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U.S. Patent and Trademark Office Extends Deadlines in Response to COVID-19

Intellectual Property Alert Christine M. Hansen

Summary
The U.S. Congress provided new authority for the Director of the U.S. Patent and Trademark Office (USPTO) to make exceptions to deadlines, including statutory deadlines, in the wake of the COVID-19 pandemic. Under that authority, many patent and trademark deadlines to prosecution are eligible to be extended. However, applicants should carefully consider any potential negative implications or ramifications of utilizing a COVID-19-related extension.

For patent matters, the extension is available for replies to office actions, issue fee payments, and appeal items, such as notices of appeal, appeal briefs, reply briefs, and appeal forwarding fees, and more. For trademark matters, the extension is available for replies to office actions, ex parte appeals, statements of use, renewal applications, notices of opposition, and more. A detailed list of each action eligible for extension is found on the USPTO website.

Analysis
The two trillion dollar CARES Act authorizes the Director of the USPTO to extend deadlines during the COVID-19 emergency. Accordingly, on March 31, 2020, Director Iancu implemented the CARES ACT by providing a temporary extension of time for certain response and payment deadlines. Director Iancu stated that the Office is “working to provide as much relief as possible to our stakeholders, consistent with our ability to maintain the USPTO’s fee-funded operations.”

Certain patent and trademark deadlines falling within March 27 - April 30, 2020 (inclusive of the endpoints) will be extended thirty days from the initial due date if the response, when filed, is accompanied by a statement that the delay was due to the COVID-19 outbreak personally affecting someone associated with the filing or fee. If the 30-day extension of time ends on a Saturday, Sunday, or federal holiday, the period for taking action is further extended to the next succeeding business day.

The relief may be extended beyond April 30, 2020 if the COVID-19 situation and its impact on the USPTO’s operations and stakeholders warrant longer relief. The USPTO will provide timely notice if it extends the CARES Act relief.

Contrary to extensions in some other national and regional patent offices, the U.S. extension requires a statement attesting that COVID-19 “materially interfered” with a person’s filing of the delayed response or fee. In the European Patent Office, in contrast, no statement is required and deadlines on or after March 15 are extended through a due date of April 17, 2020. Similarly, the Canadian Intellectual Property Office extended deadlines expiring on March 16, 2020 through April 30, 2020 to now be due on May 1, 2020. Any deadlines after May 1, 2020 that require extension will be reviewed upon request. Like the European Patent Office, the Canadian Intellectual Property Office does not require a statement of personal COVID-19 impact. The Indian Intellectual Property Office has closed all its offices through at least April 14, 2020. All deadlines during the Indian shutdown are extended or are extendable with a petition until April 15, 2020.

Although we have not seen any official admission, it seems likely that the U.S. position requiring a statement of personal COVID-19 impact was chosen to avoid major disruptions in the flow of user fees that fund the USPTO. Relief is targeted at those who need it due to personal COVID-19 impact, and user fees continue to be collected at the usual pace from those not personally impacted.

Statement to Obtain U.S. Extension
What is an acceptable statement of COVID-19 impact to obtain a U.S. extension? Director Iancu’s notices of March 31, 2020 identify situations warranting an extension. A delay is “due to the COVID-19 outbreak” for the purposes of an extension if a practitioner, applicant, trademark registrant, patent owner, third party requester, inventor, or 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.

The statement of COVID-19 impact accompanies the response or fee when submitted. The USPTO prefers that the statement is in a separate paper from the response or otherwise made in a conspicuous manner. No guidance is provided regarding the details or content required for such a statement. Furthermore, the USPTO decides whether to grant the extension only after the delay has already occurred. Thus, applicants considering use of a COVID-19-related extension should carefully consider the absolute necessity of the extension and the ramification if the extension is not approved, whether by the USPTO in the near future or by a judge or jury in the distant future.

Tips for Practitioners

  • Carefully consider whether a COVID-19-related extension is necessary and warranted by the facts before relying on this extension. Because the eligibility standards for the COVID-19 extension have not yet been tested in the USPTO or in the courts, the limitations of this extension are not known. The cost of an appeal or a petition to revive a disallowed extension may exceed the savings from a delayed submission.
  • The USPTO's required statement of what "materially interfered" to cause the COVID-19-related delay accompanies the response or fee when submitted. Follow the guidelines outlined on the USPTO's website with COVID-19 information.
  • Extension deadlines may be further extended so monitoring of U.S. and foreign patent and trademark offices is recommended.

For current information on USPTO responses to COVID-19, please check the USPTO website, contact your local Quarles & Brady attorney, or:

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