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USPTO Expands CARES Act Extension Period to May 31
April 30, 2020

On April 28, the United States Patent and Trademark Office (“USPTO”), pursuant to its authority under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), extended the applicable time period to May 31, 2020 for which extensions for certain patent and trademark deadlines are available due to the COVID-19 outbreak.  This extension to the applicable time period is an update from the initial CARES Act extension rules, which set the applicable time period to expire on April 30.

Details of the CARES Act extension rules as initially set forth, including the applicable patent and trademark deadlines and the requirements necessary for obtaining an extension, can be found at the following link: Developments at the USPTO – COVID-19

In addition to extending the deadline to May 31, the update also modifies the rules related to obtaining relief before the Patent Trial and Appeal Board (“PTAB”).  Specifically, extensions for a patent owner preliminary response in a trial proceeding, or any related responsive filings, remain available only until April 30.  For these filings, parties must contact the PTAB for relief sought after April 30.  The update to the CARES Act extension rules also clarifies certain requirements for requesting a waiver of the petition fee for petitions to revive patent and trademark applications, reexamination proceedings, and canceled/expired trademark registrations.

Continuing through May 31, a CARES Act extension should be available if your business qualifies under the USPTO’s definition of a delay “due to the COVID-19 outbreak.”  The following are important points to keep in mind when considering whether to request an extension under the CARES Act:

  • Extensions under these rules are not automatic.  The USPTO may deny a CARES Act extension request, which could result in an abandonment of rights if the filing period expires during the USPTO’s consideration of the request.
  • An adverse party may challenge the validity of the CARES Act extension in litigation on the ground that the extension was wrongfully requested.

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If you have questions or concerns about your upcoming deadlines, please do not hesitate to contact us to discuss whether your business may qualify for an extension.