Business and Legal Insights

The United States Patent and Trademark Office today extended certain deadlines in connection with patent and trademark related matters due to the COVID19 crisis. Similarly, the United States Copyright Office has announced modifications to deadlines in light of the crisis.

Patent Deadlines Extended

The USPTO exercised authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain deadlines. Notably, the extension does not apply to original filing deadlines, PCT deadlines, national stage filing deadlines, non-provisional filing deadlines, or the deadlines to file an inter partes review petition.

Deadlines for certain events that fall between March 27, 2020 and April 30, 2020, will be extended by 30 days if the applicant includes a statement that the delay in filing or payment was due to the COVID-19 outbreak. The USPTO provided the following in defining what it means to be “due to the COVID-19 outbreak”:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including pre-examination processing notices for small or micro entities, non-final and final office actions, issue fees, notices of appeal, appeal briefing, requests for oral hearing before the Patent Trial and Appeal Board, maintenance fees for small or micro entities, or requests for rehearing before the PTAB.

The USPTO has also announced that it is waiving certain petition fees for patent owners and applicants who were unable to timely file a response because of the COVID-19 crisis.

The USPTO also reminded everyone in its notice that it remains open for filing of USPTO documents and fees.

Trademark Deadlines Extended

The USPTO exercised the same authority under the CARES Act to extend certain trademark deadlines. The deadline to respond to certain events that was due between March 27, 2020 and April 30, 2020 will be extended 30 days from the initial date it was due, provided the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO again defined what it means by “due to the COVID-19 outbreak” in the context of trademark deadlines:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including office action responses, notices of appeal, statements of use or requests for extension of time to file a statement of use, notice of oppositions or requests for extension of time to file them, priority filing, and affidavits of use or excusable nonuse.

For Trademark Trial and Appeal Board issues, while deadlines are not automatically extended, requests or motions to extend deadlines may be made.

As with the Patent notice above, the USPTO reminds everyone that it remains open to receive filing and fees.

Copyright Deadlines Extended

The U.S. Copyright Office has also made adjustments under the authority of the CARES Act. For those copyright applicants able to submit electronic copyright applications with electronic deposit copies, no changes have been made.  But for those applicants who must submit a physical deposit copy, the Copyright Office will accept an electronic application and a declaration or similar statement certifying, under penalty of perjury, that the applicant is unable to submit the physical deposit and would have done so but for the national emergency.  The applicant must set forth “satisfactory evidence” in support of this statement.  The Copyright Office provided the following examples of “satisfactory evidence:”

• statement that the applicant is subject to a stay-at-home order issued by a state or local government
• a statement that the applicant is unable to access required physical materials due to closure of the business where they are located

If an applicant is unable to submit an electronic application, the applicant may do so after the Acting Director of the Copyright Office has announced the end of the COVID-19 disruption, so long as the applicant includes a declaration or similar statement certifying, under penalty of perjury, that the applicant was unable to submit an application electronically or physically and would have done so but for the national emergency, and providing “satisfactory evidence” in support. This “satisfactory evidence” may include:

• a statement that the applicant did not have access to a computer and/or the internet
• a statement that the applicant was prevented from accessing or sending required physical materials for reasons such as those noted above

The Intellectual Property attorneys at Shutts & Bowen continue to closely monitor the rapid developments taking place in connection to the current crisis and offer guidance to clients in these uncertain times on all areas impacted by the COVID-19 global pandemic.