Intellectual Property Law Alert - U.S. Patent and Trademark Office Extends Some Deadlines

04.01.20

Last week, we reported on some of the modifications to U.S. Patent and Trademark Office (USPTO) procedures and we emphasized that the USPTO had not modified any due dates or filing date requirements. CLICK HERE for that Alert.

On March 31, 2020, the USPTO released additional modifications. The new guidelines offer the ability for some parties to obtain brief extensions for some filings.

Importantly, the primary deadlines for filing patent applications and claiming priority to provisional or foreign applications remain firmly in place. No extensions of either is permitted.

Patents

Under the Patent Office’s new guidelines, a 30-day extension can be obtained for some matters provided that the filer is able to establish that someone associated with the filing (such as the applicant, patent owner, attorney, etc.) was personally affected by the COVID-19 pandemic. Additionally, the due date for the matter must fall within March 27, 2020, and April 30, 2020. Relief is available for at least the following:

  1. Replies to an Office Action

  2. Payment of an issue fee

  3. Filing of a notice of appeal, an appeal brief, a reply, or an appeal forwarding fee

  4. Filing a request for an oral hearing before the PTAB

  5. Payment of maintenance fees (small and micro entity only)

The full list is available HERE on the USPTO website.

Trademarks

The Trademark Office has similarly extended by 30 days certain deadlines falling between March 27, 2020, and April 20, 2020, where someone associated with the matter was personally affected by the COVID-19 pandemic. They include the following:

  1. Filing a response to an Office Action

  2. Filing a statement of use or request for extension of time

  3. Filing a notice of opposition or request for an extension of time

  4. Filing an affidavit of use or excusable nonuse

The full list is available HERE on the USPTO website.

If you have any questions about this Alert, please contact the author listed below or the Aronberg Goldgehn attorney with whom you normally consult:

Chip De Preter
cdepreter@agdglaw.com
312-755-3153

CLICK HERE to view a PDF copy of this Alert.

©2020 Aronberg Goldgehn. All rights reserved. The above material is intended for general information and promotional purposes, and should not be relied on or construed as professional advice Under the Illinois Rules of Professional Conduct.



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