The USPTO on May 27 made further accommodations for small and micro entities affected by the coronavirus (COVID-19) pandemic. For these entities, patent filings that would have been deemed timely filed by June 1 under previous PTO COVID-19 extensions will now be timely if filed by July 1, 2020. Large entities may seek relief after May 31, 2020 on a case-by-case basis upon petition for an extension of time or to revive along with payment of any fee that may be required. For all entities, a statement that the delay in filing (or payment) was due to the COVID-19 outbreak, as required in previous notices, is still required.
The US Patent and Trademark Office (USPTO) continues to waive petition fees for filing a petition to revive an application (and re-examinations) that became abandoned (or terminated or limited) on or before June 30, 2020. This waiver applies to all entities – large, small, and micro. The petition must include the statement that the delay was due to the COVID-19 pandemic as described in previous notices. Small and micro entities are also relieved of paying any fees for other COVID-19-related extensions. If a large entity is seeking relief beyond revival of a patent application (or re-exam), it will need to pay whatever petition fee is required (e.g., petition to file a late priority document) but it can use COVID-19 as further supporting the rationale for the relief sought.
On May 29, 2020, the USPTO also announced that it will now permit initial patent term extension applications to be filed electronically.
As for trademarks, the time to file certain trademark-related documents which otherwise would have been due between March 27, 2020 and May 31, 2020 was extended to June 1, 2020. Following June 1, 2020, all applicants and registrants that are unable to meet these deadlines will need to file a Petition to Revive or a Petition to the Director to seek relief. Relief will be granted on a case-by-case basis with considerations related to COVID-19 being taken into account. The USPTO will continue to waive the petition fee for petitions to revive applications or reinstate registrations that became abandoned or expired/cancelled as a result of the COVID-19 outbreak, with a statement that the delay in filing or payment was due to the COVID-19 outbreak.
On June 3, 2020, the USPTO has launched a COVID-19 Response resource center. This Resource center provides a central hub for USPTO notices related to the COVID-19 outbreak.
The World Intellectual Property Organization has also compiled a list of other extensions in its 193 member states.
For our clients, we have formed a multidisciplinary Coronavirus COVID-19 Task Force to help guide you through the broad scope of legal issues brought on by this public health challenge. Find resources on how to cope with the post-pandemic reality on our NOW. NORMAL. NEXT. page and our COVID-19 page to help keep you on top of developments as they unfold. If you would like to receive a daily digest of all new updates to the page, please subscribe now to receive our COVID-19 alerts, and download our biweekly COVID-19 Legal Issue Compendium.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact Kenneth J. Davis (Philadelphia) or any of the members of Morgan Lewis’s COVID-19 Intellectual Property Working Group:
Jason C. White
Christina A. MacDougall, Ph.D.
John V. Gorman