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U.S. Patent and Trademark Office Increases Extensions to Deadlines under the CARES Act



As a further update to earlier posts regarding recent actions taken by the United States Patent and Trademark Office (USPTO) due to the COVID-19 pandemic, the USPTO announced this week an increased extension of time for the filing of various patent and trademark-related documents and payment of certain fees. USPTO Director Andrei Iancu signed into effect separate patent-specific and trademark-specific Extended Waiver of Timing Deadline Notices that supersede the previously-issued notices.

For specified documents that are due between, and inclusive of, March 27, 2020 and May 31, 2020, the due date for such documents is now June 1, 2020.  The documents must still be accompanied by a formal Statement that the delay is due to the COVID-19 outbreak.  The USPTO has conveniently generated a Form SB 449 that may be used to satisfy this requirement.  The standard for the Statement has not changed in that the delay is still deemed due to the COVID-19 outbreak “if a practitioner, applicant, patent owner, petitioner, third-party requestor, 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.”

There are no significant changes to the specified patent-related documents and fees, which still include responses to Office Actions, Appeal Briefs and Reply Briefs, certain actions before the Patent Trial and Appeal Board (PTAB), and payment of issue fees and maintenance fees.  The new list includes two items that were not specifically identified in the previous notice, including petitions to the Chief Judge.  The items that were previously excluded from this extension remain excluded, such as original patent applications, PCT and national stage applications, non-provisional applications claiming the benefit of provisional applications, and petitions for inter partes review.  With regard to the specified trademark-related documents and fees, there do not appear to be any changes.

We are living in uncertain times right now but the patent and trademark attorneys at Miller Nash Graham & Dunn are here to help you understand and properly utilize all of the resources available to you.

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