Ice Miller LLP: Insights

UPDATE: The USPTO Revises Its CARES Act Extension of Patent and Trademark Related Timing Deadlines

Overview

A new notice from the United States Patent and Trademark Office (USPTO) signed on April 28, 2020, allows persons who are unable to meet certain patent- and trademark-related deadlines due to the COVID-19 outbreak to be eligible for a further extension of time beyond what the USPTO provided in its March 31, 2020 Notices. While the USPTO’s original notices applied to certain deadlines originally falling between March 27 and April 30, the new notices widen this window by one month to include filings due on or before May 31. Additionally, in contrast to the 30-day extension the original notices offered, the new notices extend the date for all applicable filings to June 1, 2020, regardless of when they were originally due. As with its original notices, the USPTO authorized these extensions pursuant to authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which provides that the USPTO may toll, waive, adjust, or modify any timing deadlines during the CARES Act emergency period. The USPTO previously waived the fee for petitions to revive trademark applications when applicants were unable to timely reply to a USPTO communication due to the COVID-19 outbreak.

Filings Available for Extension

The new patent notice added to the list of extendable deadlines the deadline for filing petitions to the Chief Judge related to matters pending before the PTAB. Otherwise, the patent deadlines amenable to extension are the same as before. The trademark deadlines did not change between the original notice and the updated notice. Below are the lists of filings to which the extensions apply.

For patent filings, the ability to seek the June 1 extension applies to deadlines for submitting the following documents and fees:

reply to a USPTO notice issued to a small or micro entity during pre-examination processing;
reply to a USPTO notice or action issued during examination or patent publication processing;
payment of a patent issue fee;
notice of appeal;
appeal brief;
reply brief;
payment of the appeal forwarding fee;
request for an oral hearing before the Patent Trial and Appeal Board (PTAB);
response to a substitute examiner's answer;
amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection;
payment of a maintenance fee, filed by a small or micro entity;
request for rehearing of a PTAB decision; and
petition to the Chief Judge on matters pending before the PTAB.

For trademark filings, the ability to seek the extension to June 1 applies to deadlines for submitting the following items:

response to an Office action, including a notice of appeal from a final refusal;
statement of use or request for extension of time to file a statement of use;
notice of opposition or request for extension of time to file a notice of opposition;
priority filing basis;
transformation of an extension of protection to the United States into a U.S. application;
Section 8 affidavits of use or excusable nonuse; and
Section 9 renewal applications.

As noted above, the extension is only available if the above filing was originally due between March 27 and May 31. The USPTO remains open for filings as usual, most of which are handled electronically. As a result, the extension to June 1 is available only if the filing party submits a statement to the USPTO sufficiently demonstrating that the delay in filing or payment was because the filer or some “other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, 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.” This is the same standard the USPTO set forth in its original notices from March 31.

Practice Tips

The June 1 deadline for all extended filings creates an interesting result and one that may be overlooked. For example, if a filing was originally due on April 28, when the USPTO released its Updated Notices, the filing is eligible for a 34-day extension. However, if a filing was originally due on May 31, the filing is only eligible for a 1-day extension. The extension appears essentially to be automatic for the deadlines outlined above so long as the delayed filing is accompanied by a suitable statement that COVID-19 necessitated the extension. The new notices offer no additional guidance as to how much scrutiny the USPTO will apply to a filer’s statement that COVID-19 actually necessitated the extension, so this issue remains unclear. Accordingly, Ice Miller continues to recommend that filers detail, with verifiable specificity, how COVID-19 negatively impacted their ability to file or pay on time. It remains possible the USPTO will reject a vague or unsupported statement to this effect and deny the extension, resulting in a missed deadline.

Similarly, false, or merely unsupportable, statements to the USPTO on this issue could still become a basis for a later finding of fraud or inequitable conduct before the USPTO, which could impair the enforceability of a patent or trademark registration that issued after the applicant improperly took the extension. Filers should retain detailed records and other evidence of how COVID-19 impacted their ability to meet the original deadlines in case they later need to substantiate their statements to the USPTO.

Finally, patent filers and practitioners should bear in mind that the USPTO’s new patent notice does not extend certain deadlines, including:

The filing of maintenance fees for large entities;
The one-year grace period for filing an application after the inventor’s own disclosure of the claimed invention;
The one-year priority deadline for filing an non-provisional utility patent application claiming priority to a provisional application;
The 30-month deadline for filing a national phase patent application arising from an international application filed under the Patent Cooperation Treaty; and
All trial proceeding deadlines before the PTAB other than the patent owner’s preliminary response and related filings.

The new Notices continues to provide a “catch-all” provision where a party can request a COVID-19 extension of a PTAB or Trademark Trial and Appeal Board deadline that the respective notices do not address. Like the original notices, however, the new notices do not provide a special or automatic mechanism to seek a COVID-19 extension of USPTO deadlines not identified in the notices.

Ice Miller IP attorneys are ready to assist with questions you may have regarding the CARES Act waiver for patent and trademark timing deadlines related to COVID-19, including with respect to filing patent-related and trademark-related documents or fees. See our COVID-19 Resource Center here.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.