior notices, the USPTO maintains the waiver of the fee to revive patent and trademark applications and reinstate cancelled or expired trademark registrations as a result of failing to respond to deadlines due to COVID-19 but limits them to those abandoned, cancelled or expired on or before May 31, 2020 so long as the petition is accompanied by a statement advising the delay is due to COVID-19. The notices go on to harmonize the acceptable reasons for the delay to those listed above. Details regarding the requirements and procedures for filing the petitions are set forth in the notices.

The notices may be found at www.uspto.gov/coronavirus.

If you believe you or your organization falls under any of the above relief provisions and you need assistance complying with the USPTO’s guidelines, please contact us at ipinsights@fishstewip.com or at +1-248-594-0600.

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