USPTO Now Extends Certain Patent and Trademark Deadlines, but Qualified Applicants Should Use Caution Before Relying on Extended Deadlines

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USPTO Now Extends Certain Patent and Trademark Deadlines, but Qualified Applicants Should Use Caution Before Relying on Extended Deadlines

US Patent and Trademark Office (USPTO) has joined a number of national IP offices across the world that have extended deadlines for certain patent and trademark filings due to the global pandemic. On March 31, the USPTO announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27. See the patent-related Notice and trademark-related Notice.

As I was finalizing this posting, the USPTO just released answers to frequently asked questions on the CARES Act relief.

The good news is the USPTO is functioning. USPTO examiners return your calls (voice messages). Your filings are being processed. The USPTO’s Trademark Trial and Appeal Board (TTAB) rules on motions.

It is encouraging that IP offices worldwide are supportive of businesses, inventors and brand owners. Earlier in March, the European Patent Office (EPO) has issued a general deadline extension to April 17 that applies to all EPO-specific deadlines expiring on or after March 15. The extension covers all deadlines of European patent applications pending before the EPO, including office action deadlines. The deadline could be extended further if “the dislocation extends beyond” April 17, the EPO said.

Unlike EPO’s extensions, USPTO’s extensions seemingly are not automatic. There is a specific list of instances (actions) when patent and trademark applicants may qualify for an extension and apply for it. In particular, the trademark-related deadlines that may be extended include deadlines for Office Action responses, statements of use and affidavits of use, renewal applications and notices of opposition.

You do not get an extension beforehand, at least in the context of a trademark prosecution or renewal of trademark registration. For example, the due date (that was due between March 27, 2020 and April 30, 2020) for a response to an Office action in a trademark application, including a notice of appeal from a final refusal may be extended by 30 days from the initial date it was due. If a trademark applicant has missed the deadline (and only after the fact), the applicant can submit its filing. The late filing must be accompanied by a statement that the applicant (or applicant’s attorney) or other person associated with the filing or fee was “personally affected” by the COVID-19 outbreak. This means that “the outbreak materially interfered with timely filing or payment.” However, the wording “other person associated with the filing or fee” is important as a catch-all and may come in handy.

Nevertheless, it is conceivable that someone who simply chooses to delay may not be able to claim that the outbreak “materially interfered” with the timely filing or payment. I personally have not been able to test the system under the CARES Act for any of my clients yet and therefore cannot say how easy (or difficult) it will be to obtain such relief; whether there is a risk that the USPTO might deny the filing or require further proof. The FAQs make it look like the USPTO would take your word for it, and getting a relief should not be a problem.

The USPTO’s FAQs may answer some of your questions. Here is an example.

Question 1: How do I take advantage of the 30-day extension of time for certain Trademark- and TTAB-related deadlines?

If an eligible document or fee was or is due between (and inclusive of) March 27, 2020, and April 30, 2020, the filing will be considered timely if made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

It used to be when you missed a deadline, a certain electronic form (in a system that is called TEAS for trademark applications or ESTTA for TTAB filings) becomes disabled. It appears the USPTO is making these forms active and you can use them and make a required statement and submit your late filing.

Notably, the trademark-related Notice states that “TTAB situations are not covered” by the Notice’s extensions. For all “other situations” where the COVID-19 outbreak has prevented or interfered with a filing before the Board, “a motion for an extension or reopening of time, as appropriate, can be made.” For example, it is unclear if a party in an opposition or cancellation proceeding before the TTAB can request an extension of time to file a reply brief in support of a motion. Generally the Board does not allow extensions of time to file reply briefs. In any event, for TTAB filings it would be prudent to seek an extension of a deadline (which can be missed because of the COVID-19 outbreak) beforehand.

Thus, patent and trademark applicants, owners and their representatives should carefully consider whether they qualify for the extended deadlines before relying on them, especially in a TTAB proceeding.

Text © 2020 Maxim A. Voltchenko
* This piece is not intended to be a review of U.S. law. This posting may not necessarily represent the views of the author’s employing law firm. Although every effort has been made to verify the accuracy of items in the Sputnik Blog®, readers are urged to check independently on matters of specific concern or interest.