COVID-19 has disrupted businesses and has wrought havoc with timelines and deadlines. Likely, it will continue to do so. Many government agencies, such as the IRS as we reported here, are reacting to COVID-19 by extending deadlines. For those with intellectual property-related deadlines in the near term, the United States Patent and Trademark Office (“USPTO”) has recently made some policy changes in response to COVID-19.

Remote Appearances

While work goes on inside the USPTO, the building is closed to the public and any in-person business.  All previously scheduled meetings or hearings before the Trademark Trial and Appeal Board (“TTAB”) or Patent Trial and Appeal Board (“PTAB”) are to take place by video or teleconference.

Deadlines

With regard to deadlines to respond to USPTO actions, inquiries or other deadlines, those are set by statute and rule and the failure to timely respond to a deadline results in an abandonment of the underlying trademark or patent application or registration.

The only way to resurrect an abandoned application or registration is by filing a special petition to revive and paying a fee. Because these deadlines are set by statute and rule, the USPTO cannot simply grant a blanket waiver or extension like the IRS did extending the tax deadline.

Waiver of Filing Fees for Petitions to Revive

However, if a patent or trademark owner misses a deadline because of issues related to the COVID-19 outbreak, the USPTO will waive filing fees for petitions to revive. Implicit in this waiver is that if any such petitions will likely be granted. Although the fee is waived, any petition to revive must still be filed within 60 days after the USPTO sends Notice of Abandonment of the underlying patent or trademark filing at issue.

Additionally, in most instances, the revival of an application or registration will not extend the deadline to file what has previously been missed. Therefore, along with the petition to revive, a trademark or patent holder must also file a response addressing the initial issues.

USPTO Deadlines NOT Impacted by COVID-19

While this policy shift will help many impacted by COVID-19, there are many other statutorily imposed patent and trademark deadlines that cannot be extended and failures to meet such deadlines cannot be rectified by petition.

  • On the trademark side: deadlines to file opposition or cancellation proceedings cannot be extended except by existing rules; and, deadlines to submit statements of use and extensions of time to show use or registration maintenance documents cannot be extended.
  • On the patent side: the one-year deadline to file a utility application based on a provisional patent application and deadlines related to payment of various fees is non-extendable; and, deadlines related to continuation or divisional applications and reexamination proceedings are unaffected.

Take-Away

While no one can predict how COVID-19 will impact them or their business with any certainty, the USPTO waiver of the petition to revive fee will certainly help those who are impacted. Still, the best strategy is to respond to any USPTO actions or deadlines within the original window for same. If your organization has USPTO deadlines to contend with, contact us and we can help ensure responses are timely filed. I may be reached at mark.nieds@henlaw.com or by phone at 239-344-1153.

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