The Coronavirus Aid, Relief, and Economic Security (CARES) Act gives the director of the U.S. Patent and Trademark Office (USPTO) the ability to manage due dates in patent and trademark matters if certain criteria are met. On March 31, the director of the USPTO issued a notice of waiver of patent-related timing deadlines (patent notice) and a notice of waiver of trademark-related timing deadlines (trademark notice). The notices indicate that certain due dates in patent and trademarks matters having an original due date between March 27 and April 30 are extended by 30 days.
I. Patent matters
A. Patent application and reexamination proceedings
For the following patent matters having due dates between and including March 27 and April 30, the USPTO will grant a 30-day extension from the initial due date if the filing includes a statement that the delay in the filing or payment was due to the COVID-19 outbreak:
- Reply to any USPTO notice issued during preexamination processing by a small or micro entity.
- Reply to an office action or a USPTO notice issued during examination or patent publication processing.
- Payments of issue fee.
- Filing of a notice of appeal.
- Filing of an appeal brief.
- Filing of a reply brief.
- Payment of appeal forwarding fee.
- Filing a request for an oral hearing before the Patent Trial and Appeal Board (PTAB).
- Filing a response to a substitute examiner’s answer.
- Filing an amendment to reopen prosecution in response to, or a request for rehearing of, a PTAB decision designated as including a new ground of rejection.
- Payment of maintenance fee by a small or micro entity.
- Filing a request for rehearing of a PTAB decision.
The patent notice also reminds applicants and patent owners that in addition to granting these extensions, “the USPTO has previously waived the fee under 37 C.F.R. § 1.17(m) for petitions to revive applications under 37 C.F.R. § 1.137, when applicants were unable to timely reply to an office communication due to the COVID-19 outbreak.”
However, the patent notice does not indicate whether the waiver also applies to patent term adjustment. Thus, while the USPTO is waiving extension fees for these due dates, applicants need to be cognizant that delaying the filing of a response beyond the initial due date may generate delay, which could adversely impact any patent term adjustment. Therefore, it may be best practice to try to file any response or pay any fee by the original due date.
B. Additional relief for America Invents Act trials
The patent notice also extends certain due dates in inter partes reviews (IPRs), post-grant reviews (PGRs) and covered business method reviews (CBMs). As with ex parte proceedings mentioned above, the USPTO will extend due dates between and including March 27 and April 30 by 30 days upon request affirming that the delay is due to COVID-19 for the following:
- A request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d) or 42.71(d).
- A petition to the chief judge.
- A patent owner preliminary response or any related responsive filings.
If the USPTO extends the deadline for the filing of a patent owner preliminary response or any related responsive filings, the PTAB’s deadline for deciding whether to institute the IPR, PGR and CBM may also be extended. The patent notice also provides that for all other situations, an extension of time due to the COVID-19 outbreak may be requested by contacting the PTAB.
II. Trademark matters
A. Trademark applications, registrations and Trademark Trial and Appeals Board (TTAB) proceedings
In a separate trademark notice, the USPTO grants similar relief for trademark matters. Specifically, for the following trademark matters having due dates between and including March 27 and April 30, the USPTO will grant a 30-day extension from the initial due date if a statement that the delay in the filing or payment was due to COVID-19 is included:
- Filing a response to an office action, including a notice of appeal from a final refusal.
- Filing a statement of use or request for extension of time to file a statement of use.
- Filing a notice of opposition or request for extension of time to file a notice of opposition.
- Filing a priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i).
- Filing a priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c).
- Filing a 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).
- Filing an affidavit of use or excusable nonuse.
- Filing a renewal application.
B. Catchall provision for TTAB matters
The trademark notice also provides a catchall provision that allows for extension of time for matters in front of the TTAB not specifically identified:
For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate, can be made.
In addition, the trademark notice reminds trademark applicants and owners that there is already a fee waiver in place for petitions to revive an abandoned application or to reinstate a canceled/expired registration due to COVID-19.