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Patent and Trademark Office Coronavirus Relief

Coronavirus and Intellectual Property Rights:

As the Coronavirus pandemic spreads throughout the United States, many schools, courts, and other governmental offices are closing. Indeed, entire cities have ground to a halt. Quarantine efforts have already caused significant delays in legal matters in both the U.S. and abroad. U.S. patent and trademark owners and applicants would be well-served to understand how the U.S. Patent and Trademark Office (“U.S. PTO”) is responding to the Coronavirus and what such response means for rights-holders.

Critically, as discussed in more detail below, patent and trademark deadlines are not being extended at this time. Rather, the U.S. PTO is:

1. considering the coronavirus an “extraordinary situation” within the meaning of 37 CFR 1.183 and 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners; and
2. waiving petition fees in certain situations for those impacted by the coronavirus.

Patent Related Relief:

According to the U.S. PTO’s official notice, for patent applicants or patent owners who: (i) were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak; which (ii) resulted in an application being held abandoned or a reexamination prosecution being terminated or limited; the U.S. PTO will waive the petition fee.

In order to qualify for this fee waiver, the applicant or patent owner must file:

1. the underlying reply;
2. a petition under 37 CFR 1.137(a) (which must include a statement that the delay in filing the reply required to the outstanding Patent Office communication was because 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); and
3. a copy of the official notice (which will be treated as a representation that the delay in filing the reply was due to the effects of the Coronavirus outbreak and as a request for sua sponte waiver of the petition fee).

Such petitions should be promptly filed but, in any event, not later than:

1. two months after the issue date of a notice of abandonment / notification that reexamination prosecution has been terminated or limited; or
2. six months after the date the application became abandoned or the reexamination prosecution was terminated or limited if the applicant or patent owner did not receive notice.

Trademark Related Relief:

According to the U.S. PTO’s official notice, for trademark applications and registrations that were abandoned or canceled/expired due to a Coronavirus related inability to timely respond to a Trademark Office communication, the U.S. PTO will waive the petition fee to revive the abandoned application or reinstate the canceled/expired registration.

More specifically, for:

1. abandoned applications, applicants should file a “Petition to Revive Abandoned Application” form; and
2. canceled/expired registrations, registrants should file a “Petition to the Director” form.

In all cases, petitions must include a statement explaining how the failure to respond to the U.S. PTO’s communication was due to the effects of the Coronavirus outbreak.

Such petitions should be promptly filed but, in any event, not later than:

1. two months after the issue date of the notice of abandonment or cancellation; or
2. six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired if the applicant / registrant did not receive a notice of abandonment or cancellation.

Business as Usual?

The U.S. PTO has announced that:

“Until further notice, examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices on or after Friday, March 13, 2020 will be conducted remotely by video or telephone.”

The U.S. PTO has also indicated that parties will receive further instructions on how to participate in such video / telephonic meetings.

While the U.S. PTO’s offices have been closed to the public since March 16, 2020 (and will remain closed until further notice) such offices currently remain open for U.S. PTO employees. This means that – for now – operations will continue without interruption.

Finally, as an aside, we note that the outbreak of the Coronavirus has not stopped quick-to-file trademark applicants from seeking to register such marks as:

• CORONAVIRUS SURVIVAL GUIDE (Serial No. 88783939) for “Magazines in the field of survival, protection, medicine and pandemics”;

• CORONAVIRUS (STYLIZED) (Serial No. 88790444) for various goods / services including “entertainment services in the nature of live vocal performances by a musical and vocal group”; or

• CORONAVIRUSRX (Serial No. 88822405) for “Respirators for artificial respiration; Fever thermometers”.

If you have a pending patent or trademark matter – or if you have missed a patent or trademark deadline because of the Coronavirus – call us today for a free consultation.

This article was last updated on March 17, 2020. Further updates are being posted by the U.S. PTO at the following address: https://www.uspto.gov/coronavirus.