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CARES Act Provides USPTO Discretion to Extend Certain Patent and Trademark Filing Deadlines

By Procopio Partner Robert (Bob) Ramos

The Coronavirus Aid, Relief, and Economic Security (CARES) Act signed into law by the President on March 27, 2020, contains language aimed at addressing concerns within the intellectual property community. In addition to both individual and corporate financial relief, Section 12004 of the CARES Act also gives the U.S. Patent and Trademark Office (USPTO) Director the discretion, during the COVID-19 emergency, to “toll, waive, adjust, or modify, any timing deadline” set forth by the patent or trademark laws or by current USPTO regulations. The Director can invoke these temporary measures if he determines that the emergency:

  1. Materially affects the functioning of the Patent and Trademark Office;
  2. Prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or
  3. Prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office.

The Director’s “emergency period” under this section of the CARES Act will last for 60 days beyond the as yet undetermined final date covered by the President’s Declaration of a National Emergency on March 13, 2020, as a result of the COVID-19 outbreak.

Whether the USPTO Director will exercise his newly granted authority to modify any patent or trademark timing deadlines is uncertain. Prior to the CARES ACT, on March 16, 2020, the Director issued related guidance under separate authority directed to relief “for patent applicants or patent owners who were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited.” 

In these situations, the USPTO will waive the petition fee when the patent applicant or owner files the necessary response accompanied by a petition to revive the application. The petition must include a statement that the delay “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.” The applicant or owner will have either 2 or 6 months to file the petition to revive, depending on whether a notice of abandonment or of reexamination termination has been received.

It is very important to note that the March 16th USPTO COVID-19 Relief Guidance does not apply to the one-year deadlines for claiming priority to either a foreign or provisional patent application; nor to the requirement of maintaining copendency between a parent application and the filing date of its child application.

If you believe that your patent or trademark rights may have been impacted during the ongoing COVID-19 emergency, please contact us and we can assist you.

Robert (Bob) Ramos is a leader of Procopio's Life Sciences practice and a member of Procopio's Intellectual Property team. He has over 20 years of combined Life Sciences IP experience in both private practice and the biotechnology industry related to worldwide patent and trademark acquisition and strategic counseling. Bob has assisted venture-backed startups, mid-sized companies, basic research Institutes, as well as large biopharmaceutical companies in need of extensive portfolio management in the biotechnology arts, including molecular biology, antibodies/peptibodies, protein therapeutics, cancer therapies, gene therapy, cellular immunotherapy, and nucleic acids; as well as next generation sequencing and modern genomics, including microfluidics, microarrays, bioinformatic and pharmacogenomic analysis for personalized medicine and companion diagnostics.