Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19

by Audrey A. Millemann
The IP Law Blog

On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended.  The CARES Act authorizes the PTO to toll, waive, or modify any patent or trademark deadline in effect during the COVID-19 emergency.  The announcements were made in written Notices of Waiver, one each for patents and trademarks, posted on the PTO’s website.

In order to exercise the power under the CARES Act, the PTO Director must determine that the COVID-19 pandemic materially affects the functioning of the PTO; prejudices the rights of patent applicants, trademark registrants, or patent/trademark owners; or prevents patent applicants, trademark registrants, or patent/trademark owners from making a filing or paying a fee in the PTO.

The President declared a national emergency on March 13, 2020.  The PTO Director has determined that the emergency has prejudiced the rights of applicants, registrants, and owners, and has prevented applicants,  registrants, and owners from making filings and paying fees in the PTO.  The Director has found that “the spread of the virus has significantly disrupted the operations of numerous businesses, law firms, and inventors.”  The Director specifically noted that small businesses and independent inventors are especially likely to face difficulties.

The Director has extended for 30 days certain patent deadlines that were due between March 27, 2020 and April 30, 2020.  The deadlines include the due dates for replying to a PTO notice or office action; paying a patent issue fee or maintenance fee; filing a trademark statement of use or affidavit of use; filing a notice of opposition; and filing a notice of appeal, appeal brief, or reply brief.

In order to obtain an extension under these provisions, the applicant/registrant/owner must file a statement that the delay was due to the COVID-19 pandemic.  The statement may properly be submitted if the applicant/registrant/owner, attorney, or other person associated with the filing was personally affected by the COVID-19 pandemic, such as because of office closure, inaccessibility of documents, cash flow problems, or illness.

Applicants/registrants/owners may also request that the PTO, PTAB, or TTAB grant extensions of other deadlines that are not covered in the Notices of Waiver.

At this time, the PTO’s offices are closed to the public, but are open for the filing of documents and payment of fees, and the examiners are continuing to work.  Filings and fee payments maybe made as usual, by the PTO’s electronic filing system, U.S. mail, fax, or hand delivery.   However, the Director has noted that these practices could change.

The U.S. Copyright Office has also similarly extended deadlines under the same authority.

It is possible that the PTO may further extend deadlines beyond May 30.  Any further extensions are expected to be announced on the PTO website.