Pursuant to section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the United States Patent and Trademark Office (USPTO) has issued a Notice extending the time to file trademark or patent-related documents in certain circumstances.
Any of the filings listed below that are due between, and inclusive of, March 27, 2020 and April 30, 2020, will be extended 30 days, provided the filing is accompanied by a statement that the delay was due to the COVID-19 outbreak. Pursuant to the Notice, a delay is due to the COVID-19 outbreak “if 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.”
- 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. §§ 2.101(c) and § 2.102(a);
- priority filing basis under 15 U.S.C. § 1126(d)(1) 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. § 1141j(c) and 37 C.F.R. § 7.31(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. § 1141k(a) and 37 C.F.R. § 7.36(b).
For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Trademark Trial and Appeal Board, a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time can be made.
- reply to an Office notice issued during pre-examination processing) 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) under 37 C.F.R. § 41.47;
- response to a substitute examiner’s 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 PTAB decision under 37 C.F.R. § 41.52;
- a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d);
- a petition to the Chief Judge under 37 C.F.R. § 41.3; or
- a patent owner preliminary response in a trial proceeding under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive filings.
In the event that the USPTO extends a deadline for a patent owner preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).
For all other PTAB matters, a filing can be made by contacting the PTAB at 571-272-9797 or by email at Trials@uspto.gov
(for AIA trials), PTAB_Appeals_Suggestions@uspto.gov
(for PTAB appeals) or InterferenceTrialSection@uspto.gov