Granting of Waivers by The United States Patent and Trademark Office for Abandoned or Canceled Patent and Trademark Applications
By: David Breiner
The United States Patent and Trademark Office (USPTO) considers the effects of the Coronavirus outbreak to be an “extraordinary situation.” As such, the USPTO has taken steps to reduce certain costs associated with reviving cancelled or abandoned patent and trademark applications.
Filing responses and paying fees associated with patent applications often come with hard deadlines. Failing to timely file a response to a communication from the USPTO or pay a fee can result in the abandonment of a patent application. In the wake of the Coronavirus outbreak, the USPTO has decided to waive certain petition fees associated with reviving abandoned patent applications so long as the abandonment was due to the effects of the Coronavirus. In order to take advantage of this waiver, patent applicants and/or owners must file certain revival papers along with a copy of a memo titled “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak” which is available here. Filing the memo operates as a request for sua sponte waiver of the petition fee. In addition, the patent owner or applicant must file a statement that the delay in filing a reply was because the patent 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 petition to revive the abandoned application must occur either: 1) within two months after a notice of abandonment has been mailed; or 2) six months after the date the application became abandoned. Please note similar waivers are available for terminated reexamination proceedings.
As for trademarks, the USPTO decided to waive petition fees (set by regulation rather than statute) for applications and registrations that were abandoned, canceled, or expired due to the inability to timely respond to a trademark-related communication from the USPTO as a result of the Coronavirus outbreak. When reviving an abandoned, canceled, or expired trademark application or registration, the applicant must file a statement explaining how the failure to respond to the communication from the USPTO was due to the effects of the Coronavirus outbreak. The petition must also be filed not later than two months after the issue date of the notice of abandonment or cancellation. If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is cancelled/expired.
The USPTO is certainly mindful of its customers and we are happy to see them take such affirmative steps to help them through these trying times. BrownWinick has a specialized group of intellectual property attorneys who routinely interface with the USPTO and can certainly help you with these and other matters. Don’t hesitate to ask us for help!