What’s the Update on the Commissioner of the PTO Issuing a Notice of Relief?

On March 31st, the Commissioner of the PTO issued a Notice of Relief for deadlines – this is new information as prior to this, the Commissioner had not yet issued guidance on extending due dates for trademark and patent matters.

 

What Do I Need to Know for Trademarks?

Prior to today, any of the actions below were due between, and inclusive of, both March 27, 2020 and April 30, 2020, the deadlines would be extended 30 days from the initial due date. Now, as of April 28, the Director of the PTO extended that time period to and inclusive of March 27, 2020 and June 1, 2020. 

This is provided that the filing is accompanied by a statement that the delay in filing or payment was due to a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak. This may include, without limitation, 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.

Actions:

1. Response to an Office action, including a notice of appeal from a final refusal;
2. Statement of use or request for extension of time to file a statement of use;
3. Notice of opposition or request for extension of time to file a notice of opposition;
4. Foreign priority filing basis;
5. Madrid application priority filing basis;
6. Transformation of an extension of protection to the United States into a U.S. application (Madrid application);
7. Affidavit of use or excusable nonuse; or
8. Renewal application or affidavit of use or excusable nonuse. 

 

What About Situations Not Covered by the Above?

For situations not covered by the above, and where the COVID-19 outbreak prevented or interfered with a filing before the Trademark Trial and Board (TTAB), parties may make a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate.

 

What Do I Need to Know for Patents?

The same dates and guidelines as above apply here, for the actions below.

Actions:

1. Reply to an Office notice issued during pre-examination processing by a small or micro entity;
2. Reply to an Office notice or action issued during examination or patent publication processing;
3. Issue fee;
4. Notice of appeal;
5. Appeal brief;
6. Reply brief (in an appeal);
7. Appeal forwarding fee;
8. Request for an oral hearing before the Patent Trial and Appeal Board (PTAB);
9. Response to a substitute examiner's answer (in ex parte appeals);
10. Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection;
11. Maintenance fee, filed by a small or micro entity; or
12. Request for rehearing of a PTAB decision.

 

Is The USPTO Open?

The USPTO is open for the filing of trademark, TTAB, patent and PTAB documents and fees through the PTO’s electronic filing and payment systems. As the PTO remains open for the filing of trademark and patent documents and fees, the above waiver is available only if the delay was due to the COVID-19 outbreak as defined above. The USPTO will continue to evaluate the evolving situation around COVID-19 and the impact on the USPTO's operations and stakeholders.

 

What About Non-US Patent and Trademark Offices?

Many countries have adopted similar regulations in their patent and trademark offices. In some, their patent and trademark offices are closed and will not accept certain filings until they reopen. Others are automatically extending deadlines. We are working closely with our foreign associates to monitor all deadlines. Whenever possible, we are filing documents electronically.

 

For more resources and LP's response to COVID-19, visit this webpage.