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The Legal Brief

USPTO Revises Deadlines in Light of Pandemic

May 12, 2020

By: Joshua A. Claybourn

The U.S. Patent and Trademark Office (USPTO) temporarily revised statutory deadlines as authorized by the CARES Act, moving many deadlines to June 1, 2020, if the filing delay was due to COVID-19 related circumstances. The party requesting the extension must include a statement that:

A practitioner, applicant, patent owner, petitioner, 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 USPTO provides a form for submitting this statement. Specifically, the following trademark events may be moved when accompanied by the necessary COVID-19 statement:

  • Response to an Office action, including notice of appeal
  • Statement of use or extension of time to file statements of use
  • Notice of opposition or request for extension of time to file a notice of opposition
  • Priority filing basis for applications under Section 44(d) or Section 67
  • Transformation of an extension of protection to the U.S. into a U.S. application under Section 70(c)
  • Section 8 declarations
  • Section 9 renewals
  • Affidavit of use or excusable nonuse under Section 71(a)

 

The USPTO will also continue to waive certain fees if there is a need to petition to reinstate or revive a registration or application for which a deadline passed during this time period. The Trademark Trial and Appeal Board (TTAB) also has authority, upon request, to extend deadlines if COVID-19 prevented or interfered with a filing.

Despite these changes, the USPTO remains open for all activities except for live in-person meetings.

 

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