USPTO OFFERS RELIEF TO THOSE AFFECTED BY THE CORONAVIRUS OUTBREAK

On March 16, 2020, Director Iancu issued an official notice the Coronavirus (COVID-19) is to be considered an “extraordinary situation” within the meaning of 37 CFR 1.183 and 2.146. [ View Article Here ] This offers some relief for our domestic and foreign patent and trademark community, for those who have applications pending at the USPTO or issued U.S. patents/trademarks.

Patent-Related Correspondence – Petition to Revive

According to the Notice, if you are unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, and the application goes abandoned, we can file a Petition to revive and the USPTO will waive the Petition fee.  We will include a copy of the Notice as a representation as to the cause of the delay, which will trigger a request for sua sponte waive of the Petition fee.  We will also need to include a statement that at least one of the practitioner, applicant or at least one inventor, was personally affected by the coronavirus outbreak such that they were unable to file a timely reply.  This all must be done no later than 2 months after the issue date of the Notice of Abandonment.

Trademark –Related Correspondence

According to the Notice, for trademark applications/registrations abandoned/canceled/expired due to the inability to timely respond to an Office communication as a result of the coronavirus outbreak, the USPTO will waive the Petition fee to revive.  We can prepare these Petitions for you as well.  The Petition must include a statement explaining how the failure to respond to the Office communication was due to the effects of the coronavirus outbreak.  The petition must be filed not later than 2 months of the issue date of the Notice of Abandonment or Cancelation.

NO RELIEF GRANTED

It is important to note that, for patents or patent applications, this Notice DOES NOT grant waivers or extensions of dates or requirements set by statute.  For example, this Notice does not apply to conversions of provisionals to non-provisionals, codependency requirements, the three-month time period to pay the issue fee, or extension deadlines for Office Actions, etc.  

Regarding trademarks, the Notice DOES NOT extend the 36 month period set forth to file a Statement of Use, filing affidavits of continued use or excusable nonuse, renewals, oppositions, cancelations, etc.

Should you have specific questions or concerns, please do not hesitate to call us.  We are here to help.