There is seemingly no aspect of our lives untouched by the coronavirus outbreak and the United States Patent and Trademark Office (USPTO) is no exception. While the examination of trademark and patent applications seems to be proceeding relatively normally (for example I have made and received phone calls from patent examiners this past week to advance prosecution of patent applications and the electronic filing process is proceeding as normal), the USPTO has issued an official notice regarding relief for UPSTO customers affected by COVID-19. The USPTO considers the effects of coronavirus to be an "extraordinary situation" for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving petition fees in certain situations for customers impacted by the coronavirus.
For example, for patent applicants or patent owners who were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited, the USPTO will waive the petition fee to revive the abandoned application or terminated reexamination proceeding. For trademark applications and registrations that were abandoned or canceled/expired due to the inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak, the USPTO will waive the petition fee to revive the abandoned application or reinstate the canceled/expired registration. Please review the notice or consult your legal advisor for the specifics of petitioning to revive under this notice.
However, this notice does not grant waivers or extensions of dates or requirements set by statute. Note, the following patent-related time periods are not extendable by petition:
- the period set forth to file a nonprovisional patent application claiming the benefit of a prior-filed foreign application;
- the period during which a nonprovisional application claiming the benefit of a prior-filed provisional application must be filed in order to obtain benefit of the provisional application's filing date;
- the copendency requirement between a parent application which issues as a patent and a later filed child application, which requires that the child application be filed prior to issuance of the parent application;
- the three-month time period to pay the issue fee; and
- the two-month time period from the date of patentee service, for a requester to file, in an ex parte reexamination, a reply to a statement filed by the patentee.
The following statutory trademark-related time periods are not extended and statutory fees are not waived:
- the 36-month period within which a statement of use must be filed and the associated fee(s);
- the periods for filing affidavits of continued use or excusable nonuse and the associated fee(s);
- the period for filing a renewal and the associated fee(s); and
- the periods for filing an opposition or cancellation proceeding at the Trademark Trial and Appeal Board.
We at Miller Nash Graham & Dunn are available and happy to work with you during this trying time to meet all USPTO patent and trademark-related deadlines.