USPTO Relief Available to Patent, Trademark Applicants and Owners Affected by COVID-19

March 17, 2020 Advisory

The United States Patent and Trademark Office (USPTO) is waiving certain petition fees associated with deadlines that are missed due to the effects of the coronavirus (COVID-19) pandemic. The USPTO has authority to grant this fee relief because it believes COVID-19 to be an “extraordinary situation” (within the meaning of 37 CFR 1.183 and 37 CFR 2.146) for affected patent and trademark applicants, patentees, reexamination parties and trademark owners.

The announcement notes that the USPTO does not have statutory authority to extend or cancel the underlying deadlines.

For applicants with pending patent applications, the fee relief is available in cases where the effects of the COVID-19 outbreak render the applicant unable to meet the deadline to reply to an Office communication, and the missed deadline results in the application being held abandoned by the USPTO. A Petition to Revive is the ordinary remedy to revive a patent application that was abandoned unintentionally, and such a petition must still be filed if the cause of the abandonment relates to the COVID-19 pandemic. However, the associated USPTO fee for the Petition to Revive (currently $2,000 for most applicants) is now waived if the underlying deadline was missed due to COVID-19.

To take advantage of the fee waiver, the Petition to Revive must include a statement that the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant or at least one inventor was personally affected by the COVID-19 outbreak such that they were unable to file a timely reply. To request the waiver, applicants should include a copy of the USPTO fee-waiver notice with the petition, along with the reply required to the outstanding Office communication. In addition, the Petition to Revive must be filed within two months of the issue date of the Notice of Abandonment of the application from the USPTO in order to entitle the applicant to a waiver of the petition fee.

The same petition fee relief is available to patentees who are unable to meet the deadline to reply to an Office communication in a patent reexamination proceeding due to COVID-19, and the missed deadline results in the patent reexamination being terminated or limited by the USPTO. The Petition to Revive must be filed within two months of the issue date of the notification from the USPTO that reexamination prosecution has been terminated or limited.

For applicants with pending trademark applications, the fee relief is available in cases where the effects of COVID-19 render the applicant unable to timely respond to a trademark-related Office communication, and the missed deadline results in the application being held abandoned by the USPTO. A Petition to Revive Abandoned Application form, available through the Trademark Electronic Application System (TEAS), is the ordinary remedy to revive a trademark application, and such a petition must still be filed if the cause of the abandonment relates to COVID-19. However, the associated USPTO fee for the petition (currently $100) is now waived if the underlying deadline was missed due to COVID-19. The petition must include a statement explaining how the failure to respond to the Office communication was due to the effects of the COVID-19 outbreak. Again, the petition must be filed within two months of the issue date of the Notice of Abandonment of the application from the USPTO in order to entitle the applicant to a waiver of the petition fee.

Finally, for registered trademarks, similar petition fee relief is available in cases where the effects of COVID-19 render the registrant unable to timely respond to a trademark-related Office communication, and the missed deadline results in the registration being held canceled or expired by the USPTO. The TEAS "Petition to the Director" form should be used in this case. The petition again must be filed within two months of the issue date of the notification from the USPTO that the registration has been canceled.

Armstrong Teasdale’s Intellectual Property practice group will maintain operations throughout the COVID-19 pandemic and will continue to meet all applicable patent and trademark deadlines for our IP clients. If you would like to discuss how this potentially impacts you or your business, please contact Partners Michael Longmeyer or Courtney Jackson or your existing AT attorney.