Ginger T. Chapman
HOW WILL COVID-19 AFFECT PATENT APPLICATIONS OR PATENT PRACTICE BEFORE THE U.S. PATENT AND TRADEMARK OFFICE?
During this ongoing global coronavirus outbreak, there is no aspect of professional or personal life that appears immune to the latest coronavirus (SARS-CoV-2), and the disease it causes, coronavirus disease 2019 (COVID-19).
On March 13, 2020, the President declared a national emergency under the National Emergencies Act as a result of the COVID-19 outbreak. Federal, state, and local governments are requiring or urging that people take measures such as quarantining themselves, voluntary or self-isolating, or social distancing. Government intellectual property Offices have also responded to the global health emergency by issuing guidance to provide notice to stakeholders of changes in practice and workflow due to COVID-19.
To mitigate the impact of this global health threat, The U.S. Coronavirus Aid, Relief, and Economic Security Act (CARES Act) has given the United States Patent and Trademark Office (USPTO) authority to extend statutory deadlines to help ease the burden of IP owners affected by COVID-19. The USPTO has implemented a number of measures in the wake of the COVID-19 health crisis in order to bring relief to patent and trademark applicants and owners facing business uncertainties and challenges meeting filing and response deadlines due to the pandemic.
On March 16, 2020, the USPTO announced that it considers the effects of the coronavirus to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applications, patentees, reexamination parties, and
trademark owners. The Director had determined that the COVID-19 emergency had prejudiced the rights of applicants, patent owners, or others appearing before the USPTO in patent matters.
Accordingly, a person who is unable to meet patent-related timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of certain deadlines, as further described in the Official Notice of Waiver of Patent-Related Timing Deadlines under the CARES Act.
WHAT THIS MEANS FOR PATENT APPLICANTS OR PATENT OWNERS:
Most USPTO prosecution deadlines from March 27 to April 30, 2020 are eligible for a 30-day extension if filed with a statement that the delay is due to the COVID-19 outbreak and that some party associated with the prosecution was personally affected by the COVID-19 outbreak. In order to qualify, the relevant filing must be accompanied by a statement that the delay “is due to the COVID-19 outbreak” and that the party associated with the filing “was personally affected” by the COVID-19 outbreak.
Subsection (a) of the CARES Act lists prosecution documents included as eligible for a 30-day extension. Subsection (b) of the Act sets forth that the “party” associated with the prosecution includes practitioners, applicants, patent owners, third party requesters, inventors, or other person associated with the filing. The term “person” for purposes of patent ownership is presumably understood to include non-human corporate owner(s).
The “personally affected” clause of subsection (b) appears to be quite broad and includes office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or other non-listed reasons which caused the delay or resulted in the outbreak materially interfering with timely filling or payment.
THE EXTENSION DOES NOT INCLUDE:
The extension does not cover original filing deadlines, PCT or national stage filing deadlines, deadlines for filing a non-provisional application following a provisional; or a deadline for filing an inter partes review petition.
The USPTO has specifically stated that the Notice does not grant waivers or extensions of dates or requirements set by statute.
Before the signing of the CARES Act, the USPTO had not extended deadlines because most trademark and patent deadlines are set by statute; thus, the Director of the USPTO had no authority to extend deadlines. The Director did waive fees for petitions to revive applications or canceled or expired registrations where patent and trademark applicants or owners were unable to timely reply due to the COVID-19 outbreak.
On March 16, the USPTO released a notice explaining the process for waiving petition fees for trademark applicants and registrants seeking to revive abandoned applications or reinstate canceled or expired registrations resulting from missed deadlines due to COVID-19. When seeking a waiver the petitioner must include: (1) the appropriate Trademark Electronic Application System (TEAS) form for abandoned applications or canceled/expired registrations; and (2) a statement of how the failure to respond to the Office communication was due to the effect of the COVID-19 outbreak. For both trademarks and patents, the affected party must still submit the petition within a specified timeline, within two months of the issuance date of the notice or, if notice was never received, then within six months of the abandonment, termination, cancellation, or expiration date.
On March 31, 2020, the USPTO announced that various trademark filing and Trademark Trial and Appeal Board deadlines originally due between March 27and April 30, 2020 will be extended 30 days from the initial due date for those parties affected by the COVID-19 crisis. The extensions apply to, inter alia, responses to Office actions, statements of use, notices of opposition, priority filings, and renewal applications. The filing must be accompanied by a statement that the party associated with the filing was personally affected by the COVID-19 outbreak.
The USPTO has also waived the ordinary requirement of an original handwritten signature for certain correspondence such as registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, and disciplinary proceedings. The requirement is also waived for particular credit card payments such as those where payment is being made outside of the Office electronic filing system. Copies of handwritten signatures will be accepted until further notice.
PATENT TRIAL AND APPEAL BOARD (PTAB) AND TRADEMARK TRIAL AND APPEAL BOARD (TTAB):
In keeping with other courts and tribunals around the country, PTAB and TTAB meetings, including oral hearings and examining attorney interviews are being conducted via video or teleconference, allowing proceedings to otherwise continue during the COVID-19
THE USPTO IS OPEN FOR FILING:
The USPTO is open for the filing of patent and trademark documents and fees, as further detailed below.
Questions may be directed to Covid19PatentsRelief@uspto.gov or to the Office of Patent Legal Administration (OPLA) at 571-272-7704. Parties with official business before the USPTO should reach out to their points of contact within the Office with any questions.
The U.S. CARES Act grants a similar authority to the U.S. Copyright Office to offer extensions. On March 31, 2020, the Copyright Office adjusted deadlines for 60 days for individuals affected by the COVID-19 crisis, including extending the three-month window to qualify for statutory damages to remedy copyright infringement in cases where the copyright owner is either unable to complete the electronic filing of their copyright application or cannot submit the required physical deposit due to COVID-19.
FOREIGN IP OFFICES
The European Patent Office (EPO), the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO), IP Australia, the German Patent and Trade Mark Office (DPMA), the U.K. Intellectual Property Office (UKIPO), the
Italian Patent and Trademark Office (IPTO), and the Indian Patent Office (IPO are some of the global IP Offices that have issued COVID-19 guidance. Please contact a Wharton Aldhizer & Weaver attorney to discuss the unique impact of changes made by foreign offices.
In view of the rapidly evolving responses to the COVID-19 disruptions, all parties to proceedings before the EPO, WIPO, or other government intellectual property Offices, should check the Office webpages on a regular basis for ongoing updates with respect to their
extensions of deadlines, workflow and practice during this unprecedented pandemic situation.
The rules and guidance issued by the USPTO, courts, and agencies are continuously changing to meet the rapidly evolving situation with COVID-19. Practitioners and other parties associated with the filing before the USPTO should continue to make earnest attempts to meet current deadlines while noting any COVID-19 related delays or conditions broadly included in Subsection (b) personally affecting the parties associated with the filing. Be prepared to carry out the majority of prosecution activities online and to participate in hearings, trials, and interviews electronically. Continually check the USPTO’s website for any changes to current regulations and to ensure you comply with current notices and guidance for rules and practices before filing. Be flexible; and recognize that the USPTO, courts, and clients will need to adapt to rapidly evolving circumstances and challenges during the COVID-19 pandemic. When in doubt, reach out to points of contact within the Office with any questions and to ensure that you include all necessary information, forms, and statements in your filings.
Attorneys at Wharton, Aldhizer & Weaver are available to assist with patents and to answer any questions on these matters.