CSG Law Alert: United States Patent and Trademark Office Announces Relief Measures for Those Impacted by the California Wildfires
The United States Patent and Trademark Office (“USPTO”) has deemed the effects of the California Wildfires an “extraordinary situation” that warrants relief under the Federal Patent and Trademark Rules. Specifically, on February 19, 2025, the USPTO announced that for certain patent and trademark deadlines and actions pending as of January 7, 2025, patent and trademark applicants, trademark registration owners, patentees, and reexamination parties impacted by the wildfires in California can, upon written request, seek to reset applicable deadlines or waive certain fees. Available relief measures are outlined below.
Trademark Relief Measures:
- The USPTO will issue a new response period for any Office Action, Notice of Allowance, or other Office notice requiring a response that is outstanding for trademark applications and registrations with a correspondence or owner address in the areas affected by the wildfires if the owner requests such relief in writing prior to the response deadline.
- For applications abandoned or registrations canceled due to the inability to timely respond to an Office Action or similar notice, the USPTO will refund the petition fee to revive the application or reinstate the registration.
- For situations where the wildfires prevented or interfered with a filing before the Trademark Trial and Appeal Board (“TTAB”), affected parties may file a request or motion for extension or reopening of time or suspension of proceedings.
Patent Relief Measures:
- For patent applications and reexamination proceedings that involve an inventor, applicant, assignee, patent owner, or correspondence address in an area affected by the wildfires, a request may be made with the USPTO to reset the period to reply to an Office communication prior to the expiration of the reply deadline.
- For applications abandoned or reexamination prosecution terminated or limited because patent applicants or owners were unable to timely reply to an Office communication due to the wildfires, the USPTO will waive the petition to revive fee upon the filing of the reply by July 7, 2025 with the petition.
- For a patentee unable to timely pay a patent maintenance fee due to the wildfires, the USPTO will waive (1) the surcharge for paying a maintenance fee during the 6-month grace period and (2) the petition fee for accepting a delayed maintenance fee payment when the patentee files the maintenance fee payment with a petition to accept a delayed maintenance fee.
- For nonprovisional patent applications filed between January 7, 2025 and February 8, 2025 without an executed inventor’s oath or declaration or payment of the basic filing fee, search fee, and/or examination fee due to the wildfires, the USPTO will waive the surcharge for the late filing of the oath, declaration or fee.
- The USPTO will waive the petition fee for patent applicants who were unable to timely file a benefit or priority claim when the applicant submits the benefit or priority claim with the appropriate petition by July 7, 2025.
- For patent applicants who are filing or have filed a nonprovisional application on or after January 7, 2025 who meet the requirements for restoration of the (1) right to claim the benefit of a provisional application or (2) right of priority who missed the 12-month time period due to the wildfires, the USPTO will waive the petition fee if the petition is filed by July 7, 2025. The nonprovisional application must have been filed within two months from the expiration of the 12-month time period.
- The USPTO will waive the petition fee for patent applicants who filed an international patent application on or after January 7, 2025 who missed the 12-month priority period due to the wildfires if they meet the PCT requirements for restoration of the right of priority and file the petition by July 7, 2025.
Note that the offered relief does not extend to dates set by statute. For example, the following time periods and requirements cannot be extended or waived under this program: (1) the period to file a nonprovisional patent application claiming the benefit of a prior-filed foreign application or a prior-filed provisional application; (2) the copendency requirement between a parent application and a later-filed child application (3) the 36-month period to file a statement of use for a trademark application; and (4) the periods for filing a trademark opposition or cancellation proceeding at the TTAB.
Additionally, all patent and trademark applicants and registrants (whether or not they are entitled to relief) should make sure they update their correspondence information with the USPTO (or their patent or trademark attorney) if it changed as a result of the wildfires. This will ensure prompt receipt of all subsequent USPTO and TTAB communications.
A complete copy of the USPTO’s notice regarding this relief (which must be included with any request for such relief) can be found at Relief Available to Patent and Trademark Applicants, Patentees, Reexamination Parties, and Registered Trademark Owners Affected by the Wildfires in California.
If you would like to seek relief under this USPTO “extraordinary situation” relief program, please contact the authors of this alert or your CSG attorney for more details.