The United States Patent and Trademark Office is closed today, June 18, 2021, for the first federal holiday of Juneteenth National Independence Day. Federal employees have the day off. The electronic filing systems remain open for business for all those who still wish to file applications, responses, and other communications with the Patent and Trademark Office.
In October, the Patent and Trademark Office raised most of its patent-related fees. Now, the other side of the building is raising its fees on trademark actions. The changes will become effective January 2, 2021. As with patent fees, these are the first trademark fee increases in almost three years, but they are being instituted in during a pandemic where many are struggling to meet their financial obligations.
The fee changes may reflect higher processing and examination costs for certain types and phases of applications, but they also incentivize certain behaviors. Fore example, the Office has long differentiated the fees between paper applications, electronic applications presenting customized information (“TEAS Standard” applications), and electronic applications adopting standardized or suggested wording (“TEAS Plus” applications). These changes continue that trend.
All fee changes can be viewed here. Below I cover the fees for some of the more-commonly used actions.
- TEAS Standard trademark application filing fee increases from $275 to $350 per class
- TEAS Plus trademark application filing fee increases from $225 to $250 per class
- TEAS Plus applications that fail to meet the Plus standards will be assessed $100 penalties per class instead of $125 penalties per class
- The fee to file a paper application increases from $600 to $750. Nobody should be filing paper applications anymore.
- Petitions to revive an abandoned trademark application increase from $100 to $150
- Ex Parte Appeals to the Board increase from $200 to $225 per class
- Section 8 maintenance filing fee increase from $125 to $225 per class
- Petition to cancel fee increases from $400 per class to $600 per class
- Notice of opposition fee increases from $400 per class to $600 per class
- 90-day extension requests for filing a notice of opposition increase from $100 to $200
- Deleting a class, or goods or services from a class, will now incur a $250 fee per class, if that deletion is made after a Section 8 filing is made. There is no fee if the deletion is made in a Section 7 filing before the Section 8 filing.
- Filing a letter of protest against a third-party trademark application now incurs a $50 fee
The Patent Office has raised many of its fees.
The Office attempted to soften this fee increase by explaining that it is the first raise in almost three years, it nevertheless comes in the midst of a pandemic where many are struggling to meet their financial obligations. Larger companies may not be greatly affected, but smaller companies, start-ups (especially self-funded ones), and independent inventors are disproportionately impacted by these fee changes. It is somewhat disappointing to see Office continue with these changes despite the current economic situation of most Americans.
Nevertheless, the Patent Office is largely self-funded and budgeted, and it is not immune to rising operational costs. As a consequence of mandated internal reviews of fees, costs, and revenues, the Office determined that fee adjustments were necessary to adjust to increasing costs and to provide necessary resources for its internal operations. In setting fees, the Office attempts to not just cover its current costs but its projected costs for the next several years. Thus, the hike feels steep now because it is, in part, set to off-set future fees. Most fees increased by approximately 5 percent, though some increased by quite a bit more.
Below I cover the fees for some of the more-commonly used actions. There are a number of changes to fees that I have not included here (more info is available at this link). I’ve quoted the below fees at the small entity rate.
- Provisional Application Filing Fees increased from $140 to $150
- Utility Patent Application Filing Fees increased from $785 to $830
- Track One Requests for Expedited Examination increased from $2,000 to $2,100
- Rocket Docket requests increased from $450 to $800
- Design Patent Application Filing Fees increased from $480 to $510
- International Application Transmittal Fees increased from $120 to $130
- International Application Search Fees increased from $1,040 to $1,090
- International Preliminary Examination Fees increased from $300 to $320
- Extensions for Responses increased $10 to $80, depending on the length of extension
- Terminal Disclaimers increased from $160 to $170
- RCE fees increased from $650 to $680
- Notice of Appeals increased from $400 to $420
- Petitions to Revive Abandoned Applications increased from $1000 to $1050
- Utility Patent Issue fees increased from $500 to $600
- Design Patent Issue fees increased from $350 to $370
- 3.5 Year Maintenance Fees increased from $800 to $1,000
- 7.5 Year Maintenance Fees increased from $1,800 to $1,880
- 11.5 Year Maintenance Fees increased from $3,700 to $3,850
- Maintenance Fee Surcharge (for late maintenance payments) increased from $80 to $250
- Non-DOCX Filing Surcharge is a new fee at $200. The Office is beginning to require patent application documents be filed in DOCX format. This surcharge will not go into effect into 2022, however.
- The Office dropped fees for a bunch of actions and reports that are very infrequently used.
Aaron Moncur of Pipeline Design & Engineering recently interviewed me for his podcast Being an Engineer. We talk a little about my early engineering time, but mostly about the transition from engineering to law and the basics of patent protection. Please have a listen:
Pipeline Design and Engineering designs elegant products for its customers. They are experts in the fields of mechanical engineering & product development. Aaron hosts the Being an Engineer podcast as a forum for engineers and those who work with them to share and learn about how others solve problems engineers face each day, and about the delightful idiosyncrasies that make engineers breed unique. Aaron graced me in as a past engineer. I share some ideas about when you may think it is time to jump the engineering ship, how much fun Laplace Transforms can be, how to protect a new soda bottle design, and why the Patent Office expedites patent applications for those over 65.
As discussed earlier, the Patent and Trademark Office is extending certain deadlines where a delay in filing a paper or paying a fee was due to the COVID-19 outbreak. Initially, the guidance from the USPTO was to include a specific statement in a filing and make it conspicuous.
The Office has now created a fillable PDF form which contains this statement. The form can be filled and filed directly to the PTO with its own Doc Code. Upon filing, it should be easily identified by the Patent Office and processed accordingly.
The form is available here. Please note: this is a patent form; it looks like the other forms used by the Patent Office. I’m not aware of any crossover between patent and trademark forms. It could probably be shoehorned into use as a trademark form, but only with modification, as the fields in the upper half of the form are specific to patent applications and issued patents. However, you may still be better using the “miscellaneous statement” section of TEAS filings to make your COVID-10 statement in a trademark application or trademark registration.
The CARES Act gave the US Patent and Trademark Office the authority to toll, waive, adjust, or modify deadlines related to patent and trademark owners in light of the coronavirus pandemic. At the end of March, the USPTO announced it would do just that. As I summarized here, certain deadlines falling between March 27 and April 30 would receive 30-day extensions when accompanied by a statement regarding the effect of the pandemic on the deadline.
The Office has now modified that deadline extension. Yesterday, the USPTO announced that deadlines falling between March 27 and May 31 will now be extended up to and including June 1, provided that the filing or fee payment is accompanied by a specific statement that the delay was due to the COVID-19 outbreak.
Please note – this is not an additional extension. It does not grant another 10, 15, or 30 days to file. Rather, it simply says that eligible deadlines can now be extended (under the right circumstances) up to a specific day – June 1. If your deadline was originally due March 27, this gives you two additional months. But, if your deadline fell on May 31, this only gives you a single extra day. It s unclear at this time why the Office chose to create an extension running to a specific day rather than an extension of all deadlines by X number of days, as it previously had.
It is possible that this extension allowance will be modified again.
About two months ago, the Trademark Office announced entities would have to begin disclosing their personal email addresses in trademark applications and trademark registrations. I joined almost 200 trademark attorneys in protest of this rule. We argued that it would expose clients and pro se applicants to spam emails, would eliminate applicants’ privacy, and would provide no real benefits. The Trademark Office caved on some filings, but not all, and we were required to disclose applicants’ email addresses.
On Friday, the Trademark Office altered course. While still requiring that personal email addresses be disclosed in trademark applications and trademark registrations, those addresses will be hidden from public view. The exception is if a trademark applicant files an application on his or her own.
The announcement from the Trademark Office:
We’re taking steps to address your concerns about owner email addresses being visible in TSDR. The owner email address field is now masked in TEAS and TEASi documents viewable in TSDR, including submissions viewable in the documents tab, application programming interfaces (APIs), and PDF downloads. Unrepresented owner email addresses will still be viewable in the correspondence email address field. When you open a TEAS or TEASi document in TSDR, you’ll see ‘XXX’” in the owner email address field. We believe this will help reduce the number of solicitations you receive.
UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.
The US Patent and Trademark Office is allowing a 30-day extension to some trademark filing and fee deadlines missed because of the COVID-19 epidemic. The below are frequently asked questions on that extension program for trademark-related issues.
Question 1: How do I take advantage of the 30-day extension of time for certain trademark- and TTAB-related deadlines?
If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered on-time if it is made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. See Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act.
Question 2: Does the statement that the delay in filing or payment was due to the COVID-19 outbreak need to be verified or in the form of a declaration or affidavit?
No, there are no formal requirements for how the statement is made. The statement need not be verified or provided in affidavit or declaration form. It can be provided in the relevant TEAS or ESTTA form or included in the document being filed. TEAS filings all have a spot for a miscellaneous statement – this may be a good location to make the statement, provided it is very clear. These statements are a certification under 37 CFR § 11.18(b), and violations of that section may be subject to sanctions. The statements must, of course, be truthful.
Question 3: What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak?
A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with an on-time filing, response, or fee payment in a trademark application, registration, or proceeding.
Question 4: What circumstances qualify as materially interfering with timely filing or payment?
Circumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.
Question 5: Who must have been affected in order to take advantage of the 30-day extension of time?
The person affected by the outbreak may be a practitioner, trademark applicant, registrant, or other person associated with the filing or fee. It is unclear whether the person must actually be sick; the language of the rule says the person must be affected by the outbreak, not by the disease itself.
Question 6: When does my new trademark or TTAB filing deadline run?
Determine your new filing deadline by adding 30 calendar days to your original filing deadline, but only if the original due date was between (or including) March 27, 2020, and April 30, 2020. If the extended deadline falls on a Saturday, Sunday, or a federal holiday, the extended deadline is the next regular business day.
Question 7: Will the US Patent and Trademark Office have further extensions available?
At this time, there has been no announcement. However, it is expected that if the outbreak continues, and especially continue to depress the economy significantly, the availability of the extension will also be continued.
Question 8: Are all trademark filings eligibility for extension?
No, only some of the filings and fees are eligible.
Question 9: What trademark filings are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?
First, only deadlines that are delayed due to the COVID-19 outbreak may be delayed. Second, only certain filings are eligible, including the following:
- response to an Office action in a trademark application, including a notice of appeal from a final refusal
- statement of use or request for extension of time to file a statement of use in a trademark application
- priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
- priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c)
- transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a)
- in a trademark registration, an affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a), 37 C.F.R. § 2.160(a), 15 U.S.C. § 1141k(a), and 37 C.F.R. § 7.36(b)
- renewal application
Question 10: TEAS is electronic and sometimes does not accept filings after the deadline. Will TEAS automatically accept a filing made under the CARES Act extension?
Yes. TEAS will accept your filing. Locate the TEAS form for the filing you need to make, enter the required information for the filing, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the “Miscellaneous Statement” field of the form you are filing.
Question 11: Is the US Patent and Trademark Office open for filing trademark documents and fees even though its offices are closed to the public?
Yes, the USPTO is open for the filing of trademark documents and fees. Use TEAS for all trademark application and post-registration filings. For more information,
Question 12: What TTAB deadlines are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?
There are only two deadlines that can definitely be extended at the TTAB. They are:
- a notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. § 2.62(a)
- a notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a)
For any other TTAB situation where the COVID-19 outbreak has interfered with a filing, you can request (in ex parte appeals) or file a motion (for trial cases) for an extension or reopening of time. It may or may not be granted, however.
Question 13: Will ESTTA accept a filing made under the CARES Act extension?
Yes. ESTTA will accept your filing. Locate the ESTTA form for your filing, enter the required information, add any attachments, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the attachment or appropriate field of the form you are filing. Make sure that the request is conspicuous and obvious.
Question 14: How do I receive an extension for a TTAB filing?
You must file the extension request through ESTTA and include a statement that the delay in filing or payment was due to the COVID-19 outbreak.
Question 15: Will the TTAB grant a final 60-day extension of time to oppose because of the COVID-19 outbreak?
The effects of the COVID-19 outbreak are considered good cause in support of a second extension of time to oppose, if the first extension was a 30-day extension of time to oppose, or in support of an initial extension of 90 days to oppose, when a longer initial extension is desired. The effects of the COVID-19 outbreak also are considered extraordinary circumstances in support of the final 60-day extension of time to oppose. Fees for an extension requiring a showing of good cause or extraordinary circumstances are still required, even though the filing may be made later than when it would otherwise be due, if the delay in filing is due to the COVID-19 outbreak. When specifying the good cause or extraordinary circumstances, the statement that the delay was due to the COVID-19 outbreak can be included in the “other” basis for the extension.
Question 16: Has the USPTO provided any other relief for trademark filers in view of the COVID-19 outbreak?
Yes. For trademark applications and registrations that were abandoned or canceled due COVID-19 outbreak, the USPTO is waiving the petition fee to revive the abandoned application or reinstate the canceled registration.
The petition to revive or reinstate must include a statement describing how the missed deadline was caused by the COVID-19 outbreak, and it must be filed within two months of the issue date of the notice of abandonment or cancellation. If the trademark applicant or registrant did not receive that notice, the petition must be filed no later than six months after the date the Trademark Office’s electronic records show that the application is abandoned or the registration is canceled.
Question 17: If I have a question about CARES Act extensions, whom do I contact?
While the Patent Office has a help email dedicated to COVID-19, the Trademark Office is using a general inbox: TMPolicy@uspto.gov. I have found, however, that emails sent to general email addresses at the USPTO never get returned. You can also contact the Trademark Office of Petitions at 571-272-8950, or for TTAB matters, you can use TTABInfo@uspto.gov or 571-272-8500. You can also call Arizona trademark attorney Tom Galvani.
UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.
The Patent Office is allowing certain filing and fee deadlines to be extended due to the coronavirus pandemic in the US. Below are common questions about this change:
Question 1: Coronavirus has prevented me from meeting my deadline. What can I do?
The US Patent and Trademark Office has instituted a 30-day extension of time for some patent deadlines. You may be able to benefit.
Question 2: How do I take advantage of the 30-day extension of time?
If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered timely when made within 30 days of the original due date. However, to qualify, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Only certain situations will qualify as delays due to the outbreak. More information is available at the official Notice of Waiver of Patent-Related Timing Deadlines under CARES.
Question 3: Are there any requirements about how the statement has to be made or presented?
The statement does not have to be verified or submitted in the form of an affidavit or declaration. It must, of course, be truthful, and it is recommended that you keep detailed internal records should there later be a question as to the nature of the delay.
Also, rather than including the statement within a normal filing, it is recommended that the statement be included in a separate paper. While the statement can be included in the paper lodged with the Patent Office, it may be initially missed by the Office and delays could result before it is accepted. If included within a filing, it should be made in a conspicuous manner.
Question 4: What qualifies as “a delay due to the outbreak?”
At this time, it is not clear exactly which situations will qualify as being due to the outbreak.
The applicant, agent, owner, petitioner, inventor, or attorney must be personally affected by the outbreak, so being sick will certainly qualify. However, it is less certain whether they actually have to be sick themselves. The rule identifies that one must be affected by the outbreak, not necessarily the disease. So it is possible that having to stay home to take care of a kid whose school was closed could be a qualifying reason (though it should be noted that the Office has not specifically identified this as qualifying reason). If an office closure, cash flow interruption, travel delays, or inaccessibility of files or other materials causes the delay, this will also qualify. The new rule further states that “similar circumstances” to the above will qualify if they materially interfered with the on-time filing or payment. While it does not appear that the Office requires details regarding how the outbreak delayed the filing, it may be a good idea to provide some basic information about the delay
Question 5: When does an extension start??
Day 1 of the 30-day extension of time is the first day after the original due date, in other words, the first day after the original due date.
Question 6: What if the 30-day extension of time ends on a Saturday, Sunday, or federal holiday?
If the 30-day extension of time ends on a Saturday, Sunday, or federal holiday, the extended deadline falls on the next regular business day.
Question 8: Are there any fees associated with extension?
No. The extension does not cost anything. The only fees that may be due are those associated with the filing or fee payment which is being extended.
Question 9: What appeal-related filings are eligible for a 30-day extension of time?
The following appeal-related filings are eligible for a 30-day extension of time:
- notice of appeal
- appeal brief
- reply brief
- appeal forwarding fee
- request for an oral hearing before the PTAB
- response to a substitute examiner’s answer
- amendment in connection with a new ground of rejection by the PTAB
- request for rehearing of a PTAB appeal decision
Question 10: Are all entities entitled to all CARES Act extensions?
No. Certain forms of relief are limited to small and micro entities.
Question 11: Which filing and fee extensions are only available to small and micro entities?
- replies to an Office notice issued during pre-examination processing, e.g.:
- reply to a notice of omitted items
- reply to a notice to file corrected application papers
- reply to a notice of incomplete application
- reply to a notice to comply with nucleotide sequences requirements
- reply to a notice to file missing parts of application (including, without limitation, the payment of the filing fees)
- reply to a notification of missing requirements
- a maintenance fee payment
Question 12: What PTAB filings are eligible for a 30-day extension of time?
- request for rehearing of a PTAB decision in an AIA trial or interference proceeding
- petition to the Chief Judge
- patent owner preliminary response in a trial proceeding, or any related responsive filing
In the event that the USPTO extends a deadline for a patent owner preliminary response or any related filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).
For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request for an extension of time can be made by contacting the PTAB.
Question 13: What PTAB filings are not eligible for an extension of time?
At this time, PTAB is not extending any statutory deadlines for filing an AIA petition under either 35 U.S.C. §§ 315(b) or 321(c).
Question 14: Has the Patent and Trademark Office provided any other relief in view of the COVID-19 outbreak?
Yes. The USPTO has waived the fee for petitions to revive applications that became abandoned because applicants could not meet the deadline for responding to an Office communication due to the COVID-19 outbreak. The Office has also waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.
Question 15: Will the USPTO extend the CARES Act relief beyond April 30?
At the time of this writing, the Patent and Trademark Office has not announced further extensions. However, I believe another 30-day extension is highly likely to be granted should the virus continue to keep the economy depressed for a few more weeks.
Question 16: If I have a question about CARES Act extensions, whom do I contact?
The USPTO has a help email dedicated to COVID, but I have found that emails sent to general email addresses at the USPTO never get returned. You can also contact the Office of Patent Legal Administration at 571-272-7704 (or 571-272-7703 for reexamination), or contact Arizona patent attorney Tom Galvani at 602-281-6481.
The Patent and Trademark Office will not be requiring handwritten signatures during COVID-19 outbreak. Correspondence with the Patent Office requires a signature of some form. Generally, an electronic or S-signature is sufficient to submit a document to the Patent and Trademark Office. However, in a few situations, an actual, pen-to-ink, handwritten signature is required.
For the seemingly foreseeable future, however, that requirement has been waived. The United States Patent and Trademark Office considers the effects of COVID-19 to be an “extraordinary situation” for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.
The waiver applies mostly to attorney and agent issues, such as new licensing applications to practice before the US Patent and Trademark Office and disciplinary matters in front of the Office of Enrollment and Discipline. Additionally, some credit card payments apparently must be accompanied by handwritten signatures, though in a decade of practice, I’ve never encountered this.
While the requirement for a handwritten signature has been waive, the requirement for a signature has not. Indeed, where handwritten signatures were once required, corresponding parties must now submit photocopies of original signatures and S-signatures will satisfy during waiver.
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- I'm Tom Galvani, a patent> and trademark lawyer in Phoenix, Arizona. I help inventors, entrepreneurs, and businesses develop and control their intellectual property. I host this site and the blog on it to give you an idea of the services I provide and to keep you updated on current developments and helpful information related to patents, trademarks, and copyright. Legal and Disclaimer
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