United States Patent And Trademark Office Announces Continuing Relief Measures In Light of Expiration of Most Extensions on May 31, 2020

Last updated May 28, 2020

On May 27, 2020, the United States Patent and Trademark Office (“USPTO”) announced certain revised and extended relief measures for those impacted by the COVID-19 pandemic. As set forth in our prior alert, under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), the USPTO had extended certain trademark and patent filing deadlines. That relief is set to expire on May 31, 2020.

Recognizing that many trademark and patent stakeholders, particularly small businesses and individuals, may require continued assistance given the significant hardships imposed by the pandemic, after May 31, 2020, the USPTO will begin to direct relief as described below.

Trademark Relief Measures:

  • Applicants who were unable to submit a timely response or fee in response to an Office action – resulting in abandonment of a trademark application – should file a petition to revive.
  • Applicants who missed the 36-month statutory deadline for filing a Statement of Use – resulting in abandonment of a trademark application – should file a petition to the Director.
  • Registrants who missed a maintenance filing deadline or who were unable to timely respond to a post-registration Office action – resulting in cancellation or expiration of a trademark registration – should file a petition to the Director.
  • The USPTO will continue to waive the petition fees for the above, so long as such petitions are accompanied by a statement that the delay was due to the COVID-19 outbreak. This relief will continue until June 30, 2020.
  • For proceedings before the Trademark Trial & Appeal Board, if the pandemic has prevented or interfered with a filing, the parties can make a request or file a motion for an extension or reopening of time.

Patent Relief Measures:

  • For small and micro entities only, filings that would have been deemed timely if filed by June 1, 2020 will now be deemed timely if filed by July 1, 2020.
  • After May 31, 2020, large entities should seek relief on a case-by-case basis, through the filing of a petition for an extension or time or a petition to revive – accompanied by the required fee.
  • For all entities, the USPTO will continue to waive fees for filing a petition to revive an application that became abandoned or a reexamination proceeding that became terminated or limited on or before June 30, 2020, if accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

For more information or for further updates regarding your patent and trademark rights, please contact your CSG attorney.

Information pertaining to the USPTO’s response to the COVID-19 outbreak can be found here.

For additional information pertaining to the coronavirus outbreak, please visit CSG’s COVID-19 Resource Center.

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