Insights: Alerts U.S. Patent and Trademark Office Again Extends Certain Deadlines to September 29, But Still Only For Some.

Please note: The below information may require updating, including additional clarification, as the COVID-19 pandemic continues to develop. Please monitor our main COVID-19 Task Force page and/or your email for updates.

Section 12004 of the CARES Act allows the director of the United States Patent & Trademark Office (USPTO) (under certain conditions) to provide temporary relief from certain USPTO filing deadlines and fees. See CARES Act | U.S. Patent and Trademark Office - Additional Extensions Available

The USPTO previously determined that the CARES Act conditions were met, and published Notices1 on May 27, 2020, extending some of the previous deadlines and fee waivers. Perhaps because certain areas and sectors of the economy are starting to open up, the extensions allowed under the new Notice are (again) significantly less generous than those announced previously. The USPTO’s June 29, 2020, Notice is available here.

Patent filings, but only those by small and micro entities, that previously would have been due by (the previously extended date of ) July 1, 2020, will now be considered timely if filed by September 30, 2020. For large entities, no deadlines extend past May 31, although these filers can still petition for an extension of time or to revive, accompanied by any required fee, on a case-by-case basis.

The USPTO will continue to waive fees for petitions to revive applications (and reexamination proceedings) that became abandoned (or terminated or limited) on or before July 31, as long as such petitions are accompanied by a statement that the delay in filing or payment was due to the COVID-19 pandemic. As before, such statements should be utilized judiciously.

The USPTO was again careful to remind all applicants and patentees that extensions (and fees) provided for under the normal rules continue to be in effect, and that it would continue evaluating the evolving situation around the COVID-19 pandemic as well as the impact on the USPTO's operations and stakeholders.

These last statements were also included in the USPTO's May 27, 2020, update regarding trademark deadlines, but this update provides no other comfort to trademark practitioners; all previously granted deadline relief will expire on May 31, 2020.

Footnotes

1The patent-related Notice is available here. The trademark Notice is available here.

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