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Patent & Trademark Office Deadlines

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The United States Patent and Trademark Office has provided a cost-free way to extend some deadlines that could not be met due to the pandemic. Some responses may be extended to June 1, 2020 if the delay was due to COVID-19 related circumstances. If you need help, schedule an online video meeting with Chris Paradies, a U.S. Registered Patent Attorney in Tampa, Florida, using this link: https://iPscaling.as.me/paradies.

Certain deadlines from March 27th to May 31st may be eligible for extension to June 1, 2020.

PATENT DEADLINE EXTENSIONS

The following responses in patent matters are included (without limitation):

  • reply to an Office notice issued during pre-examination processing1 by a small or micro entity;
  • reply to an Office notice or action issued during examination or patent publication processing;
  • issue fee;
  • notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  • appeal brief under 37 C.F.R. § 41.37;
  • reply brief under 37 C.F.R. § 41.41;
  • appeal forwarding fee under 37 C.F.R. § 41.45;
  • request for an oral hearing before the Patent Trial and Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
  • response to a substitute examiner answer under 37 C.F.R. § 41.50(a)(2);
  • amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
  • maintenance fee, filed by a small or micro entity;
  • request for rehearing of a PT AB decision under 3 7 C.F .R. § 41.52;
  • request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
  • petition to the Chief Judge under 37 C.F.R. § 41.3.

The patent office as provided additional instructions and may consider other extensions than those specifically listed. The patent office will waive the petition fee in 37 C.F.R. § 1.l 7(m) when the patent applicant or patent owner files the delayed response or fee with a petition under 37 C.F.R.
§ l.137(a) and the statement: “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.” See 35 U.S.C. § 41(a)(7).

The inclusion of this statement is treated as a request for sua sponte waiver of the petition fee under 37 C.F.R. § 1.17(m). This petition to revive may be submitted via the USPTO patent electronic filing systems (EFS-Web or Patent Center) using document code PET.RELIEF or by mail directed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

Notice that the list of reasons in the statement is not all inclusive. If the outbreak materially interfered with timely filing, for any reason, then an extension of time may be requested using a no fee petition.

TRADEMARK DEADLINE EXTENSIONS

The trademark office has provided instructions about the forms to use, types of matters eligible, and the language of the statement. The following responses for trademarks are included:

  • response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
  • statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
  • notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.l0l(c) and §2.102(a);
  • priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i);
  • priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
  • transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 114lj(c) and 37 C.F.R. § 7.3 l(a);
  • affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
  • renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
  • affidavit of use or excusable nonuse under 15 U.S.C. § l 141k(a) and 37 C.F.R. § 7.36(b).

For abandoned applications, the Trademark Electronic Application System (TEAS) “Petition to Revive Abandoned Application” form should be used. For canceled/expired registrations, trademark owners should use the TEAS “Petition to the Director” form.

In all trademark cases, the petition must include a statement: “The delay in filing or payment was due to a practitioner, applicant, registrant, 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 inclusion of this statement is treated as a request for a waiver of the petition fee under 37 C.F.R. § 2.6(a)(l5).

The petition for trademarks must be filed not later than two months after the issue date of the notice of abandonment or cancellation. 37 C.F.R. §§2.66(a)(l), 2.146( d)(l). If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired. 37
C.F.R. §§ 2.66(a)(2), 2.146(d)(2).


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About the author 

Chris Paradies

Florida Bar certified intellectual property and U.S. patent attorney, founder of Paradies® law, chair of the board of directors for the Tampa Bay Innovation Center and certified coStarters facilitator. West Point graduate, entrepreneur, disruptor. Father, husband, faithful steward.

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