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Patent and Trademark Deadlines during the COVID-19 Outbreak

We are closely tracking the actions of the United States Patent and Trademark Office (USPTO) in response to the COVID-19 outbreak. The USPTO remains open for the filing of trademark and patent applications and other documents and JMBM remains available to assist you with your intellectual property needs.

On March 31, 2020, following passage of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the USPTO announced that it would extend for 30 days the deadlines for filing many patent and trademark-related documents and fees due between March 27, 2020 and April 30, 2020.

For trademark matters, extendable deadlines include deadlines for responding to Office Actions and filing Statements of Use or Request for Extensions of Time for filing Statements of Use. For patent matters, extendable deadlines include deadlines for payment of the issue fee, responding to Office Actions issued during examination, and filing appeal briefs.

To obtain an extension, the delayed filing or fee must be accompanied by a statement that the delay in filing or payment is due to the COVID-19 outbreak. For purposes of this extension, delays are due to the COVID-19 outbreak if a practitioner, applicant, registrant, or other person associated with the filing is affected by the COVID-19 outbreak by office closures, cash flow interruptions, inaccessibility of files or other materials, personal or family illness, or other similar circumstances such that the outbreak materially interfered with timely filing or payment.

The extended deadlines include the deadline for filing a Notice of Opposition or Request for Extension of Time to File a Notice of Opposition before the Trademark Trial and Appeal Board (TTAB). And, a 30 day extension is available on the same basis for several Patent Trial and Appeal Board (PTAB) deadlines – namely, requests for rehearing of a PTAB decision, petition to the Chief Judge, and patent owner preliminary response in trial proceedings, or related responsive filings.

The deadlines in pending TTAB matters, as well PTAB matters other than those identified above, remain as set, but extensions may be sought through normal channels. Note, however, that the five-year statute of limitations for bringing cancellation actions on certain grounds, including likelihood of confusion, is not tolled or extended.

JMBM is continuing to docket and track all USPTO dates and deadlines for our clients according to our normal practices and procedures. If you are in need of assistance in intellectual property matters, including the deadline extensions discussions above, JMBM is available to help.

JMBM’s Intellectual Property Group represents entrepreneurs, family-owned businesses, middle-market companies, startups, universities and the FORTUNE 500, handling patents, trademarks, copyrights, domain names, trade dress, trade secrets, and related licensing and litigation. Our approach is aggressive and efficient, and we keep a keen focus on helping clients achieve their goals.

This update is provided to our clients, business associates and friends for informational purposes only. Legal advice should be based on your specific situation and provided by a qualified attorney.