Delays in Obtaining Certified Documents from USPTO

The United States Patent and Trademark Office (USPTO) is currently experiencing delays of 3-4 months in issuing certified documents, including certified copies of patent and trademark applications. These certified copies are frequently required to support trademark applications in foreign countries that claim the benefit of priority to the earlier filing date of a US application. 

Though many international intellectual property offices such as WIPO and DAS participate in digital exchange systems, certified copies of applications remain mandatory in a number of jurisdictions, particularly in parts of Asia and the Middle East. 

Potential Impact on Priority Claims 

Submission of a certified copy within a prescribed timeframe may be necessary to bring a priority claim in some regions. Delays in obtaining certified copies from the USPTO may create a risk of missing the applicable priority deadline. In some circumstances, loss of priority may have limited practical effect. In others, it may significantly affect the scope of protection. 

Recommended Considerations 

To mitigate risk, we recommend ordering a certified copy of a US trademark application at the time of filing the US application, if foreign filing is even a potential consideration. Early ordering is a proactive step to take that may help avoid most timing issues.  

Renner Otto is Monitoring the Situation 

We are aware of the USPTO’s delays and are closely monitoring all developments. Clients contemplating foreign filings or seeking to preserve priority based on a US application are encouraged to contact us to take appropriate steps to safeguard their rights.