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The impact of COVID-19 at the USPTO

El siguiente artículo fue escrito por dos integrantes de la firma estadounidense Haug Partners LLP. Su contenido está enteramente en inglés.

The impact of COVID-19 at the USPTO

Por Livia de Paula (Foreign Trademark Law Clerk) y Jessica Sblendorio (Associate).

On March 16, 2020, the United States Patent and Trademark Office (“USPTO”) announced measures available to patent and trademark applicants, as well as patentees and trademark owners, affected by the coronavirus (COVID-19) disease outbreak. The USPTO deemed the effects of the coronavirus outbreak to constitute an “extraordinary situation,” as defined in 37 CFR § 1.183 and 37 CFR § 2.146. As a result, the USPTO will be waiving petition fees in certain situations.

For trademark applications and registrations that were abandoned or cancelled/expired due to failure to timely respond to USPTO communications as a result of the effects of the coronavirus outbreak, the USPTO will waive the applicable petition fees (i.e. those set by regulation, rather than statute) to revive abandoned applications and reinstate cancelled or expired registrations.

The USPTO also added that it would waive revival petition fees for patent applications that were deemed abandoned or where reexamination proceedings were terminated or limited in cases where the applicants were not able to respond in time because of the coronavirus outbreak.

Notably, the USPTO will not grant waivers or extensions of time or any applicable requirements that are set by statute. Some of these statutory requirements include (i) the period to file a patent application claiming the benefit of a prior filed foreign application; or (ii) the 36-month period within which a statement of use for a trademark must be filed along with its associated fee, as examples.

Any petition included with the petition fee must include a copy of the Official Notice and a statement that the delay in filing was because the of the effects of the coronavirus. In addition, the request to waive the petition should be requested promptly, since a petition under 37 CFR § 1.137(a) must be filed no later than two months following the issuance of a notice of abandonment or a notification that prosecution has terminated.

Finally, because the coronavirus pandemic is an evolving situation, further notices and directives will likely be forthcoming from the USPTO.

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