USPTO GRANTS SOME DEADLINE EXTENSIONS ARISING FROM COVID-19 BUT IT IS RISKY MEDICINE

USPTO GRANTS SOME DEADLINE EXTENSIONS ARISING FROM COVID-19 BUT IT IS RISKY MEDICINE

April 15, 2020. Under the authority Subsection 12004(a) of the Coronavirus Aid, Relief, and Economic Security (CARES) Act enacted on March 27, 2020 the United States Patent and Trademark Office (USPTO) has extended certain deadlines to file trademark and patent documents and fees. Where some specific filings (not all) were due between (and including) March 27, 2020 and April 30, 2020, the deadlines are extended by 30 days from the due date. It is likely that the April 30 date will be extended further. But it is risky medicine: the late filing must be accompanied by a “statement” that the delay in filing or payment arose from the COVID-19 outbreak due to “a person associated with the filing or fee being personally affected.” Here are two risks: first, consider that the USPTO did not explicitly extend the expiration date of provisional patent applications nor any applicable 1 year grace period for filing a patent application after the effective date of public disclosure. Therefore, these ticking time-bombs are likely still ticking under the regular clock. Second, in other situations where “statements” are made on the record to justify waiver of critical missed deadlines (e.g. petitions to revive an abandoned patent application), the typical patent litigation defense tactic is to challenge the validity of the patent (or trademark registration) by challenging the veracity and sufficiency of that statement made years earlier. We expect the same to happen in the future to patentees (and trademark registrants) who rely on the CARE Act time extensions. Therefore, we recommend that if at all possible make the original deadlines.

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