Dear Colleagues,
The United States and Patent Office (“USPTO”) has issued three directives to provide temporary relief to its customers, the most important ones of which just issued late yesterday afternoon, March 31st.
Significantly, short term steps have been taken by the USPTO to help you reduce your out of pocket expenditures while not compromising the ability to protect your creativity. More information on USPTO Notices may be found at www.uspto.gov/coronavirus.
March 16, 2020 Directive
This directive relates to patent applications and trademark applications and registrations that have become abandoned, cancelled or expired because of COVID-19. If a patent application becomes abandoned, then the Petition to Revive Fee is waived if there is a representation that the delay was due to the effects of COVID-19, and “because the practitioner, applicant, or at least one inventor, was personally affected by the outbreak such that they were unable to file a timely reply.” For a trademark, the justifications for the failure to respond are more generalized stating that, the petition fee to revive an application or reinstate a registration is waived, if the failure to respond is “a result of the effects of the Coronavirus outbreak.” The directive sets forth statutory bar dates that are not waived or extended. Many are not.
March 31, 2020 Patent Directive
For patent matters with responses due between March 27 and April 30, no-fee extensions are available for a list of 12 items. For any of those items a 30-day extension is available by making the appropriate representation. The important part of this directive is that the conditions for granting the extension are much broader than those in the directive of March 16th. A delay due to COVID-19 is defined as “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.” There is also relief for filings due in this timeframe that are before the Patent Trial and Appeal Board (“PTAB”). We warn, however, that this directive does not include relief from statutory bar dates.
March 31, 2020 Trademark Directive
Relief is available for certain deadlines. Specifically, if a deadline falls between March 27 and April 30, the deadline may be extended by 30 days from the initial due date, if the late filing is accompanied by a statement that the delay in filing/payment was due to the COVID-19 outbreak. The same conditions apply to trademark matters as for patent matters. The relief includes deadlines to file a notice of opposition and request an extension of time to file a notice of opposition but does not apply to other filings before the Trademark Trial and Appeal Board (“TTAB”). If an extension is required for TTAB matters, other than the aforementioned, a request or motion should be filed with the Board requesting an extension or reopening of time.
Regards,
Fishman Stewart PLLC
