Archives for April 2020

April 30, 2020 Coronavirus Update: USPTO Revised Deadline Extensions and Revival Procedures

The following revises our April 1 update on Patent Office Accommodations to reflect newly extended dates.

On April 28, the U.S. Patent and Trademark Office (USPTO) issued several Notices revising and extending its policies intended to help alleviate the impact of the coronavirus (COVID-19) outbreak on applicants and practitioners.  These policies affect both patent-related and trademark-related matters. The USPTO has emphasized that it otherwise remains open for patent and trademark-related filings and related fees.  The April 28 Notices supersede previous Notices issued March 16 and March 31, and provide newly-extended due dates.

Extension of Patent and Trademark Deadlines

The April 28 Notices announced extended waivers of most patent-related and trademark-related due dates between March 27 and May 31, including for due dates for filing documents and/or fees.  Most filings that otherwise would have been due between March 27 and May 31, 2020, will be considered timely if filed on or before June 1, 2020, if the delay is the result of a practitioner, applicant, patent owner, registrant, petitioner, third party requester, inventor, or other person associated with the filing or fee being “personally affected by the COVID-19 outbreak.”  The Notices indicate that “personally affected” is intended to be read broadly and includes, without limitation, “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

The Notices apply to many patent-related and trademark-related due dates, although two patent-related due dates (replies to pre-examination notices and failure to timely pay a maintenance fee) are restricted to small and micro entity applications.  To take advantage of this extension, the filing or payment of the fee must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Waiver of Petition to Revive Fees

As noted in our March 19 update, the USPTO had previously announced on March 16 special procedures for reviving patent and trademark applications that may have been unintentionally abandoned as a result of the COVID-19 outbreak.  Specifically, if a patent application or reexamination proceeding became abandoned, or a trademark application or registration became abandoned or canceled/expired, because the practitioner, applicant, or at least one inventor, was personally affected by the COVID-19 outbreak, the USPTO will waive the petition fee associated with filing the necessary Petition to Revive.  The USPTO originally did not provide any specific dates during which the abandonment must have occurred.  The April 28 Notices indicate that the abandonment must be related to a due date of May 31, 2020, or earlier, when taking into account all available extensions of time.

To take advantage of this petition fee waiver, a Petition to Revive must be promptly filed and must be filed not later than two months after the issue date of a formal notice of abandonment, termination, limitation, or cancellation, or not later than six months after the date the matter became abandoned, terminated, limited, or cancelled if no formal notice was issued.  The Petition to Revive must also include the appropriate reply and the same statement as described above that the delay in filing or payment was due to the COVID-19 outbreak.

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The full patent-related USPTO Notice regarding these extensions can be found here:

https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-Act-2020-04.pdf  

The full trademark- related USPTO Notice regarding these extensions can be found here:

https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act-2020-04.pdf

Please contact us if you have questions about this extensions or petition fee waiver programs or if you would like to take advantage of these programs in a particular matter.

CORONAVIRUS (COVID-19) UPDATES

OLIFF PLC is actively monitoring the coronavirus (COVID-19) outbreak in the U.S. and around the world, and we are adjusting our operations accordingly.  At this point, we have moved most of our attorneys and staff to remote telework.  We are adjusting our internal operating procedures to accommodate this shift to remote work so that we can continue to meet the needs of our clients without interruption and maintain our standards for prompt, high quality legal services during this difficult time.

All coronavirus-related updates can be found on this page, which we will continue to update as necessary.  Please do not hesitate to contact us with any questions.

March 13, 2020 Update:  Initial Response

Mach 19, 2020 Update:  Changes to OLIFF Business Hours

March 25, 2020 Update:  Changes to OLIFF Communication Procedures

April 1, 2020 Update:  USPTO Deadline Extensions and Revival Procedures

April 30, 2020 Coronavirus Update: USPTO Revised Deadline Extensions and Revival Procedures

2020 Intellectual Property Training Institute

Oliff PLC has decided to cancel our 2020 Intellectual Property Training Institute (IPTI) that was scheduled to take place from September 22 through October 4, 2020.  Given the impact of the coronavirus and the uncertainty surrounding air travel and large gatherings, we believe it is unlikely that we will be able to safely and effectively host the IPTI this year.

We expect to host the IPTI again in 2021.  We plan to send out more information on the 2021 IPTI in March or April next year.

April 1, 2020 Coronavirus Update: USPTO Deadline Extensions and Revival Procedures

The U.S. Patent and Trademark Office (USPTO) recently issued several Notices for new policies intended to help alleviate the impact of the coronavirus (COVID-19) outbreak on applicants and practitioners.  These policies affect both patent-related and trademark-related matters. The USPTO has emphasized that it otherwise remains open for patent and trademark-related filings and related fees.

Extension of Patent and Trademark Deadlines

On March 31, 2020, the USPTO issued two Notices announcing waivers of most patent-related and trademark-related due dates between March 27 and April 30, including for due dates for filing documents and/or fees.  These due dates will be extended for 30 days from the initial due date if a practitioner, applicant, patent owner, registrant, petitioner, third party requester, inventor, or other person associated with the filing or fee “was personally affected by the COVID-19 outbreak.”  The March 31 Notices indicate that “personally affected” is intended to be read broadly and includes, without limitation, “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

The Notices apply to many patent-related and trademark-related due dates, although two patent-related due dates (replies to pre-examination notices and failure to timely pay a maintenance fee) are restricted to small and micro entity applications.  To take advantage of this 30-day extension, the filing or payment of the fee must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

The full patent-related USPTO Notice regarding these extensions can be found here:
https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf

The full trademark- related USPTO Notice regarding these extensions can be found here:
https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf

Please contact us if you have questions about these extensions or if you would like to take advantage of these extensions in a particular matter.

Waiver of Petition to Revive Fees

As noted in our March 19 update, the USPTO announced on March 16 special procedures for reviving patent and trademark applications that may have been unintentionally abandoned as a result of the COVID-19 outbreak.  Specifically, if a patent application or reexamination proceeding became abandoned, or a trademark application or registration became abandoned or canceled/expired, because the practitioner, applicant, or at least one inventor, was personally affected by the COVID-19 outbreak, the USPTO will waive the petition fee associated with filing the necessary Petition to Revive.  The USPTO did not provide any specific dates during which the abandonment must have occurred, but described that “the coronavirus outbreak that began in approximately January 2020” qualified as an “extraordinary situation” for affected applicants, patentees, reexamination parties, and registrants.

To take advantage of this petition fee waiver, a Petition to Revive must be promptly filed and must be filed not later than two months after the issue date of a formal notice of abandonment, termination, limitation, or cancellation, or not later than six months after the date the matter became abandoned, terminated, limited, or cancelled if no formal notice was issued.  The Petition to Revive must also include the appropriate reply and 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 Coronavirus outbreak such that they were unable to file a timely reply,” and include a copy of the USPTO Notice.

The full USPTO Notice regarding these petition fee waivers can be found here:
https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf

Please contact us if you have questions about this petition fee waiver program or if you would like to take advantage of this program in a particular matter.